Who can oppose my design application in Vietnam?
According to Article 112, Law on Intellectual Property 2005, “as from the date an industrial property registration application is published in the Property Office Gazette until prior to the date of decision on the grant of a Protection Title, any third parties shall have the right to present opinions to the States administrative authority of industrial property rights in relation to the grant or refusal of a Protection Title in respect of the application”.
Thus, anyone regardless relates or not to the design application has rights to file an opposition letter. However, if the third party is Vietnamese, they can directly file this opposition to he National Office of Intellectual Property of Vietnam. In the other cases, if the third party is a foreign opponent, they have to authorize a lawful IP representative in Vietnam to proceed with such action.
What are the requirements with respect to recording the license trademark in Vietnam?
- Required documents
For the recordal of a license agreement of trademark in Vietnam, the following documents is required:
- ONE original Power of Attorney executed by a person in charge of Licensor or Licensee Party;
- TWO duly executed originals of the Trademark License Agreement which executed by persons in charge of both Licensor and Licensee respectively. In case the Trademark License Agreement includes multi-sheet, the authorized persons of both Licensor and Licensee should sign on each sheet (the initials are acceptable) OR use corporation seals to intercross over all sheet.
- Required content of License Agreement trademark in Vietnam:
Please be noted that there is no a standard form of license agreement. However, under Vietnam regulations, the Trademark License Agreement must include the following necessary contents and provisions:
+ Full name and address of the Licensor and the Licensee;
+ Bases of the license;
+ Type of the contract;
+ Scope of the license (limitations to use; territorial limitations);
+ Term of license;
+ Price for the license;
+ Rights and obligations of the Licensor and the Licensee.
What are the additional provisions should sub-licensing trademark in Vietnam be allowed?
In principle, the contents of the secondary Licensing Agreement a trademark in Vietnam may be detailed but shall not be exceeded or extended in relation to the relevant contents of the base Licensing Agreement, such as:
- The Licensing time duration in the secondary Licensing Agreement a trademark in Vietnam may be shorter or equal to the base Licensing Agreement but not exceed.
- The Licensing territorial scope in the secondary Licensing Agreement a trademark in Vietnam may be narrower or equal to the extent specified in the base Licensing Agreement.
Please be noted that the secondary Licensing Agreement cannot contain terms that allow Licensee Party to improve or amend the licensing trademark in Vietnam.
What are the typical mistakes when licensing trademark in Vietnam?
The first, the frequent formal and procedural mistakes when licensing trademark in Vietnam can be listed as:
- Licensing without checking the legal status of the licensing trademark in Vietnam. For example:
. Whether the licensing trademark is valid protection in Vietnam or not?
. In case of signing a secondary trademark licensing agreement, whether the Licensor Party in that secondary Licensing Agreement is permitted by the Licensor Party in the base trademark licensing agreement or not?
- Signing the trademark licensing agreement before the establishment of rights of trademark in Vietnam.
- In order to licensing an IP object in general, as well as in particular a trademark in Vietnam, such object must be already protected in Vietnam, i.e. it has been granted protection title. Those IP objects not yet registered in Vietnam cannot be licensed.
- The Agreement of trademark licensing in Vietnam missing the stamps and/or signatures adjoining all the pages in the Agreement of both Licensor Party and Licensee Party.
- Another point, the Agreement of trademark licensing in Vietnam is not registered with the National Office of Intellectual Property (NOIP), therefore, it will be not valid to the third-party. According to Article 148.2 of Vietnam IP Law 2005: “an industrial property object license contract shall be valid as agreed upon by the involved parties but shall be legally effective to a third party upon registration with the state management agency in charge of industrial property rights”.
The second, the frequent substantive mistakes when licensing trademark in Vietnam can be listed as:
- The licensing contents (such as time duration, territorial scope…) are in excess of the base Trademark Licensing Agreement;
- Missing a clause that defining the obligation to record indications on goods or packaging that such goods are manufactured under a Agreement of trademark Licensing in Vietnam (According to Article 142.4 of Vietnam IP Law 2005).
What are the recent changes on the fee of trademark in Vietnam?
In accordance with the Circular No. 263/2016/TT-BTC issued by the Ministry of Finance on November 14, 2016; came into effect since January 01, 2017, the official Government’s fees for patent, design and trademark in Vietnam increased. The main changes on the fee of trademark in Vietnam in Circular No. 263 as below:
+ The occurrence of Trademark usage fee which calculated based on the number of class(es) under that Trademark Certificate, requested to pay at the time of trademark renewal every 10 years (previously, not counted);
+ The fee of trademark opposition in Vietnam will be calculated based on the number of class(es) under the opposed trademark, instead of number of application as before.
+ The appeal fee will be calculated based on number of class(es), goods & services that exceed the 6th in a class, instead of number of application as before. It can be viewed as a volume of works that a Trademark examiner needs to perform when re-examines in appeal process. However, this calculation has not been applied yet due to some inadequacies may arise in reality. Thus, at the moment, the National Office of Intellectual Property (NOIP) will not collect appeal fee at the filing stage, a specific Notice on necessary fees will be issued separately.
Is Vietnam a member of the Nice Classification?
No. Although Vietnam is not yet an official member of the Nice Agreement, it has long been using the International Classification of Goods/Services under the Nice Agreement for the purpose of trademark registration in Vietnam.
From October 1, 2017, the Vietnamese version of the Nice Classification 11th Edition, translated by the National Office of Intellectual Property (NOIP) from the English version published by WIPO, be applied to the classification of goods and services for trademark registration in Vietnam. Accordingly, if an applicant, at the time of filing trademark in Vietnam, fails to properly classify the designated goods/services according to the new Vietnamese edition, the National Office of Intellectual Property (NOIP) shall proceed with re-classification during examination process and the trademark applicant must pay additional fees for classification.
What are the recent changes on the fee of patent in Vietnam?
In accordance with the Circular No. 16/2016/TT-BKHCN issued by Ministry of Science & Technology on November 14, 2016; came into effect since January 15, 2018, the official Government’s fees for patent, design and trademark in Vietnam increased. The main changes on the fee of patent in Vietnam in Circular No. 263 as below:
+ The occurrence of annual Certificate usage fee, which requested to pay along with maintenance fee (previously, not counted);
+ Additional fee for substance examination from the 7th page of the Patent Specifications (previously, only counted by the number of independent claims)
Publication fee for the whole Patent specifications has been ratified but not yet applied at the moment because the facilities of Vietnam Patent Office (NOIP) have not yet met the requirements for publishing the large data yet (previously, publish the bibliography (1 page & 1 figure only).
The English specification of patent in Vietnam could be accepted?
According to the regulations on patent in Vietnam, the official language used in examination of patent application is Vietnamese, however, Patent Examiners will have favorable look upon the English specifications as a reference, in any case, English specification is recommended, if available.
Recently, several Patent Examiners of Vietnam Patent Office (NOIP) even propose the submission of English specifications as a reference to grant Patent Certificate, if any.
Therefore, it is recommended to provide with English translation of the specification when filing patent in Vietnam, if available.
In case of withdrawal of the patent application in Vietnam, will the National fees of filing application be refunded?
Previously, when examination fee is paid at the time of filing patent application in Vietnam, the substance examination fee will be refundable if the applicant decides to withdraw the application before it enters the substance examination period.
However, from January 05, 2018, the National fees of the patent application in Vietnam will not be refunded under any circumstances in accordance with the Circular No. 16/2016/TT-BKHCN of the Ministry of Science & Technology, amending and supplementing Circular No. 01/2007/TT-BKHCN.
Please advise how the request to oppose an industrial design application in Vietnam is processed?
According to the Article 6, Circular 01/2007/TT-BKHCN:
- Written opinions of the third part may be sent to The National Office of Intellectual Property of Vietnam (NOIP) from the date of publication to the date prior to the issuance of protection for the industrial design.
- The NOIP shall notify the applicant about the third parties’ opinions within 1 month after receiving opposition request. The applicant now have 1 month to give feedback in writing. The NOIP shall notify the feedback to the third party and then 1 month is given for responding.
On the basis of proofs and arguments, the NOIP shall finalize the opinions of both applicants and third parties.
- When considering opinions of the third party groundless, the NOIP is not required to notify those opinions to the applicant but shall notify the third party of its refusal to consider the opinions, clearly stating the reason for refusal.
- In case the NOIP cannot determine if the opinions of the third party are grounded or not, filing a petition with a court for handling is recommended. Within 1 month after the NOIP’s notice, if the third party:
+ Failing to the notify the NOIP about the filing for a petition with a court is regarded as withdrawing the opposition request.
+ If the notification is sent within the time limit, the application process shall be suspended until the results of dispute settlement by the court are obtained.
- When necessary and upon the request of both parties, the NOIP shall organize face-to-face meetings between the third party and the applicant to further clarify the matter challenged by an opposition.
Please be noted that the time limit for the applicant to respond to the opposition of the third party shall not be counted into the time limit for the NOIP to carry out relevant procedures according to regulations.
What are the requirements for the opposition design application in Vietnam?
- Requirements as to formality:
- Opposition must to be in Vietnamese written form. Any unofficial types of exchange information such as telephone, direct meeting with examiners are not recorded as official opposition.
- If a third party wishes to file an opposition through an IP agent, a Power of Attorney is compulsory.
- The opposition should provide the accurate personal contact information such as name, telephone, email or the similar things so that The National Office of Intellectual Property of Vietnam (NOIP) can conveniently get in contact with at any time.
- The third party is request to pay the regulated fees.
- Requirements as to substance of opposition application:
- Aforesaid legal basis and current basis need to be clearly presented, cohesion and coherence;
- Evaluations as well as inferences should be included to make the opposition more persuasive;
- The third party needs to guarantee and be responsible for the authenticity of the supplied information and filed documents.
Apart from the legal grounds for opposition, are there any documents or supporting evidence that the opponent should provide to oppose a design application in Vietnam ?
A third party needs to give all evidences to prove for the above mentioned legal basis, including images containing design, information resources and the issuing date of the information resources. The resources can be under the form of granted patent for design, published application in any countries or similar things. Data from internet is also considered as an evidence of disclosure of design. In many cases, applicants themselves disclosed design on their websites or marketing/trade channel.
It is noticeable that in case where a design is disclosed without designer’s permission will not be seen as lack of novelty, which regulated at point 4, Article 65, Law on Intellectual Property.
What is the time frame for filing an opposition against an industrial design in Vietnam?
A design application will be published if it meets requirements as to formality. The publication will be an important data resource for all parties follow industrial property to NOIP and carefully prepared documents for opposition.
This diagram shows the timeline for filing opposition: