INTELLECTUAL PROPERTY

s of 1 January 2006, the new Civil Code came into force in place of the old Civil Code and as of 1 July 2006 the Law on Intellectual Property, as codifying the current government regulations on intellectual property, will come into force. Both pieces of legislation become the principal legislation that governs protection of intellectual property rights. Such new legislation has been enacted in an attempt by Vietnam to adopt the WTO standard for intellectual property protection


INTELLECTUAL PROPERTY

(April 2007 Update)


On 1 January 2006, the new Civil Code came into force, replacing the old Civil Code and on 1 July 2006 the Law on Intellectual Property, as codifying the current government regulations on intellectual property, came into force. These two pieces of legislation are the principal legislation governing protection of intellectual property rights. Such new legislation has been enacted in an attempt by Vietnam to adopt WTO standards for intellectual property protection.

In addition to these laws, Vietnam is also a signatory of and, therefore subject to, the provisions of the Paris Convention, the Madrid Agreement, Madrid Protocol and the Stockholm Convention of 1967 (which established the World Intellectual Property Organisation). Vietnam also recently joined the Berne Convention for the Protection of Literary and Artistic Works with effect from 26 October 2004 and the Geneva Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms with effect from 6 July 2005.

Though embodied in the intellectual property laws, the industrial property regime is regulated and implemented separately from the copyright regime. Vietnam's industrial property regime is administered principally by the MOST acting through the NOIP while the copyright regime is administered by the Ministry of Culture and Information, acting through the Copyright Department.

1. Protection of Intellectual Property Rights in Vietnam

Generally, intellectual property rights are protected in Vietnam upon registration on a first to file priority basis, except for trade secrets, geographic indications and trade names (which are entitled to legal protection as far as they fulfill their own conditions of formation and usage). Registration is not a prerequisite for copyright protection although it is prima facie evidence for protection.

Below is a summary of the various types of intellectual property rights protected in Vietnam and the duration of the protection:



Type


Brief Description


Duration of Protection

Patent for Invention


A technical solution presenting worldwide novelty, an inventive step applicable in socio-economic fields


20 years from the date of application

Patent for Utility Solution


A technical solution new in comparison with existing technology and achievable in current economic technological conditions


10 years from the date of application

Industrial Design


The external appearance of a product embodied by lines, three dimensional forms, colours or a combination of there, novel and inventive throughout the world and capable of serving as a pattern for an industrial or handcrafted product


5 years from the date of application (renewable for an additional 2 periods of 5 years = 15 year max)

Layout Design of Integrated Circuit


A three dimensional disposition of circuit elements and their interconnections in the integrated circuit which is original and not widely known in the relevant field


10 years since the date of application (or the earlier of the expiration of: (i) 10 years from its first commercial use; and (ii) 15 years from its creation)

Trademark


Marks used to distinguish goods or services of one person from goods and services of the same kind of another person. They may take the form of words, images or any combination presented in one or more colours


10 years from the date of application (renewable for successive 10 year periods without limit)

Geographic Indication


Information indicating territorial origin of a product with characteristics or qualities pertaining to the territory


Perpetuity from the certification of protection

Trade Name


Names of individuals or entities used in business activities


As long as its formation and usage

Trade Secret


Confidential information capable of applying in trade and gaining economic advantages


As long as its formation and usage

New Plant Variety


New plant variety as created by selection or development which is of distinctiveness, uniformity and stability for plantation and has a recognizable name among relevant species


20 years from the certification of protection (25 years for trees and vines)

Copyright


Moral and material rights in respect of original literary, artistic and scientific works including software


Author's life plus 50 years (except for movies, photographs, plays, applied fine art works, which enjoy 50 year protection)

Copyright-related rights


Moral and material rights in respect of performance show, audio record, visual record, radio program and satellite program-coded signal


50 years


2. Trademarks

Trademarks are generally protected by registration however, certain marks (including logos) are not registrable if they are:

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not distinctive;
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widely used;
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descriptive of the goods or services in question; or
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misleading, deceptive or identical to or confusingly similar to existing registrations

2.1 Priority rights

Vietnam adopts a first to file rather than first to use priority system, so the earlier application for a trademark establishes a right of first priority. The date of priority is generally the date of application but this can be earlier if a qualifying application has been made in another member country of the Madrid Agreement.

Trademarks that have been internationally registered in accordance with an international treaty can also be established in Vietnam by the trademark being accepted for protection by the trademark office. Applicants who wish to rely on international treaties in establishing a right of priority must make an express statement to that effect in their application for protection, and must present evidence in support of their priority claim.

2.2 Registration procedure

Vietnam has adopted the international classification of goods and services for the purposes of trademark registration although it is not a member of the Nice Agreement. A trademark search can be conducted to establish whether the mark or any similar mark has already been registered before applying for a trademark in Vietnam.

Applications can be made either for international registration (including Vietnam) through the World Intellectual Property Organisation or directly in Vietnam. Registration of a trademark in Vietnam does not by itself expose or increase exposure of the registered owner to any legal liability in Vietnam or to Vietnamese taxation. It should however be noted that trademarks not used within any 5 year period after registration may run the risk of being de-registered.

2.3 "Well-known" trademarks

Trademarks may still be protected in Vietnam in the absence of "first-to-file" priority. A trademark will be deemed "well-known" if it has wide public recognition, based on the following criteria:

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number of customers;
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location for sales;
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sales turnover;
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the number of years in continuous use;
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popular goodwill;
*

the number of countries where the trademark has been protected or recognised as well-known;
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the value of any licence;
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number of assignments, if any; or
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capital contribution.

"Well-known" trademarks are protected for perpetuity upon recognition in Vietnam.

3. Patents

3.1 Invention and utility solution

An invention is defined as a technical solution which is new in comparison to existing technology, which is of a creative character and is applicable to various social and economic fields.

Scientific ideas, principles and discoveries, educational, teaching, training and organisational methods and systems, aesthetic appearance of products without technical features, computer software, mathematical models and diagrams are all excluded from patent protection.

An applicant unable to secure protection for an invention would have an alternative patent protection for a utility solution (which is essentially an invention without involving an inventive step).

3.2 Priority rights

Priority in applications for patent protection is determined by the date on which the NOIP receives the application, or in accordance with the applicable international treaties. Applicants who wish to rely on international treaties to establish a right of priority must make an express statement to that effect in their application and present evidence in support of their priority claim.

Vietnam is a signatory to the Patent Cooperation Treaty ("PCT"). The signatories to the PCT have agreed to permit an applicant to wait for up to 30 months after the initial filing of a patent application in one country to begin prosecuting the application in other countries. Vietnamese law extends this period to 31 months.

3.3 Registration procedure

Patent applications can be made either for international registration under the PCT procedure or directly in Vietnam.

Direct application in Vietnam will only be possible if the invention or utility solution has not been made public anywhere in the world in any form of use or through an enabling description before the priority date. A patent application must be submitted to the NOIP.

The NOIP will publish the application in the industrial property gazette after preliminary examination and acceptance of the application. A substantive examination will only be carried out upon request by the applicant or a third party. A substantive examination is to determine the patentability of the invention or utility solution and its scope of protection.

4. Industrial designs

An industrial design is defined as having worldwide novelty in the same way as an invention which also involves a substantial distinction and uniqueness to a person having ordinary skill in the relevant area. Excluded from the protection of industrial designs are mere functional or technical features of a product's appearance, external features of civil or industrial construction, features of intangible products and designs of aesthetic products.

A technical design should not be disclosed in any form, in any jurisdiction until the date of filing for protection. This is to maintain its worldwide novelty.

Priority rights over protection of industrial designs are achieved the same way as for trademarks and patents.

Since international applications are not available for protection of industrial designs, applicants need to register in Vietnam through the NOIP.

5. Copyright

5.1 Owners and authors of copyright

There is a distinction between owners and authors of works. An author is a person who creates all or part of a literary, artistic or scientific work, while those who translate, adapt or edit works are deemed to be the authors of such works.

Owners of works may be authors or co-authors, authorities or organisations which delegate a duty to an author to create a work, individuals or organisations which contract with an author for the creation of a work, heirs who inherit a work from an author who was also the owner of a work and individuals to whom and organisations to which ownership rights over a work are transferred by contract.

Rights over a work include personal rights (including the right to name a work and to permit others to use the work) and property rights (including the right to receive royalties and to rent out the work). These rights are divided into three types: (i) rights of an author; (ii) rights of an owner; and (iii) rights of an author who is concurrently the owner of a work, who therefore holds full personal and property rights over a work.

5.2 Establishment of copyright

Copyright arises from the moment a work is created in a definite form. The Civil Code provides that copyright protection in respect of foreign individuals and entities will be limited to works which are first published or disseminated in Vietnam or which are created and take a definite form in Vietnam. Under the "30 day rule", works of foreign authors must be published in Vietnam within thirty days of first publication in any other country (except for first publication in Vietnam). This "30 day rule" is an impediment to copyright protection for foreign individuals and entities, as currently foreign authors who first publish their works in another country will currently have to rely on international or bilateral treaties to which Vietnam is a signatory or enters into for copyright protection within Vietnam.

Vietnam and the United States signed a bilateral treaty on copyright protection with Vietnam, which overrides the "30 day rule" for US nationals. Vietnam also acceded to the Berne Convention for the Protection of Literary and Artistic Works which has enabled Vietnam to extend its national treatment in copyright protection to all country members of the Berne Convention.

5.3 Registration of copyright

Authors, co-authors and owners of works have the right to apply for the registration and protection of copyright and ownership of such works to the Copyright Department under the Ministry of Culture and Information. Such registration is prima facie evidence rather than a requisite of copyright protection.

The application must be supported by evidence of the applicant's authorship and/or ownership of the work. Where the application is in order the applicant will be issued with a Copyright Certificate within 15 days of receipt of the application.

The Ministry of Culture and Information has primary responsibility for the protection of copyright in Vietnam and is assisted at the local level by a network of Culture and Information Inspectors.

6. Transfer of Intellectual Property Rights

6.1 Industrial property

Owners of industrial property that is protected in Vietnam (except for “geographic indications” may license the right to use or transfer ownership of such objects to a third party. Exclusive licensees of the right to use industrial property may further sub-license their right to use.

6.2 Registration requirement

Licence or assignment of industrial property rights must be made by a written contract. A licensing or assignment agreement must include certain provisions set forth by law as such particulars of the parties, price, rights and obligations and scope, term and territory for licensing. Assignment of certain types of industrial property, including inventions, utility solutions, industrial designs, layout designs of integrated circuit and trademarks, must be registered with the NOIP. Although, the licence of those industrial property rights is binding against the licensor and the licensee without being conditional upon registration by the NOIP, registration of such licence must be registered with the NOIP for binding against any third party.

6.3 Duration

The duration of licensing contracts is limited to the valid duration of the certificate of protection for each type of industrial property, which may be renewed.

6.4 Prohibited terms

Certain terms that restrict the licensee's rights may not be included in the licensing contract, especially those that do not come from, or protect, the rights of the licensor. These include:

*

prohibitions on the licensee's innovation or improvement of the licensed objects of industrial property (except for trademarks), or any obligation of the licensee to transfer such improvement to the licensor free of charge;
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direct or indirect limits on the licensee's exports to territories where the licensor is neither the owner of the corresponding industrial property right nor the exclusive importer of the same (e.g. where the licensor grants exclusive licence of the industrial property);
*

any obligation of the licensee to purchase all or certain proportions of materials, accessories or equipment from the licensor or another supplier, who is appointed by the licensor without product quality assurance; and
*

prohibitions on the licensee's claim in respect of the validity of the industrial property right or the licensor's right to license.

6.5 Other statutory obligations and restrictions

The licensor or assignor must guarantee the validity of the industrial property rights and deal with any dispute with a third party. The licensor also needs to take appropriate measures against any infringement by a third party which may cause damage to the licensee.

The licence or assignment of the trademark must not cause confusion in relation to the characteristics and origin of the goods or services bearing the trademark. The current regulations prohibit the licence or assignment of industrial property rights for the purpose of squeezing out competitors and attempting to monopolise the market.

6.6 Licence of copyright and related rights

Authors and owners of copyrights may transfer all or part of the property rights over a work to others under a contract or under the laws on inheritance. The personal rights of an author are not generally transferable but an author who is concurrently the owner of a work has a limited right to transfer some of his/her personal rights.

7. Enforcement of Intellectual Property Rights

7.1 Course of action

The remedies for industrial property infringement fall into two categories - judicial and administrative. The judicial remedy is in principle straightforward. An owner or registered user of industrial property is entitled to commence proceedings in court for infringement of their intellectual property rights and the courts have the power to issue an injunction preventing the infringement from continuing and to award damages. The competent authorities have the powers to enforce such an injunction. However, the court has a duty to conciliate which can be time consuming and are therefore more likely to pursue an award of damages.

Vietnam has a more powerful executive than judiciary, when compared with western jurisdictions and, as a result, administrative remedies are likely to be more efficacious. Proceedings should first be filed with the NOIP for verification of the infringement. The customs authorities, the market management authorities and the economic police have the power to regulate industrial property control of goods and take necessary action to seize infringing products. The courses of action available to them include powers of search, sealing up of premises, temporary detention and suspension of production and sale.

7.2 Administrative penalties for infringement

Infringement of rights over industrial property objects shall be subject to penalties in the form of either a "warning" or a fine. Other sanctions may also be applied such as suspension of business licence, confiscation of violating means or materials, forcible restoration of original state, dismantling of violating goods and compensation for damages.

Penalties must be applied within one year, or two years for business activities which infringe legal rights of registered trademarks, appellations of origin or industrial designs, following the date of the infringement. After these statutory time limits have passed, infringers will not be subject to penalties.

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