Tiếng Việt- 1 Circular No. 3055/TT-SHCN of December 31, 1996, of the Ministry of science, technology and environment guiding the implementation of the regulations on the procedures for establishing industrial property right and other regulations in Decree No.63-CP of October 24, 1996 of the Government detailing the provisions on industrial property
- 2 Joint circular No. 129 /2004/TTLT-BTC-BKHCN of December 26th, 2004, providing guidelines on implementation of measures for border control of industrial property rights in import or export goods.
| THE GOVERNMENT | SOCIALIST REPUBLIC OF VIET NAM |
| No. 63-CP | Hanoi , October 10, 1996 |
DETAILING THE REGULATIONS ON INDUSTRIAL PROPERTY
THE GOVERNMENT
Pursuant to the Law on Organization of the Government of September 30, 1992;
Pursuant to the Civil Code of October 28, 1995;
Pursuant to the Resolution of the 8th Session of the IXth National Assembly on October 28, 1995;
At the proposal of the Minister of Science, Technology and Environment,
DECREES:
Article 1.- Purposes and Scope of Regulation:
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The provisions of this Decree shall apply only to inventions, utility solutions, industrial designs, trade marks, appellations of origin of goods, and shall not apply to other industrial property objects.
Article 2.- Terms and concepts:
The terms and concepts used in this Decree shall be construed as follows:
1. The "Civil Code" referred to herein is the Civil Code of the Socialist Republic of Vietnam which was adopted by the National Assembly on October 28, 1995;
2. The "Paris Convention" is the Convention for Protection of Industrial Property, signed in Paris in 1883 and amended in Stockholm in 1967;
3. The "PCT Treaty" is the Patent Cooperation Treaty (PCT), signed in Washington in 1970 and amended in 1984;
4. The "Madrid Agreement" is the Agreement on the International Registration of Trade Marks, signed in Madrid in 1891 and amended in 1979;
5. The "Applicant" is the person who files the application for the Title of Protection in respect of an invention, utility solution, industrial design, trade mark, appellation of origin of goods;
6. The "Title of protection" is the Title of protection of an invention, utility solution, industrial design, trade mark, appellation of origin of goods;
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8. The "Collective Mark" is a trade mark jointly used by a collective of individuals, legal persons or other entities, in which each member uses that trade mark independently in accordance with the rules laid down by that collective;
9. "Author of an invention, utility solution, industrial design" is a person or the persons who directly invents or devise the utility solution and industrial design through his/her/their own creative labor.
Those persons who render the author technical, material and financial assistance or support without involving in the creation of the invention, utility solution or industrial design through their own creative labor shall not be considered the author of such invention, utility solution and industrial design.
Article 3.- Method for calculation of time limits:
The time limits provided for in this Decree shall be determined in accordance with Articles 158, 159, 160, 161 and 162 of the Civil Code.
INDUSTRIAL PROPERTY OBJECTS TO BE PROTECTED BY THE STATE
Article 4.- Inventions and Utility Solutions:
1. A technical solution shall be considered new in comparison to the current technical level of the world under Articles 782 and 783 of the Civil Code if it meets the following criteria:
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b) Prior to the priority date of the application for the title of protection of invention or utility solution, the technical solution described in such application has not yet been made public in the country and/or abroad in any form of use or description in any sources of information mentioned hereunder to such an extent that based on which a person with the average professional level in the corresponding technical area can apply such solution:
- Sources of information concerning inventions, utility solutions in foreign countries, as from the date of publication;
- Other sources of information, in any information carriers (printed-matters, films and photos, magnetic tapes, magnetic discs, laser discs, etc.), as from the date on which such information carriers are circulated;
- Information sources from the mass media (radio broadcasting, public address system, television broadcasting), as from the date of publication of the news.
- Scientific reports, lectures... recorded by any means, as from the date of delivery of such reports or lectures;
- Exhibitions, as from the date on which the product is displayed.
The information shall be considered undisclosed if only a certain number of related persons have known such information.
A solution shall not be considered having lost its novelty if such solution is published by another person without the applicant’s consent and if the date of publication falls within the period of 6 months prior to the date of filing the application for the title of protection of invention, utility solution.
2. A technical solution shall be recognized as having a creative character as stipulated in Article 782 of the Civil Code if it is the outcome of a creative activity and, based on the technical level at home and abroad up to the priority date of the application for the title of protection of invention, such solution could not be obviously deducible to any person with the average professional level in the corresponding technical area.
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4. The following subject matters shall not be protected by the State as inventions, utility solutions:
- Scientific ideas, principles and inventions;
- Methods and systems for economic organization and management;
- Educational, teaching and training methods and systems;
- Animal training methods;
- Language systems, information systems, systems for document classification and arrangement;
- Designs and planning maps of constructions, planning and zoning projects;
- Solutions concerning only the outer appearance of articles, intended only to create an aesthetic impression without technical properties;
- Conventional signs, time-schedules, rules and regulations, symbols;
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- Plant varieties, animal breeds;
- Processes for prevention, diagnosis and treatment of diseases.
Article 5.- Industrial Designs:
1. An industrial design shall be recognized as having world-wide novelty as defined in Article 784 of the Civil Code if such industrial design satisfies the following criteria:
a) Substantially distinguished from other industrial designs described in the applications for titles of protection of industrial designs already filed with the competent authority at an earlier priority date;
b) Substantially distinguished from any similar industrial designs which have been published in any following sources of information:
- Sources of information concerning the protection of industrial designs in foreign countries, as from the date of publication;
- Other sources of information listed in Point b, Item 1, Article 4 of this Decree with details being amended in conformity with the industrial design.
c) Prior to the priority date of the application for the title of protection, the industrial design described in the application has not yet been disclosed in the country and abroad to such an extent that based on which any person with the average professional level in the corresponding area could make such industrial design; the form of disclosure may be its use or its description; the sources of information from which the industrial design is disclosed as mentioned in Item b above.
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2. An industrial design shall be used as a pattern for manufacturing industrial or handicrafts products as stipulated in Article 784 of the Civil Code if it can be used to mass produce by industrial or handicraft methods products with the outer appearance of the industrial design.
3. The following subject matters shall not be protected by the State as industrial designs:
- The external feature of the product can be made easily by a person with the average professional level in the corresponding area;
- The external feature is required by the technical properties of the product, or it merely bears technical properties;
- The external feature of a civil or industrial construction;
- The feature of products which is invisible in the process of utilization;
- Designs of products having only aesthetic value.
1. A symbol used as a trade mark shall be recognized as distinctive under Article 785 of the Civil Code if such symbol fully satisfies the following criteria:
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b) Not identical with or confusingly similar to a trade mark of another person being protected in Vietnam (including trade marks being protected under international treaties to which Vietnam has acceded);
c) Not identical with or confusingly similar to a trade mark indicated in the application for the title of protection of trademark, which has been filed with the competent authority at an earlier priority date (including trade mark applications filed in accordance with international Treaties to which Vietnam has acceded);
d) Not identical with or confusingly similar to a trade mark of another person, of which the protection validity has expired or been suspended but the length of time counted from the date of expiration or suspension of the protection validity is less than 5 years, except in cases where the protection validity is suspended because such a trade mark has not been used in accordance with provisions in Point c, Item 1, Article 28 of this Decree;
e) Not identical with or confusingly similar to a trade mark of another person which is considered well-known (in accordance with Article 6 of the Paris Convention), or to a trade mark of another person, which has been widely used and recognized;
f) Not identical with or confusingly similar to a protected trade name or appellation of origin of goods;
g) Not identical with an industrial design which has been protected or of which the application for the title of protection has been filed at an earlier priority date;
h) Not identical with a symbol ar character under the copyright of another person unless so permitted by such person.
2. The following symbols shall not be protected by the State as a trade mark:
a) Symbols which do not possess distinctive characteristics, such as simple shapes and geometric shapes, figures, capital letters, letters that cannot be pronounced as a word; foreign letters that belong to foreign languages not widely used, unless those symbols have been widely used and recognized;
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c) Symbols expressing time, place, manufacturing process, type, quantity, quality, nature, composition, utility, value which is descriptive of goods, services and origin of goods and services;
d) Signs likely to cause misleading or confusion or to deceive consumers as to the origin of goods, nature and functions, utility, quality, value of goods or services;
e) Signs identical with or similar to official initials indicating control, quality, warranty, etc. of Vietnam, foreign countries as well as international organizations;
f) Signs or names (including pictures, names, nick names, pseudonyms), devices, symbols identical with or confusingly similar to the national flags, national emblems, portraits of national leaders or heroes, public figures, geographical denominations, organizations of Vietnam as well as foreign countries, if the use of such signs are not permitted by the relevant competent agency or person.
Article 7.- Appellations of Origin of Goods:
1. An appellation of origin of goods to be protected must be the geographical name of a country or a locality where the corresponding goods are produced and such goods must bear the peculiar characters and quality that are determined by geographical factors (nature, human) of such country or locality.
If the above-said country or locality is not Vietnam or does not belong to Vietnam, the corresponding appellation of origin of goods shall be considered for protection in Vietnam only if such appellation of origin of goods is currently protected in the country or locality bearing such appellation of origin of goods.
2. The following subject matters shall not be protected by the State as an appellation of origin of goods:
a) Appellation indications which are not geographical names (including signs used as a symbol of a country, locality where the goods are generated from, but which are not the geographical name of that country or locality);
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ESTABLISHMENT OF INDUSTRIAL PROPERTY RIGHTS
1. Industrial property rights over inventions, utility solutions, industrial designs, trade marks, appellations of origin of goods under Article 780 of the Civil Code, rights of authors of inventions, utility solutions, industrial designs under Article 800 of the Civil Code shall be only established on the basis of the title of protection granted by the competent agency in accordance with the procedures prescribed in this Chapter.
2. Industrial property rights over trade marks under Article 780 of the Civil Code can also be established on the basis of acceptance for protection by the competent State agency of trade marks which are internationally registered in accordance with the Madrid Agreement.
Article 9.- Title of Protection:
1. Title of Protection granted by the competent State agency is the sole certificate of the State to certify the industrial property rights of the person who is granted the title of protection, the rights of authors of inventions, utility solutions, industrial designs and to certify the scope of protection to the industrial property rights.
A title of Protection is valid in the whole territory of the Socialist Republic of Vietnam.
The National Office of Industrial Property under the Ministry of Science, Technology and Environment is the above-said competent State agency.
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a) The Title of Protection of an invention is the Patent for the invention, which is effective from the granting date until the end of the 20 year duration as from the legitimate filing date;
b) The Title of Protection of an utility solution is the Patent for the utility solution which is effective from the granting date until the end of the 10 year duration as from the legitimate filing date;
c) The Title of Protection of an industrial design is the Patent for the industrial design which is effective from the granting date until the end of the 5 year duration as from the legitimate filing date and which can be extended for two consecutive terms, 5 years each;
d) The Title of Protection of a trade mark is the Certificate of Trademark Registration which is effective from the granting date until the end of the 10-year duration as from the legitimate filing date, and which can be extended for many consecutive terms, 10 years each;
e) The Title of Protection of an appellation of origin of goods is the certificate of right to use the appellation of origin of goods, which is effective from the granting date until the end of the 10 year duration as from the legitimate filing date, and which can be extended for many consecutive terms, 10 years each;
1. Industrial property rights and rights of authors of inventions, utility solutions and/or industrial designs, established on the basis of the Title of Protection, shall be protected by the State from the date of granting such Title of Protection until the date of expiration or termination of validity of the Title of Protection.
Industrial property rights over trade marks, established on the basis of the international registration, shall be protected by the State from the date on which such international registration is published in the Industrial Property Gazette until the date of expiration of validity of such international registration in accordance with the Madrid Agreement.
2. From the date of publication of the application for the Title of Protection of invention, utility solution, industrial design in the Industrial Property Gazette to the date of granting the Title of Protection, if a person has commenced to use an invention, utility solution, industrial design identical with the invention, utility solution, industrial design described in the application, then the applicant shall be entitled to notify such user of the application. If, after the Title of Protection is granted, the person who used the invention, utility solution, industrial design continues the use in spite of the above notification, the owner of the Title of Protection shall be entitled to request such user to pay a compensation equivalent to the payment for assignment of the right to use the industrial property object in question (licensing) to another person in a corresponding period of time.
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1. Application for the Title of Protection is a set of documents indicating the applicant�s request for the Title of Protection of an invention, utility solution, industrial design, trade mark, appellation of origin of goods with the relevant contents and scope of protection.
2. Application for the Title of Protection must ensure unity, i.e. each application shall be used for the Title of Protection of only one object or several objects of the same kind which are unified in respect of purpose of use.
The unity of the objects shall be understood as follows:
Inventions or utility solutions are unified if they are closely related to each other for the purpose of materializing unified creative idea.
Industrial designs are unified if they are the designs of different products of a set of products to be used in combination, or are varieties of the same design;
In an application for the Title of Protection of a trade mark, it is possible to include many different products and services to be covered by the same trade mark.
3. Application for the Title of Protection must satisfy all requirements with respect to form and contents in accordance with the regulations of the Minister of Science, Technology and Environment.
The application for the Title of Protection and all transaction papers between the applicant and the National Office of Industrial Property must be made in the Vietnamese language. Documents in other languages shall be used only for the purpose of comparison, consultation or checking.
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Within 3 months from the date of notifying the rejection of granting Patent for invention, and at the applicant’s request, the application for the Title of Protection of invention can be converted into the application for the Title of Protection of utility solution. All data relating to the filing date and priority date of the application shall remain unchanged. If the application the Title of Protection of invention is converted, the fees already paid for filing the application and examination shall not be refunded and the applicant shall have to pay the conversion fee of the application.
Article 14.- Right to file application for the Title of Protection:
The right to file application for the Title of Protection stipulated in Article 789 of the Civil Code are specified as follows:
1. The right to file application for the Title of Protection of invention, utility solution, industrial design
a) For an invention, utility solution or industrial design not described in Points b and c of this Item, the right to file application for the Title of Protection shall belong to the author(s) or heir(s) of the author(s);
b) For an invention, utility solution or industrial design, which is created while the author is performing a task assigned by the organization of which the author is a member, or is created by the author mainly through using the fund and material facilities of the organization, the right to file the application for the Title of Protection shall belong to the organization which has assigned the task and provided the fund and material facilities to the author;
c) For an invention, utility solution or industrial design which is created while the author is performing a labor contract signed with another individual or organization, the right to file the application for the Title of Protection shall belong to the individual or organization that signed the contract with the author, unless otherwise agreed upon in the contract.
d) The person who has the right to file application for the Title of Protection of invention, utility solution or industrial design as stipulated in Points a, b and c of this Clause may assign the right to file the application, including those applications already filed, to another individual, legal person or other entities through a written document for assignment of the right to file the application.
2. The right to file an application for the title of protection of trade marks:
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b) Individuals, legal persons, other entities legally conducting service activities shall be entitled to file application for the Title of Protection of service marks to be used for the services they are conducting or will conduct;
c) Individuals, legal persons or other entities legally conducting trading services shall be entitled to file application for the Title of Protection of trademarks to be used for the products which are marketed by them but manufactured by others, provided that the manufacturer does not use such trademarks for the relevant products and does not oppose such filing;
d) For a collective mark, the right to file application for the Title of Protection shall belong to the individual or legal person who represents a collective of individuals, legal persons or other entities committed to abiding by the regulation on the use of the trademark in question;
e) The right to file application, including applications already filed for the Title of Protection of trade marks, may be assigned as in the case of inventions, utility solutions and industrial designs;
3. The right to file application for the Title of Protection of appellation of origin of goods:
a) Individuals, legal persons or other entities who are producing or trading products of peculiar characteristics and quality in a country or locality bearing a geographical name satisfying requirements set out in Article 7 of this Decree, shall have the right to file application for the certificate of right to use an appellation of origin of goods for their products.
b) Foreign individuals or legal persons who are owners of the title of protection of an appellation of origin of goods granted by a foreign country shall have the right to file application for the certificate of right to use such appellation of origin of goods for their products on the Vietnamese market;
c) The right to file application for the Title of Protection of the right to use appellation of origin of goods shall not be assigned.
Article 15.- Exercising the right to file application for the Title of Protection:
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2. Vietnamese individuals, legal persons and/or other entities can file directly or authorize an Industrial Property Service Organization to file the application for the Title of Protection and other related procedures.
3. Individuals and/or legal persons of the countries which are members of the Paris Convention or which signed with Vietnam Agreements on reciprocal protection or which together with Vietnam accept the principle of reciprocity in the protection of industrial property, shall exercise the right to file applications for the Title of Protection and shall carry out the relevant procedures as follows:
a) Foreign individuals permanently residing in Vietnam, foreign legal persons having lawful representatives or real and effective production, business establishments in Vietnam, can file directly or authorize an Industrial Property Service Organization to file applications for the Title of Protection and carry out the related procedures;
b) Foreign individuals not permanently residing in Vietnam, foreign legal persons not having lawful representatives or real and effective production, business establishments in Vietnam, can only file applications for the Title of Protection and carry out the related procedures through an Industrial Property Service Organization by way of authorization.
4. The applicant must ensure the truth of information on the right to file the application for the title of protection, on his/her own person and the author(s) declared in the application. If the title of protection is revoked due to the incorrectness of such information, the owner of the title of protection shall be responsible for the consequences resulting from the exercise of the right.
Article 16.- The principle of the first to apply:
1. If two persons or more file applications for the Title of Protection of the same invention, utility solution, industrial design of trade mark for goods or services of the same kind and if the application is accepted, the title of protection shall be granted to the person who has filed the application earliest among such applicants.
2. If two persons or more file applications for the title of protection of the same invention, utility solution or industrial design, and if the applications of those persons have the same priority conditions, the National Office of Industrial Property shall propose those persons to jointly stand their names in only one application and if the application is accepted, the title of protection shall be jointly granted to them as co-owners. If one of the applicants disagrees, the title of protection shall not be granted.
3. If, for the same technical solution, there is one or a number of applications for the Patent for invention, and one or a number of applications for the Patent for utility solution and if such applications have the same priority conditions, the National Office of Industrial Property shall propose the persons filing the applications to unanimously select a form of protection and to unify their applications as stipulated in Item 2 of this Article.
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5. If two or more persons file applications for registration of the same appellation of origin of goods, when such appellation of origin of goods is registered, all of them shall be granted certificates of right to use the appellation of origin of goods.
1. A person who files an application for the title of protection of an invention, utility solution, industrial design or trade mark may claim priority rights by producing an application for the title of protection of the same object which has been filed earlier in another country or by displaying the object described in the application at an international exhibition, officially organized or recognized to be officially organized in Vietnam or another country, and on the following conditions:
a) Another country, where the earlier application has been filed or where the exhibition has been organized, is a member of the Paris Convention or has together with Vietnam signed a bilateral agreement providing for the priority rights or has together with Vietnam applied the principle of reciprocity with regard to priority rights;
b) The applicant is a citizen, resident or person having a real and effective business or production establishment in a country, and meets the conditions prescribed in Point a of this Item; and
c) The application for the title of protection of invention, utility solution, industrial design or trade mark is filed in Vietnam within the time limit prescribed in Item 2 of this Article.
2. The time limit for filing an application for the title of protection to enjoy priority rights is defined as follows:
a) If the applicant claims the priority rights under the Paris Convention, the time limit for filing an application for the title of protection in Vietnam shall be 12 months from the date of filing the first application for the title of protection of inventions, utility solutions; 6 months from the date of filing the first application for the title of protection of industrial designs or trade marks; and 6 months from the date the object is displayed at an exhibition for applications for the title of protection of inventions, utility solutions, industrial designs, trade marks;
b) If the application for the title of protection of invention or utility solution is filed under the PCT Treaty, the above time limit shall be 21 months for international applications with designation of Vietnam or 31 months for international applications with selection of Vietnam if such selection is carried out within 19 months from the date of filing the first application;
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3. Applications for the title of protection eligible for the priority rights shall have the corresponding priority date which is the filing date of the first application or the date on which the object is first displayed at an exhibition or the date prescribed in the bilateral agreement.
4. To enjoy priority rights, the applicant shall have to identify the international treaty on the basis of which the priority rights are claimed, and pay the fee for claiming priority rights, and within 3 months from the date of filing the application for the title of protection, the applicant shall have to submit a copy of the first application, which is certified by the office receiving the first application or the certificate of display at an exhibition. If the applicant fails to submit such documents within that time limit the claim for priority rights shall not be considered.
5. If the application for the title of protection claims priority rights according to different priority dates, the prescribed time limits as from the priority date shall be calculated from the earliest date among the accepted priority dates.
6. The applicant may withdraw the claim for priority rights to delay publication of the application for the title of protection
Article 18.- Examination of application for the title of protection:
1. Applications for the title of protection of industrial property objects, including international applications which are filed under the PCT Treaty and of which the National Office of Industrial Property is the receiving office, shall be examined by the National Office of Industrial Property in respect of formality thereof.
The formality examination of applications for the title of protection aims to determine whether the applications satisfy the requirements for legitimate applications; for an application to be considered to be legitimate, the legitimate filing date, the number of legitimate applications and the priority dates must be determined.
2. All applications for the title of protection of inventions, utility solutions or industrial designs which have been recognized as legitimate shall be published by the National Office of Industrial Property in the Industrial Property Gazette.
3. The examination of the contents of the applications for the title of protection shall be undertaken by the National Office of Industrial Property with respect to all applications for the title of protection of trade marks, industrial designs and appellations of origin of goods if those applications have been recognized as being legitimate and the applicant has paid the fee for content examination as stipulated. The same shall also apply to international registrations of trade marks under the Madrid Agreement.
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The examination of contents of applications for the title of protection aims to the determine possibility of protection of the object described in the application in accordance with the criteria for protection and to determine the corresponding scope (volume) of protection.
4/ Procedures and time limit of the examination of contents of the applications for the title of protection shall be defined by the Minister of Science, Technology and Environment.
Article 19.- Withdrawal of application for the title of protection:
1. At any time before the issuance of the Decision to grant or not to grant the title of protection, the applicant is entitled to declare withdrawal of his/her application for the title of protection by sending a written notice to the National Office of Industrial Property.
If the declaration of withdrawal of application for the title of protection is filed by the applicant through an Industrial Property Service Organization, the power of attorney must indicate the authorization for such withdrawal.
2. From the time the applicant declares withdrawal of the application for the title of protection, all further procedures related to such application shall be suspended; all fees already paid for the work to be done subsequently shall be refunded to the applicant.
3. Applications for the title of protection of inventions, utility solutions or industrial designs which are withdrawn or considered to be withdrawn before the publication of such applications, and applications for the title of protection of trade marks which are withdrawn or considered to be withdrawn, shall be considered not yet filed with the National Office of Industrial Property.
Article 20.- Third party’s rights to recommend whether or not to grant the title of protection:
During the examination of contents of applications for the title of protection, a third party shall have the right to recommend whether or not to grant the title of protection with regard to the applications already published in the Industrial Property Gazette. Where a third party objects to the granting of the title of protection, he/she must give reasons and submit documents or extracts evidencing such reasons.
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Article 21.- Right to seek experts’ opinions:
In order to ensure that the grant of the title of protection meets the requirements specified by law, the National Office of Industrial Property shall be entitled to seek opinions of specialized agencies and experts in relevant fields during the process of examining the contents of the applications for the title of protection. The agencies and experts consulted the National Office of Industrial Property shall have to fulfill their obligations in an honest and objective manner and shall be responsible for their opinions.
The agencies and experts consulted by the National Office of Industrial Property shall be entitled to remuneration for giving their opinions. The amount of remuneration shall depend on the scope and quality of the opinions given but not more than 40% of the fee for the substantial examination of the corresponding object.
Article 22.- Request for inquiry:
1. From the date of acceptance of a valid application, the applicant for the title of protection of invention or utility solution shall be entitled to request the National Office of Industrial Property to conduct an inquiry into the technical art available before the priority date. The person seeking the inquiry must pay a fee as stipulated.
2. Within 3 months from receiving the inquiry request, the National Office of Industrial Property shall supply the results of the inquiry to the requester.
Article 23.- Decision to grant the title of protection:
1. If an invention, utility solution, industrial design or trade mark satisfies all criteria for protection and the applicant has already paid the prescribed fee, the National Office of Industrial Property shall issue Decision to grant the title of protection. The Decision shall specify the full name and address of the person to whom the title of protection is granted, the serial number of the application for the title of protection, filing date, the corresponding priority date, the name of the Industrial Property Service Organization, the full name(s) of the author(s) of the invention, utility solution, industrial design, the title of the object to be protected, the title and serial number of the title of protection, the scope (volume) of protection, the duration of protection or the Decision on acceptance of protection of trade mark internationally registered under the Madrid Agreement.
2. If an appellation of origin of goods satisfies all criteria for protection and the applicant has already paid the prescribed fee, the National Office of Industrial Property shall issue Decision to enter the relevant appellation of origin of goods into the National Register. Such Decision shall specify the full name and address of the person seeking protection of the appellation of origin of goods, the serial number of the application, the filing date, the name of the Industrial Property Service Organization, the title of appellation of origin of goods, the scope of the corresponding territory; the list of products bearing the appellation of origin of goods, a summary of the characteristics of quality of the products bearing the appellation of origin of goods, the list (name and address) of the individuals or organizations having the right to use the appellation of origin of goods and the number of registration of such appellation of origin of goods.
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Article 24.- Granting duplicate of title of protection and copies of relevant documents:
At the request of individuals, legal persons or other entities, the National Office of Industrial Property can issue a duplicate of the title of protection to the co-owners, copies of application for the title of protection for the purpose of claiming priority rights in foreign countries and copies of other documents except those documents which are considered confidential or not yet due for publication.
At the request of the owner of the title of protection, the National Office of Industrial Property can issue a duplicate of the title of protection to its owner, if it deems the request justifiable.
The person who made a request for duplicates or copies shall have to pay a fee as stipulated.
Article 25.- Notice of refusal to grant title of protection:
For cases not described in Items 1, 2 and 3 of Article 23 of this Decree, the National Office of Industrial Property shall issue the notice of refusal to grant the title of protection in which the reasons therefor must be clearly stated. This notice shall be handed over to the applicant and the person who makes a request for substantial examination of invention or utility solution (in case of refusal to grant the title of protection of inventions, utility solutions).
1. Contents of the title of protection shall be determined in accordance with Decision to grant the title of protection. Apart from the information specified in that Decision, the title of protection shall fully describe the nature and scope (volume) of protection and supply other necessary information related to the protected rights.
2. The title of protection shall be entered into the National Register Book of industrial property (National Register).
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1. The following persons shall have the right to file appeal:
a) The applicant shall have the right to appeal against the rejection of his/her application for the title of protection and the refusal to grant the title of protection;
b) The person filing a request for substantial examination of invention or utility solution shall have the right to appeal against the Decision to grant the title of protection, and shall not have to pay the fee for such appeal;
c) A third person shall have the right to appeal against the Decision to grant the title of protection and he/she shall have to pay the fee as stipulated.
2. Procedures for appeal mentioned in Clause 1 of this Article are specified as follows:
a) The contents of the appeal must be made in writing and indicate the name (surname) and address of the appellant; the serial number, signing date and contents of the appealed Decision or Notice; the serial number of the relevant application for the title of protection; the title of the object to be protected described in the application; the contents, arguments and evidences to support the arguments of the appeal; specific proposals to amend or revoke the relevant decision or conclusion;
b) The appeal must be filed with the National Office of Industrial Property within 3 months from the date of issuance of the Decision or Notice if such appeal comes under Items a and b, Clause 1 of this Article, or during the duration of validity of the title of protection if the appeal comes under Item c, Clause 1 of this Article;
c) An application for appeal which is filed after the above-said time limit shall not be considered.
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4. In case of disagreement with the response of the National Office of Industrial Property as stipulated in Clause 3 of this Article, the appellant shall be entitled to appeal to the Minister of Science, Technology and Environment or initiate a lawsuit in accordance with administrative procedures. If the appeal is made to the Minister of Science, Technology and Environment, within 60 days after receiving the appeal, the Minister of Science, Technology and Environment shall have to notify the appelant of the results of the handling of the appeal.
Article 28.- Suspension of validity of the title of protection:
1. A third person shall have the right to lodge a request with the National Office of Industrial Property for the suspension of the validity of a title of protection for the reasons described in Clause 2 of this Article.
The application for the suspension of the title of protection shall be processed in accordance with the order of consideration of appeals as stipulated in Clauses 2, 3, 4 of Article 27 of this Decree.
If the results of the consideration confirms that one of the cases specified in Clause 2 of this Article has occurred, the Director of the National Office of Industrial Property shall issue a Decision to partially or completely suspend the validity of the title of protection, publish such Decision in the Industrial Property Gazette within 2 months from the date of the issuance of the Decision.
2. The validity of the title of protection shall be suspended in one of the following cases:
a) The owner of the title of protection declares abandonment of his/her rights derived from the corresponding title; in this case, the validity of the title of protection shall be suspended from the date on which the declaration of abandonment is made;
b) The owner of the title of protection fails to pay the fee for the maintenance of validity of the title of protection in due time; in this case, the validity of the title of Protection shall be suspended from the beginning of the first valid year when the fee for maintenance of validity is not paid.
c) The owner of a Certificate of Trademark Registration or the owner of a Certificate of Right to Use the appellation of origin of goods has not used his/her trade mark or appellation of origin of goods for 5 consecutive years before the date on which the request for suspension of validity is made without justifiable reasons; in this case, the validity of the Certificate of Trademark Registration, the Certificate of Right to Use appellation of origin of goods shall be suspended from the first day right after the 5-year period mentioned above;
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e) The geographical factors determining particular characteristics have been changed, causing the loss of the particularity of such characteristics; in this case, the Certificate of Right to Use the appellation of origin of goods shall be suspended on the same date in accordance with the decision of the National Office of Industrial Property;
f) The owner of a Certificate of Right to Use the appellation of origin of goods is not capable of performing his/her obligations as provided for in Clause 2 of Article 47 of this Decree.
Article 29.- Cancellation of the validity of the title of protection:
1. A third party shall have the right to lodge a request with the National Office of Industrial Property for cancellation of validity of a title of protection on the ground that such title of protection has been granted not in compliance with provisions of law as provided for in Clause 2 of this Article.
An application for cancellation of the validity of a Title of Protection shall be processed in accordance with the same order as applied to appeals stipulated in Clauses 2, 3, 4 of Article 27 of this Decree.
If the results of examination of the application affirms that the title of protection has been granted not in compliance with the provisions of law, the Director of the National Office of Industrial Property shall issue a Decision to partially or completely cancel the validity of the title of protection, publish the Decision in the Industrial Property Gazette within 2 months from the issuance of the Decision.
2. The validity of a title of protection shall be canceled in its entirety when there are the following grounds to confirm that the title of protection has been granted not in compliance the provisions of law:
a) The person who has been granted the title of protection is not entitled to file the application for the title of protection, nor assigned the right to file the application by the person having such right;
b) The right to file the application for the title of protection of invention, utility solution or industrial design belongs to individuals, legal persons or other entities, but one or a number of them disagree with the filing of the application;
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d) The protected object does not meet the criteria for protection.
3. The validity of a title of protection shall be partially canceled when there are grounds to confirm that the relevant part does not meet the criteria for protection.
4. If canceled, the validity of the canceled part shall be considered not having been established.
The validity of a Patent for industrial design, a Certificate of Trade Mark Registration, a Certificate of Right to Use the appellation of origin of goods may be renewed at the request of the owner of the title of protection.
Article 31.- Industrial Property Gazette:
1. The Industrial Property Gazette issued by the National Office of Industrial Property is a legal document publishing information relating to the establishment, transfer, change, suspension, invalidation of industrial property rights, as well as the contents and scope of protection of such rights.
2. The major information published in the Industrial Property Gazette shall include the following:
a) Applications for the title of protection of inventions, utility solutions, industrial designs after such applications have been accepted to be valid;
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c) Decisions on amendment, suspension, revocation, renewal of granted titles of protection;
d) Decisions on registration of licensing contracts and decisions on granting non-voluntary licenses;
e) Decisions on registration of contracts for transfer of the ownership rights over industrial property objects;
f) Decisions on the granting, revocation or amendment to the contents of operation licenses of individuals, service organizations providing representative services in industrial property;
g) New legal documents, amendments or supplements to legal documents on industrial property;
h) Other necessary information relating to the protection of industrial property rights.
1. Individuals, legal persons or other entities proceeding with procedures for establishment, maintenance, suspension, renewal, amendment or assignment of industrial property rights before the National Office of Industrial Property, as well as procedures for appeals in relation to industrial property before competent agencies, shall be obliged to pay charges and fees, as specified in this Article, to the agencies that perform the relevant tasks.
The National Office of Industrial Property and the competent agencies mentioned above shall have the responsibility to collect the related charges and fees in full, in due time and in accordance with the relevant procedures, and remit them to the State budget in accordance with the State’s regulations on charges and fees.
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2. The items (contents) and the charge and fee on each item shall be determined by the Ministry of Finance in coordination with the Ministry of Science, Technology and Environment on the basis of full coverage of expenses on the related work and in conformity with the present conditions and international practices.
The fee already paid for the relevant work which, however, is not accomplished due to the non-occurrence of the expected situations or the fault of the agencies that have to do such work must be reimbursed to the payer and the reimbursement must be certified by the payer or the receipt of reimbursement must be given.
Article 33.- The owner of industrial property objects:
The owner of industrial property objects shall be:
1. The person who is granted the title of protection;
2. The owner of international registration of a trade mark under the Madrid Agreement which has been accepted for protection in Vietnam;
3. Individuals, legal persons or other entities who have been legally assigned the ownership rights over inventions, utility solutions, industrial designs or trade marks.
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The use of industrial property objects belonging to their owner as stipulated in Item a, Clause 1, Article 796 and Item a, Clause 1, Article 797 of the Civil Code is the performance of one or a number of the following acts with regard to the protected objects for business purposes:
1. With respect to inventions or utility solutions:
- Manufacturing protected products;
- Applying protected processes;
- Exploiting protected products;
- Putting into circulation; advertising for sale; offering for sale or stockpiling for sale of protected products or products manufactured under the protected processes;
- Importing protected products or products manufactured under the protected processes;
2. With respect to industrial designs:
- Manufacturing;
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- Importing products of which the outer appearance is protected as an industrial design;
3. With respect to trademarks and appellations of origin of goods:
- Affixing protected trademarks or appellations of origin of goods on goods, packages, service facilities or transaction documents in business activities;
- Circulating, offering for sale, advertising for sale, stockpiling for sale of goods bearing protected trademarks or appellations of origin of goods;
- Importing goods bearing protected trademarks or appellations of origin of goods.
Article 35.- The right to transfer the right to use industrial property objects:
1. Under Item b, Clause 1, Article 796 of the Civil Code, and the provisions of this Article, the owner of industrial property rights over an invention, utility solution, industrial design or trademark shall be entitled to transfer part or the whole of the right to use his/her industrial property object to an individual, legal person or another entity.
The owner of a certificate of right to use an appellation of origin of goods shall not be allowed to transfer the right to use such appellation of origin of goods.
2. The transfer of the right to use industrial property objects must be made in a written contract ("licensing contract"). The licensing contract shall become legally effective only after its registration with the National Office of Industrial Property as stipulated in Article 42 of this Decree.
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1. Under Item c, Clause 1, Article 796 of the Civil Code, the owner of industrial property objects shall be entitled to request the competent State authority to handle, or initiate a lawsuit at the Court against a third party which does not fall into the cases described in Articles 50, 51, 52 of this Decree and which has used his/her industrial property object, and also entitled to request the infringer to cease the use and to pay compensation for damage.
Prior to the request for handling or initiating the lawsuit, the owner of an industrial property object shall have the right to notify the infringer of the industrial property object in his/her possession, and to request the infringer to cease the act of infringement.
2. In case of inventions, utility solutions or industrial designs, the owner of an industrial property object shall be entitled to institute a lawsuit at a competent Court against the person who fails to pay compensation to the owner of industrial property rights in accordance with Clause 2, Article 10 of this Decree.
3. The owner of an industrial property object may himself/herself request the handling, initiate a lawsuit, or delegate another person to do that as stipulated in Clauses 1 and 2 of this Article.
Article 37.- Assignment of ownership, bequest, abandonment of industrial property rights:
1. The assignment, bequest or abandonment of the ownership over industrial property objects under Clause 2, Article 796 of the Civil Code shall be effected in accordance with the provisions of this Article.
2. The trademark ownership shall be only bequeathed to an individual or a legal person or a sole entity. The inheritor of trademark ownership must fully meet the same requirements as those for the right to file an application for the title of protection of a trademark.
3. Where the ownership over an invention, utility solution, industrial design or trademark is assigned, all rights and obligations of the owner of the title of protection (Assignor) derived from the title of protection shall be fully transferred to the person to whom such rights and obligations are transferred (Assignee), and the Assignee shall become the owner of the assigned industrial property object from the moment the assignment contract is registered at the National Office of Industrial Property; the rights and obligations arising out of the transactions between the Assignor and a third party may be transferred to the Assignee if so recorded in the assignment contract.
4. When the right to use an industrial property object is transferred, the party (Licensee) to whom the right to use the industrial property object is transferred shall, from the date on which the licensing contract is registered at the National Office of Industrial Property, be entitled to use the industrial property object within the scope, term and conditions set forth in the registered licensing contract.
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Article 38.- Restrictions on assignment of industrial property rights:
1. The Assignor shall be entitled to assign his/her rights only within the scope protected by laws during the term of protection and shall have to warrant that the assignment shall not give rise to disputes with a third party. In case of disputes resulting from the assignment of industrial property rights, the Assignor shall have to solve.
2. If the industrial property rights belong to co-owners, each of them shall be allowed to assign the rights of his/her own part to another person if so agreed by the other owners or even if one or a number of the other owners, though disagreeing with the assignment, they refuse to accept the rights to be assigned and the disagreement is unjustifiable.
3. Industrial property rights over appellations of origin of goods shall not be assigned.
4. The assignment of industrial property rights over trademarks must not cause confusion to properties or origin of goods or services bearing the trademarks.
5. If one of the parties to the assignment of industrial property rights is a State organization or an organization having capital contribution from the State, the assignment contract must be approved by the Minister of Science, Technology and Environment.
Article 39.- Contracts for Assignment of Industrial Property Rights:
1. All forms of assignment of industrial property rights must be made in written contracts. All oral agreements, letters or telegrams shall not be considered contracts for assignment of industrial property rights and shall have no legal effect.
Where the assignment of industrial property rights is part of another contract, the contents of the assignment of industrial property rights shall be made in a part separate from the other parts of the contract and shall comply with the provisions of this Clause.
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Article 40.- Obligations of the parties:
1. The Assignor shall have the following obligations:
- To register the contract in accordance with Article 42 of this Decree if the Assignee does not do so;
- To pay assignment tax in accordance with the tax laws;
- To solve disputes with a third party resulting from the assignment;
- In case of transfer of the right to use an industrial property object (Licensing Contract), the Licenser shall take necessary measures to combat infringements by a third party that cause losses to the Licensee. If, after three months after being notified of the infringement and the Licenser fails to take such measures at the request of the Licensee, the Licensee shall have the right to request competent State authorities to handle such infringements.
2. The Assignee shall have the following obligations:
- To register the contract in accordance with Article 42 of this Decree if the Assignor fails to do so;
- To pay assignment money to the Assignor with the amount and mode agreed upon by the two Parties;
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- To put a reference on the goods and packages to indicate that the goods are produced under the license granted by the Assignor, and to write the name of the Assignor.
The maximum and minimum prices shall be jointly determined by the Ministry of Finance and Ministry of Science, Technology and Environment.
2. The mode of payment of the assignment price shall be agreed upon by the two parties.
Article 42.- Registration of Contracts for Assignment of Industrial Property Rights:
1. All contracts for assignment of industrial property rights, including when the transfer is part of another contract, must be registered at the National Office of Industrial Property in accordance with the provisions of this Decree.
2. The requirements for the file and procedures for the registration of contracts for assignment of industrial property rights shall be determined by the Minister of Science, Technology and Environment.
3. All changes related to the registered assignment contracts including sub-license, must follow the same procedures as for the assignment.
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The contract for assignment of industrial property rights shall be automatically suspended if the industrial property rights of the Assignor is suspended or a force majeure event occurs resulting in non-performance of the contract.
The contract for assignment of industrial property rights shall be automatically invalidated if the industrial property rights of the Assignor are canceled.
Article 44.- Obligation to pay remuneration to authors:
1. Under Clause 1, Article 798 of the Civil Code, the owner of industrial property rights over an invention, utility solution or industrial design shall have the obligation to pay remuneration to the author or co-authors for creation of the invention, utility solution or industrial design, if the author is not the owner or the co-owner and if not otherwise agreed upon by the author and the owner.
2. The amount of remuneration and term of payment shall comply with the following provisions, if not otherwise agreed upon by the author and the owner of industrial property rights.
a) The minimum remuneration for the author of an invention or utility solution is 10% of the annual profits generated by the use of that invention or utility solution; or 15% of the total amount the owner of industrial property rights receives each time for grant of license or as compensation for grant of non-voluntary license;
b) The minimum remuneration for the author of an industrial design is 2% of the annual profits generated by the use of the industrial property; or 15% of the total amount the owner of industrial property rights receives each time for grant of license or as compensation for grant of non-voluntary license;
c) Payment of remuneration to the author must be made at the latest 2 months after each year of use or not later than 1 month from the date on which the owner of industrial property rights receives payment for grant of license or as compensation for grant of non-voluntary license.
3. If the author and the owner reach an agreement different from the provisions in Clauses 1 and 2 of this Article, the payment of remuneration shall be made in accordance with such agreement.
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Under Clause 2, Article 798 of the Civil Code, the owner of industrial property rights must pay fee for the maintenance of the validity of the title of protection. If he/she fails to do so, the title of protection shall be suspended in accordance with Item b, Clause 2, Article 28 of this Decree.
Article 46.- Obligation to use industrial property objects:
1. The owner of industrial property rights over an invention, utility solution or industrial design which have important impact on security, defense, the protection of the people’s health or the environment, shall have the obligation to use such invention, utility solution or industrial design to meet the needs of the nation and/or the society.
In the event that the owner of industrial property rights over the said invention, utility solution or industrial design has made his/her best endeavors but failed to meet the needs of the nation and/or of the society, the owner of industrial property rights shall be obliged to grant license to other entities who are able and willing to use such inventions, utility solutions, industrial designs under reasonable conditions.
2. The owner of industrial property rights over a trademark or appellation of origin of goods shall have the obligation to continuously use the trademark, appellation of origin of goods and shall not discontinue the use of the trademark or appellation of origin of goods for more than 5 consecutive years. If he fails to perform this obligation, the title of protection of the trademark and the title of protection of the appellation of origin of goods shall be suspended in accordance with Item c, Clause 2, Article 28 of this Decree.
3. The assignment of the right to use industrial property objects shall not be considered the use of the industrial property objects for the purpose of performing the obligations provided for in this Article.
The use of industrial property objects by the Licensee shall be considered the use of the industrial property objects for the purpose of performing the obligations provided for in this Article.
1. The person who is granted the certificate of right to use an appellation of origin shall be entitled:
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b) To request the competent State authority to order other persons to cease infringement acts and compensate for damage due to illegal use of the appellation of origin of goods or signs confusingly similar to the appellation of origin of goods, including when the genuine origin of products is indicated or the appellation of origin of goods is translated into other languages or is used in combination with such words as "brand", "style", "adaptation", or similar words.
2. The person who is granted the certificate of right to use an appellation of origin shall be obliged:
a) To ensure the quality, the particular features of products bearing the registered appellation of origin of goods;
b) To satisfy the requirements and create favorable conditions for the competent State authority to inspect the quality of goods, for organizations to examine the quality, the particular features of the products bearing the appellation of origin of goods, when necessary.
1. The author or authors of an invention, utility solution, industrial design shall be entitled:
a) To have his/her/their name(s) mentioned as the author(s) in the title of protection, National Register of inventions, utility solutions or industrial designs, as well as in publications of such objects;
b) To receive remuneration from the owner of industrial property rights in accordance with the provisions of Article 44 of this Decree;
c) To request the handling of, to initiate a lawsuit against infringements of his/her/their rights.
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Article 49.- Conditions for exercising the Industrial Property Rights:
When exercising his/her rights, the owner of industrial property rights, the person who is transferred the right to use an industrial property object, must not violate provisions of law, not do any acts prohibited by law, not cause damage to State and public interests, and not infringe upon the legitimate rights and interests of other entities. If the exercise of industrial property rights results in the above-said violations and infringements, the holder of industrial property rights shall not be allowed to exercise such rights.
Article 50.- Rights of Prior Users of Inventions, Utility Solutions, Industrial Designs:
1. Where an individual, legal person or other entities, before the date of publication of the application for the title of protection of an invention, utility solution or industrial design, used the invention, utility solution or industrial design independently of the owner of the industrial property object, then the owner of the industrial property object, when granted the title of protection, shall not be entitled to exercise the right to request the handling of, or initiate a lawsuit against the individual, legal person or other entities who used the said industrial property object if such individual, legal person or other entities do not extend the scope and/or volume of use beyond that existing before the date of publication of the application, and if they cannot transfer the right to use to others.
2. Where and individual, legal person or other entities, after the date of publication of the application for the title of protection as provided for in Clause 1 of this Article, extended the scope and/or volume of use beyond that existing before the date of publication of the application, the extension shall not be regarded as prior use.
1. Non-voluntary license shall mean that the owner of an industrial property object or the person to whom the owner of an industrial property object transfers the whole right to use the invention, utility solution or industrial design is forced to allow an individual, legal person or other entities to use his/her industrial property object in accordance with a decision of the competent State authority as stipulated in this Article.
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3. The Ministry of Science, Technology and Environment shall be the State authority competent to consider requests for the use of inventions, utility solutions and/or industrial designs, and to issue a Decision compelling the owner of industrial property rights to grant a non-voluntary license.
4. The application file for the grant of non-voluntary license must meet the requirements as to the form and contents thereof in accordance with the regulations by the Ministry of Science, Technology and Environment.
5. Within 15 days from the date of receipt of the application file for the grant of non-voluntary license, the Ministry of Science, Technology and Environment shall notify the owner of industrial property rights, or the person who is transferred the whole right to use the invention, utility solution or industrial design, of such request and request the addressee to reply in writing within 30 days from the date of notification.
Where necessary, the Ministry of Science, Technology and Environment may request the involved parties to re-negotiate in order to settle the disagreements for the purpose of signing the contract on voluntary license.
In the event that an agreement on voluntary license is not reached and arguments made by the holder of rights for not granting the voluntary license are unreasonable, the Minister of Science, Technology and Environment, within 3 months from the date of receipt of the application file, shall decide to grant the non-voluntary license. If not, the Ministry of Science, Technology and Environment shall issue a notice of refusal to the applicant for the non-voluntary license.
6. The Decision on the compulsory grant of non-voluntary license shall be published in the Industrial Property Gazette within 1 month from the date of signing.
7. Within 1 month from the date on which the Minister of Science, Technology and Environment issues the Decision on the compulsory grant of non-voluntary license, the Holder of rights must grant non-voluntary license to the applicant subject to the terms stipulated in the Decision of the Minister of Science, Technology and Environment.
8. The person who is granted a non-voluntary license shall have the obligation to pay remuneration to the Licensee with the amount and term of payment specified in the Decision of the Minister of Science, Technology and Environment and in the contents of the license.
The person who is granted a non-voluntary license must not transfer to others the right to use the invention or utility solution or industrial design under the non-voluntary license.
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If the acts stipulated in Article 803 of the Civil Code and done in respect of an invention, utility solution or industrial design do not come within the exclusive right of the owner of industrial property rights, the owner of industrial property rights shall not be entitled to request a settlement or initiate a lawsuit against a third party who do such acts.
1. An act of infringing upon the industrial property rights shall be established when a person who is not the owner of an industrial property object carries out an act of using the industrial property object during the protection duration as stipulated in Article 805 of the Civil Code and specified in Article 34 of this Decree without the permission of the owner of the industrial property object, and is not the prior user as stipulated in Article 50 of this Decree and if such an act does not fall within the cases described in Articles 51 and 52 of this Decree.
2. The failure by the owner of the industrial property object to pay remuneration to the author, and to secure the spiritual rights of the author as provided for in Items a, b Clause 1, Article 48 of this Decree shall be considered an infringement upon the rights of the author of an invention, utility solution or industrial design.
3. The following cases shall not be considered infringements upon the industrial property rights:
a) The use of a trademark, appellation of origin of goods not for business purposes;
b) Circulating and using products which bear a trademark or appellation of origin of goods and which have been put on the market by the owner of the trademark, the person who is assigned the right to use the trademark, or the person who is entitled to use the appellation of origin of goods;
c) Using products bearing a trademark or appellation of origin of goods on transport vehicles of foreigners when such vehicles are on transit or temporary stay on the territory of Vietnam, provided that such use is only for the purpose of ensuring the operation of the said vehicles.
Article 54.- Protection of industrial property rights and author�s rights over an invention, utility solution or industrial design:
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2. The exercise of the right to initiate a lawsuit against infringements upon the industrial property rights and author’s rights over an invention, utility solution or industrial design shall be effected in accordance with the legislation on civil procedures.
Depending on their seriousness and consequences, the infringements upon the industrial property rights and author’s rights over an invention, utility solution or industrial design may be subject to administrative sanctions or examined for criminal liability in accordance with the provisions of law.
INDUSTRIAL PROPERTY REPRESENTATIVES
The definitions used in this Decree shall be construed as follows:
"Industrial Property Service Organization" is a business which has registered its operations in accordance with law and which has been granted a Certificate of Industrial Property Service Organization by the National Office of Industrial Property.
"Industrial Property Attorney" is a professional member of the Industrial Property Service Organization, who has been granted a Card of Industrial Property Attorney by the National Office of Industrial Property.
"Industrial Property Representative" refers to the Industrial Property Service Organization collectively and/or Industrial Property Attorney.
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Article 56.- Functions and Tasks of the Industrial Property Representative:
1. The Industrial Property Service Organization shall have the function of conducting the following services:
- Representing other persons before the National Office of Industrial Property and competent State authorities in carrying out procedures for the establishment and protection of industrial property rights;
- Advising on issues related to the procedures for the establishment and protection of industrial property rights;
- Other services concerning the procedures for the establishment and protection of industrial property rights.
2. The Industrial Property Attorney shall directly carry out representative activities in industrial property of the Industrial Property Service Organization of which he/she is a member.
Article 57.- Powers and Duties of the Industrial Property Representative:
1. The Industrial Property Representative is not and shall not act on behalf of the National Office of Industrial Property and industrial property management authorities, and is not allowed to exercise the powers of such authorities.
2. With respect to representative activities in industrial property, the Industrial Property Service Organizations shall have civil rights and liabilities prescribed by the civil legislation.
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The Industrial Property Attorney shall work only for the Industrial Property Service Organization of which he/she is a member.
Any representative services in industrial property must be conducted in the name of the concerned Industrial Property Service Organization. The Industrial Property Representative or the individual or corporate conducting the service shall take responsibility for any issues concerning their representation.
4. The Industrial Property Service Organization shall act only within the scope of authorization, and can re-delegate to another Industrial Property Service Organization only with the prior written permission from the authorizing person.
5. The Industrial Property Service Organizations shall be prohibited from carrying out the following acts:
- Representing conflicting parties at the same time;
- Withdrawing the application for the title of protection, declaring withdrawal of the protection, withdrawing the appeal against the establishment of industrial property rights if not clearly stated as such in the Power of Attorney.
- Disclosing information on national security and interests when carrying out representative activities.
6. When entering into transactions or agreements on representative services in industrial property, the Industrial Property Attorney must present the Card of Industrial Property Attorney which is still valid.
Before entering into contracts on representative services in industrial property, the Industrial Property Service Organization and Industrial Property Attorney must notify in details the national fee and the amount of each kind of fee related to the procedures for establishment of industrial property rights, as well as the service fee and the amount of each kind of service fee of the Organization in accordance with the Tariff registered at the National Office of Industrial Property.
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7. The Industrial Property Service Organization and the Industrial Property Attorney shall be obliged:
- To keep confidential all the information and documents they receive with respect to the case(s) they represent;
- To report truthfully and fully all notifications, requirements of the National Office of Industrial Property or the industrial property management authority; deliver in time the title of protection and other decisions to the authorizing party.
- To protect the rights and interests of the authorizing party by meeting in time the requirements of the National Office of Industrial Property or the industrial property management authority in respect of the authorizing party.
- To notify the National Office of Industrial Property or the industrial property management authority of all changes to the name, address and other information of the authorizing party, if necessary.
8. The Industrial Property Service Organization shall be permitted to abandon their representative activities in industrial property only if it can legally pass all pending work to another Industrial Property Service Organization.
Article 58.- Conditions for Granting the Representative License:
1. Conditions for granting the Card of Industrial Property Attorney
Only those individuals who meet the following criteria may be granted the Card of Industrial Property Attorney:
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- Permanently residing in Vietnam;
- Having obtained a university degree in law or technique;
- Having obtained a certificate of graduation from a regular course on industrial property; or having directly involved in the legal work concerning industrial property for 5 consecutive years or more; or having directly involved in the work of examination of industrial property applications at national or international industrial property offices for 5 consecutive years or more;
- Having obtained certificate of success at the examination in the prevailing laws on industrial property of Vietnam, which was issued by the National Office of Industrial Property and remains valid;
- Being a professional member of an Industrial Property Service Organization;
- Not being a person who is working for a non-business State agency or organization;
- Not being a person who is working for another Industrial Property Service Organization.
2. Conditions for granting the Certificate of Industrial Property Service Organization:
Only those organizations which meet the following conditions shall be granted the Certificate of Industrial Property Service Organization:
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- Being an organization not having foreign-invested capital;
- Having the function to conduct representative services in industrial property; and, if operating in other fields, the function to conduct legal representative services or scientific and technological services (as recognized in the Charter of Operation and Business License);
- Having at least 2 professional members who are Industrial Property Attorneys, of them one is the Head of the Organization or is authorized by the Head of the Organization to represent such Organization.
Article 59.- Procedures for granting the Representative License:
The application procedures for granting the Representative License, examination of the application for the Representative License shall be stipulated by the Minister of Science, Technology and Environment.
Article 60.- Charges and Agency fees in industrial property:
1. The Industrial Property Service Organization must list all charges and agency fees, and the amount of each kind of charge and agency fee in the charges and agency fees tariff.
National official charges and agency fees must be prescribed in the Tariff of charges and agency fees. The expenses on those services which have not been actually performed by the Organization shall not be included in the service fees.
2. Service fees (excluding national charges) actually collected from clients shall be taxable in accordance with the regulations.
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The collection of charges and agency fees must be open and in compliance with the financial regulations. The Industrial Property Service Organization shall be obliged to report the charges and agency fees to the competent State authority, if so requested.
Article 61.- Revocation of Representative License:
1. Conditions for revoking a Representative License:
a) The National Office of Industrial Property shall revoke the Certificate of Industrial Property Service Organization in the following cases:
- The Organization abandons its representative activities in industrial property, or the Organization terminates its existence;
- The Organization no longer meets the conditions prescribed in Clause 2, Article 58 of this Decree;
- The Organization violates the provisions of law, especially those in this Chapter.
b) The National Office of Industrial Property shall revoke the Card of Industrial Property Attorney and remove the Attorney’s name from the List of Industrial Property Attorneys in the following cases:
- The Card holder abandons his representative activities in industrial property;
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- The Card holder committed serious mistakes in conducting representative activities in industrial property, causing damage to the legitimate rights and interests of the authorizing party or other persons, or adversely affecting the reputation of the State authorities and/or the State.
2. The decision on revocation of the Representative License shall be published in the Industrial Property Gazette.
3. When the Industrial Property Service Organization has its Representative License revoked by the National Office of Industrial Property, all unfinished procedures conducted by the Organization shall be permitted to be discontinued and the authorizing Party shall be allowed to resume such procedures within 3 months from the date of publication of the Decision on revocation of the Representative License in the Industrial Property Gazette.
RESPONSIBILITIES OF STATE AUTHORITIES FOR MANAGEMENT OF INDUSTRIAL PROPERTY ACTIVITIES
Article 62.- Protection of national interests in industrial property activities:
1. The establishment and exercise of industrial property rights must not infringe upon the interests of the State;
2. Protected objects of industrial property of which the respective owners are State organizations and businesses or organizations and businesses having capital contributed by the State shall be the assets of the State. Such organizations and businesses shall have the obligation to protect, preserve and develop the value of these assets.
3. Confidential inventions, utility solutions
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b) The author or owner of an industrial property object and those persons involved in the creation, filing and examination of the application for protection and/or utilization of confidential invention or utility solution shall have the responsibility to keep confidential such invention or utility solution in accordance with the regulations on protection of national secrets.
4. Appellations of origin of goods of Vietnam are national assets. The right to use an appellation of origin of goods shall belong to the Owner of the Certificate of Right to Use appellations of origin of goods and may not be transferred to others in any forms.
5. The transfer of industrial property rights of Vietnam to foreign organizations and individuals must be approved by the Minister of Science, Technology and Environment.
Article 63.- Responsibilities of State Authorities Competent for Management of Industrial Property:
1. The Ministry of Science, Technology and Environment shall be responsible for organizing and guiding the implementation of regulations, policies and provisions of laws of the State on industrial property, and uniformly managing all activities in industrial property throughout the country.
2. The National Office of Industrial Property under the Ministry of Science, Technology and Environment shall be the body responsible for State management of industrial property. The National Office of Industrial Property shall have the responsibility to assist the Minister of Science, Technology and Environment in performing the responsibilities prescribed in Clause 1 of this Article.
The National Office of Industrial Property has the following functions, powers and tasks:
a) Performing the function of a State agency competent to grant the titles of protection of industrial property rights requested by individuals, legal persons and other entities;
b) Effecting procedures for suspension, cancellation or extension of the validity of the titles of protection; registering contracts on the transfer of industrial property rights;
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d) Organizing activities to provide information on industrial property;
e) Organizing examinations of professional skills and granting Licenses of operation and managing the professional activities of organizations providing representative services in industrial property;
f) Providing professional guidance and fostering professional knowledge and skills of industrial property for industrial property management agencies under the Ministries, branches, localities and local establishments;
g) Within the scope of its authorization, carrying out international co-operation in the field of industrial property.
3. The Ministries, the ministerial-level agencies, the agencies attached to the Government, the People�s Committees of provinces and cities directly under the Central Government, within the scope of their functions and tasks, shall have the responsibility to organize, guide and manage industrial property activities in their respective branches and localities.
The scientific, technological and environmental management agencies of branches and localities shall have the responsibility to assist leaders of the branches and localities in performing the said functions, and shall directly perform the following tasks:
a) Proposing to the Ministers, the Heads of the Ministerial-level agencies, the agencies attached to the Government, the Presidents of the People’s Committees of provinces and cities directly under the Central Government, measures for concretizing the implementation of the State�s policies on industrial property and for organizing the implementation of such measures;
b) Organizing the systems for management of industrial property activities within branches and localities and implementing such measures so as to increase the effectiveness of such systems;
c) Organizing activities for the popularization of policies on industrial property, coordinating with social organizations, taking measures to step up the emulation movement for industrial property creation and activities;
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e) Coordinating with law enforcement bodies in protecting the industrial property rights and handling violations of law on industrial property.
Article 64.- Responsibilities of ministries, branches, localities:
1. The Ministry of Science, Technology and Environment shall have to presribe the contents and procedures for filing, receiving and examining the applications for the titles of protection of industrial property; the procedures for approval and registration of contracts on the transfer of industrial property rights; the procedures for granting non-voluntary licenses; the regulations on management of innovative activities; coordinating with the Ministry of Defense and Ministry of Interior in prescribing the procedures for filing applications, examining and granting titles of protection for the use, transfer and publication of confidential inventions, utility solutions.
2. The Ministry of Finance shall have to coordinate with the Ministry of Science, Technology and Environment in prescribing the contents of and industrial property charges and fees and the amounts thereof, the regulations on management and use of such charges and fees, on the minimum and maximum costs of the transfer of industrial property which belongs to the State.
3. The Ministry of Agriculture and Rural Development shall have to revise the special products of agriculture; determine the cultivation and production areas and the properties of such agricultural products and requesting the corresponding People’s Committees in the areas to guide the concerned individuals, organizations in registering appellations of origin of goods for such agricultural products; coordinating with the Ministry of Science, Technology and Environment in studying and submitting to the Government for promulgation of the regulations on protection of the rights of individuals and organizations that create new plant varieties and animal breeds.
4. The Ministry of Health shall have to coordinate with the Ministry of Science, Technology and Environment in issuing regulations on the use of trademarks for pharmaceutical products in conformity with the provisions on trademarks provided for in this Decree, studying and submitting to the Government for the promulgation of the regulation on protection of the rights of persons who create processes for the prevention, diagnosis and treatment of diseases; coordinating with the Ministry of Science, Technology and Environment, the Ministry of Industry in revising the foodstuffs, beverages of particular features and quality associated with the geographical conditions of the locality where such products are produced; determining areas with the above-mentioned geographical conditions and requesting the relevant People�s Committees to guide the concerned individuals and organizations in registering appellations of origin of goods used for such foodstuffs and beverages.
5. The Ministry of Education and Training shall have to coordinate with the Ministry of Justice and the Ministry of Science, Technology and Environment, in introducing the industrial property subject into the curricula of universities and colleges.
6. The General Department of Customs shall have to coordinate with the Ministry of Science, Technology and Environment in issuing regulations on border control measures in relation to industrial property for exported and imported goods.
7. The Ministry of Trade shall have to coordinate with the Ministry of Science, Technology and Environment in issuing regulations on industrial property control of goods produced and circulated on the market.
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Article 65.- Handling Administrative Violations in Industrial Property:
The handling of administrative violations in industrial property shall be stipulated by the Government in a separate Decree.
Article 66.- Protection of consumers� interests in exercising the Industrial Property Rights:
During the term of protection, only the owner of industrial property objects shall be entitled to place indications that the products in question are protected or within the exclusive right of his/her own, including indications in the form of signs on the products, in advertisements or in transactions for business purposes.
Where the products are produced under a license, indication to this effect must be made on the products, when advertising or entering into transactions for business purposes.
Where the product is produced in Vietnam under a foreign license or bearing a trademark which is likely to create the impression that it is a foreign trademark or originates from a foreign country, the full indication "Made in Vietnam" must be written on the product.
Article 67.- Protection of industrial property rights of foreign entities:
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a) Individuals or legal persons entitled to the rights under the Paris Convention;
b) Individuals or legal persons of countries which have signed with Vietnam agreements on reciprocal protection of industrial property or which together with Vietnam accept the principle of reciprocity in the protection of industrial property of each other’s citizens or legal persons.
2. Citizens or legal persons of the countries which are members of the Madrid Agreement shall be entitled to enjoy all rights and bear all obligations in relation to trademarks under international registrations in which Vietnam is designated and which is not refused protection by Vietnam.
3. Individuals or legal persons of the countries which are members of the PCT Treaty may file applications for the titles of protection of inventions or utility solutions in Vietnam in accordance with such Treaty and with the procedures to be stipulated by the Minister of Science, Technology and Environment.
4. Where the application of this Decree results in conflicts with the provisions of international treaties to which Vietnam has acceded, the provisions of the international treaties shall prevail.
Article 68.- Application of PCT Treaty and the Madrid Agreement:
The Ministry of Science, Technology and Environment shall provide guidance on the procedures for processing applications for international registration of inventions and/or utility solutions under the PCT Treaty, procedures for processing applications for international registration of trademarks with the designation to Vietnam under the Madrid Agreement, and procedures for making and filing applications for registration of industrial property rights originating from Vietnam in foreign countries.
Article 69.- Transition provisions:
1. The applications for protection under the Ordinance on Protection of Industrial Property of January 28, 1989, which had been filed with the National Office of Industrial Property before July 1, 1996, including those filed by mail with the postal stamp prior to that date, will continue being processed in accordance with the said Ordinance.
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3. Applications for the titles of protection filed from July 1, 1996 to the date of signing this Decree shall be processed in accordance with this Decree.
Article 70.- Implementation Provisions:
1. The Ministers, the Heads of the ministerial-level agencies, the agencies attached to the Government, the Presidents of the People’s Committees of the provinces and cities directly under the Central Government, the General Director of the National Office of Industrial Property shall be responsible for the implementation of this Decree.
2. This Decree replaces the previous regulations issued by the Government on innovations, inventions (Decree No.31-CP issued on January 23, 1981, amended on March 20, 1990), on trademarks (Decree No.197-HDBT issued on December 14, 1982, amended on March 20, 1990), on industrial designs (Decree No.85-HDBT issued on May 13, 1988, amended on March 20, 1990), on utility solutions (Decree No.200-HDBT issued on December 28, 1988, amended on March 20, 1990) and on licensing (Decree No.201-HDBT issued on December 28, 1988), and Decree No.84-HDBT issued on March 20, 1990 on amendments to the said regulations. Particularly, the regulations on innovative activities under the regulations on Technical Innovations, and Rationalization of Production and on Inventions (Decree No.31-CP of January 23, 1981) shall continue to be implemented until otherwise stipulated.
3. This Decree takes effect from the date of its signing.
ON BEHALF OF THE GOVERNMENT
THE PRIME MINISTER
Vo Van Kiet
- 1 Decree of Government No. 103/2006/ND-CP of September 22, 2006 detailing and guiding the implementation of a number of articles of The Law on Intellectual Property regarding industrial property
- 2 Decree No. 31-CP of January 23, 1981, on innovations to effect technical improvement and rationalization in production and on inventions.
- 3 Decree No. 200-HDBT of December 28, 1988, on utility solution.
- 4 Decree No. 201-HDBT of December 28, 1988, on licensing.
- 5 Decree No. 85-HDBT of May 13, 1988, on industrial designs.
- 6 Decree No. 85-HDBT of May 13, 1988, on industrial designs.
- 1 Circular No. 01/2007/TT-BKHCN of February 14, 2007 guiding the implementation of The Governments Decree No. 103/2006/ ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property
- 2 Decree of Government No. 103/2006/ND-CP of September 22, 2006 detailing and guiding the implementation of a number of articles of The Law on Intellectual Property regarding industrial property
- 3 Joint circular No. 129 /2004/TTLT-BTC-BKHCN of December 26th, 2004, providing guidelines on implementation of measures for border control of industrial property rights in import or export goods.
- 4 Circular No. 3055/TT-SHCN of December 31, 1996, of the Ministry of science, technology and environment guiding the implementation of the regulations on the procedures for establishing industrial property right and other regulations in Decree No.63-CP of October 24, 1996 of the Government detailing the provisions on industrial property
- 5 Ordinance No 13-LCT/HDNN8, on the protection of industrial property rights, promulgated by the National Council
- 1 Circular No. 01/2007/TT-BKHCN of February 14, 2007 guiding the implementation of The Governments Decree No. 103/2006/ ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property
- 2 Decree of Government No. 103/2006/ND-CP of September 22, 2006 detailing and guiding the implementation of a number of articles of The Law on Intellectual Property regarding industrial property
- 3 Ordinance No 13-LCT/HDNN8, on the protection of industrial property rights, promulgated by the National Council