VIETNAM

Legislation

As a member of the World Intellectual Property Organization (WIPO) and a signatory of the various international treaties and agreements relating to protection of intellectual property rights, Vietnam is working to improve its domestic legal framework for the protection of intellectual property rights (IPR). At present, Vietnam enacted the 2005 Civil Code (Code No. 33/3005/QH11), the 2005 Law on Intellectual Property (Law No. 50/2005/QH11) and the 2009 Law (Law No. 36/2009/QH12) on amendment of some articles of the 2005 Law on Intellectual Property. Other laws and regulations were also enacted and are valid for protection and enforcement of IPR in Vietnam, such as the Law on Customs and its implementing regulations on the Border Control on Intellectual Property Protection of Imported and Exported Products, and the legal framework for the establishment of the Association for Combating Counterfeiting and Piracy and for Intellectual Property Protection of Enterprises with foreign investment, the Law on Trade providing provisions on business franchise, the laws and regulations on the procedures and rules of hearings on intellectual property right-related disputes by the courts.

The Government of Vietnam and the Supreme's Court of Vietnam, for guiding the implementation of the 2005 Law on Intellectual Property, promulgated a series of Decrees, which are listed hereunder:

• Decree 100/2006/ND-CP dated 21 September 2006 on copyright and related rights;
• Decree 103/2006/ND=CP dated 22 September 2006 on registration and protection of industrial property rights;
• Decree 104/2006/ND-CP dated 22 September 2006 on registration and protection of plant varieties;
• Decree 105/2006/ND-CP dated 22 September 2006 on protection and enforcement of intellectual property rights;
• Decree 106/2006/ND-CP dated 22 September 2006 on administrative sanctions in industrial property field;
• Decree 154/2005/ND-CP dated 15 December 2005 guiding the implementation of the Law on Customs on customs control on intellectual property to importing goods and exporting goods;
• Circular No. 02/2008 jointly issued by the Supreme's Court, Supreme's Procuracy, Ministry of Culture, Sports and Tourism, Ministry of Technology and Science and Ministry of Justice on 3 April 2008 guiding the procedures for settlement of disputes on intellectual property rights at the courts;
• Decree 54/2000/ND-CP dated 3 October 2000 on protection of industrial property rights on trade secret, geographic indications, trade names and protection of anti-unfair competition rights.

Vietnam's Signatory of International Agreement on Intellectual Property

• Paris Convention for the Protection of Industrial Property, 30 April 1975
  
• Patent Cooperation Treaty (PCT), 10 March 1993
• Madrid Agreement on International Registration of Marks, 15 May 1973
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 11 July 2006
• Berne Convention on Copyright Protection of Literary and Artistic Works, 26 October 2004
  
• Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms, 6 July 2005
  
• Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite, 12 January 2006
  
• International Convention for the Protection of New Varieties of Plants (UPOV), 24 December 2006
• Rome Convention for the Protection of Artists, Performers, Phonograms Producers and Broadcasting Agencies: to be acceded
• Member of the World Trade Organization (WTO), acceded to WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

Bilateral Agreements

• US-Vietnam Bilateral Trade Agreement, Chapter II on Intellectual Property;
• Vietnam-U.S. Copyright Agreement;
• Swiss-Vietnam Agreement on Protection of Intellectual Property Rights.
  

How International and Bilateral Agreements will be applied in Vietnam?

Article §5 of the 2005 Law on Intellectual Property stipulates that if provisions of international treaties to which Vietnam is a signatory contravene the provisions of the Law on Intellectual Property on the same issue or the Law on Intellectual Property of Vietnam does not regulate any issue which is regulated in such international treaties, relevant provisions set forth in such international treaties shall apply.

Objects to be protected under the Law on Intellectual Property

Under the Law on Intellectual Property, the following objects are protected:

• Inventions, utility solution:
  • is a technical solution, in form of a product or a process, to resolve a specific issue by utilizing laws of nature.

• Industrial designs:
  • is appearance of a product expressed in shapes, lines, dimensions, colors or any combination thereof

• Trademarks:
  • Trademark includes trade mark and service mark, is any sign used to distinguish goods or services of different organizations and individuals. Collective mark is a mark used to distinguish goods or services of members from those of non-members of an organization that is the owner of the mark. Certification mark is a mark licensed by its owner to other organizations, individuals to use for their goods or services in order to certify characteristics in respect of origin, materials, raw materials and methods of goods production or methods of services supply, quality, accuracy, safety or other characteristics of such goods or services. Associated marks are marks that are registered by the same owner, identical or similar to each other and are used for identical or similar or inter-related goods and services. Well-known mark is a mark widely known throughout territory of Vietnam.

• Layout of semiconductor integrated circuits:
  • is a three-dimensional disposition of circuitry elements and interconnections of such elements in a semiconductor integrated circuit.

• Business secrets:
  • is information obtained from financial, intellectual investment which is undisclosed and susceptible to application in business.

• Trade names:
  • is a designation of an organization or individual used in business to distinguish the business entity bearing such designation from other business entities acting in the same field and area of business. The area of business stipulated in this paragraph shall be the geographical area where business entity has business partners, clients or reputation.

• Geographical indications:
  • is a sign used to indicate a product originating from a specific area, locality, region or country.

• Plant varieties:
  • is a plant grouping within a single botanical taxon of the lowest known rank, uniform of morphological, stability in the propagation circle, which can be distinguished by the phenotype expressed by a genotype or the combination of genotypes and distinguished from other plant grouping in at least one genetic phenotype. Rights to plant varieties are the rights of organizations, individuals to the new plant varieties which are created or discovered and developed by and fall under the ownership right of such organization or individuals.

• Copyright (literary, artistic and scientific works) and related rights (performances; sound recordings; video recordings; broadcasting programs; satellite signals carrying encrypted programs).

"First Come First Serve" principle

In case of more than one applications filed by different applicants for patents for one invention or for Patent for more than one industrial designs which are identical or not distinctive with each other or for Registration Certificate of more than one trademarks which are identical with or confusingly similar to each other for goods/services which are identical with or similar to each other, Patent/Registration Certificate will only be granted to application which is legitimate and which has earliest priority date or filing date among the applications which satisfy conditions for being granted Patent/Registration Certificate.

In case all of such applications satisfy conditions for being granted Patent/Registration Certificate and have same earliest priority date or filing date, Patent/Registration Certificate will only be granted to only one application among those in accordance with mutual agreement of all applicants; if no agreement is reached, all applications shall be refused.

Who can file applications directly in Vietnam?

Any Vietnamese or foreign organization and individual, whether having or having no production/business establishment in Vietnam, can file applications directly or indirectly through their legitimate representative in Vietnam.

Any foreign organization having no production/business establishment in Vietnam, any foreign individual not permanently residing in Vietnam cannot file applications directly in Vietnam. They have to file applications through their legitimate representative in Vietnam.

Law firms licensed to practice intellectual property in Vietnam are one of the legitimate representatives.

Principles for determination of priority rights of applications

Applicant for registration of an invention, an industrial design or a trademark is entitled to claim priority right on the basis of the first application for registration of the same objects if the following conditions are fully satisfied:

• The first application has been filed in Vietnam or a country which is member of an international treaty having provisions on such priority right to which Vietnam is a party, or which is a country having agreement with Vietnam to apply such priority right provisions;
• Applicant is a national of Vietnam or such a country as mentioned in the preceding subparagraph (a), who permanently resides or has production/business establishment in Vietnam or such a country as mentioned in the preceding subparagraph (a);
• Claim for the priority right is clearly stated in the application and a copy of the first application, which is certified by patent and trademark office receiving such first application;
• The application has been filed in Vietnam within the time-limit prescribed in the international treaty to which Vietnam is party.

In a single application for Patent for invention, industrial design or Certificate of Registration of trademark, the applicant may claim priority right based on different earlier applications, provided that such claim must indicate the corresponding contents of such earlier applications and the application.

An application enjoying priority right shall have priority date being the filing date of the first application.

Duration of Application Examination

Formality Examination:

An industrial property application shall be examined as to its formality within 1 month from the filing date.

Substantive Examination:

An industrial property application shall be examined as to its substantive contents within the following time limits:

• As to application for invention, 12 months from its publication date if request for substantive examination is filed prior to publication date or from the date of request for substantive examination if such request is filed after the publication date;
• As to application for trademark, industrial design, geographical indication, 6 months from its publication date.

The time limit for re-examination of application shall be equal to two thirds (2/3) of, and in complicated cases extendable up to, the time limit of its initial examination.

Time for amendment of or supplement to application shall not be counted in the time limits of formality, substantive examination and re-examination.

Bases of establishment and protection of intellectual property rights

Industrial property rights to inventions, layout of semiconductor integrated circuits, industrial designs and trademarks are established and protected on the basis of decision issued by the Vietnam National Office of Intellectual Property to accept protection of such objects, in form of Protection Title or written decision on acceptance of protection (applicable to trademarks internationally registered in Vietnam under Madrid Agreement and Madrid Protocol).

Industrial property right to geographic indication is established and protected on the basis of Certificate of Registration of such geographic indication, granted to organization managing such geographic indication.

Industrial property rights to well-known trademark is established on the basis of bona fide use of such mark, which makes such trademark become famous, without registration with the Vietnam National Office of Intellectual Property.

Industrial property right to trade name is established on the basis of legitimate use of such trade name without registration with National Office of Intellectual Property of Vietnam.

Industrial property right to business secret is established on the basis of financial, investment and intellectual activities or results of other legitimate activities to find out, create or acquire information which creates business secret and protect confidentiality of such information without registration with National Office of Intellectual Property of Vietnam.

Titles of Protection

An invention is protected in form of a Patent of Invention. An industrial design is protected in form of a Patent of Industrial Design. A trademark is protected in form of a Certificate of Trademark Registration. A layout of semiconductor integrated circuit is protected in form of a Certificate of Registration of Layout of Semiconductor Integrated Circuit.

Patents and Certificates are collectively called as "Titles of Protection" under the Law on Intellectual Property.

Duration of Protection

1. Invention:

A Patent for an invention becomes effective as of the granting date thereof and continues its effect for 20 years from the application filing date.

2. Utility Solution:

A Patent for a utility solution becomes effective as of the granting date thereof and continues its effect for 10 years from the application filing date.

3. Industrial Design:

A Patent for an industrial design becomes effective as of the granting date thereof and continues its effect for 5 years from the application filing date. A Patent can be renewed two consecutive times each 5 years.

4. Trademark:

A Certificate of Registration of a trademark becomes effective as of the granting date thereof and continues its effect for 10 years from the application filing date. A Trademark Registration Certificate can be renewed unlimited times, each 10 years.

5. Layout of Semiconductor Integrated Circuits:

A Certificate of Registration of a layout of semiconductor integrated circuit becomes effective as of the granting date thereof and terminates its effect on earlier of the following dates:

• Expiration of 10 year period, counted from the application filing date;
• Expiration of 10 year period, counted from date of registration or first use in commerce at anywhere in the world;
• Expiration of 10 year period, counted from the date of creation of the layout of semiconductor integrated circuit.

6. Geographic Indication:

A Certificate of Registration of a geographical indication is valid indefinitely from the granting date.

7. Copyright

Generally, a moral right (or personal rights) of authors is protected indefinitely, except moral right to publish or permit others to publish the works.

Duration of protection of the material rights (or property rights) and the moral right (to publish or permit others to publish the works) is as follows:

• As to cinematographic work, photographic work, theatrical work, applied fine art work, anonymous work, the time-limit of protection shall be 50 years from the first publication date thereof. Within 50 years from the fixation date of cinematographic work, theatrical work, if those works have not yet been published, the time-limit of protection thereof will be counted from the fixation date of those works (it should be noted that on 1 January 2010, this time-limit is revised as follows: the time-limit of protection of cinematographic work, photographic work, applied fine art work, anonymous work shall be 70 years from the first publication thereof; as to cinematographic work, photographic, applied fine art work which are not published within a duration of 20 years from their fixation, the time-limit of protection thereof will be 100 years from their fixation);
• Works other than the above-mentioned works shall be protected for the lifetime of the author and for another 50 years after the death of the author. With respect to a work of co-authors, the time-limit of protection of such work will end on the 50th year after the death of the last surviving author.
• The time-limit of protection shall end at the 24 hour on 31 December of expiration year of copyright.

Termination of Validity of Title of Protection

The validity of a Title of Protection would be terminated in the following cases:

• The owner of a Title of Protection do not pay the annuities or do not apply for renewal of such Protection Title as prescribed;
• The owner of a Title of Protection has declared to relinquish the rights conferred by the Protection Title;
• The owner of a Title of Protection has no longer existed or the owner of Trademark Registration Certificate has no longer engaged in business without a lawful successor;
• A registered trademark has not been used by its owner or owner's authorized users without justifiable reasons for a term of 5 consecutive years prior to a request for termination, except in case where the use is commenced or resumed at least 3 months prior to date of request for termination;
• The owner of Registration Certificate of a collective mark fails to supervise or ineffectively supervises the implementation of the rules on use of collective mark;
• The owner of Registration Certificate of a certification mark violates the rules on use of certification mark or fails to supervise or ineffectively supervises the implementation of such rules;
• Specific geographical conditions attributable to the reputation, quality or characteristics of the products bearing a geographical indication have been changed, modified which result in a loss of the reputation, quality or characteristics of such products.

Invalidation of Title of Protection

A Title of Protection would be entirely invalidated in the following cases:

• Applicant neither has right to register nor has been assigned such right to register inventions, industrial designs, layout of semiconductor integrated circuits and trademarks;
• Industrial property object fails to satisfy conditions for protection at the granting date of Title of Protection.

A Title of Protection would be partly invalidated if that part fails to satisfy conditions for protection.

Any organizations or individuals shall be entitled to request the State administrative authority of industrial property rights to invalidate a Title of Protection. The time limit for filing of such request is the whole duration of protection. With respect of trademark, the time limit shall be 5 years as from the granting date of Title of Protection, except in case where the Title of Protection was granted due to the applicant's dishonesty and bad fair.

• Patents
• Trademarks
• Designs
• Copyright
• Enforcement