Filing & Registration

 IP LITIGATION & INFRINGEMENT

	Does Vietnam Trademark Office have an official opposition for the pending trademark application?
	What procedures of the registration for the trademark application are performed?

1. Are there any provisions for criminal enforcement and remedies?

      2. What kinds of remedies are available?

3. What kinds of sanctions are available?

      4. Is it possible to protect a design simultaneously under registered design and copyright laws?

     5. Is there a provision for opposition proceedings prior to registration of trademark and/or design patent being granted?

      6. Who can institute opposition proceedings?

7. Is there a provision for cancellation proceedings?

8. Who can institute cancellation proceedings?

      9. What kind of countermeasures can be taken by original proprietor in case his trademark was improperly in the name of another.

10. Are there any expiry dates for filing a cancellation trial?

11. Has Vietnam performed the recognition of well-known marks?

IP Litigation & Infringement

IP Legislation

Non-Contentious

Does Vietnam Trademark Office have an official opposition for the pending         trademark application?

      Yes, recently, the Trademark Office has just provided that all applications for trademark registration after being accepted as to the formalities shall be published in the Official Gazette of Industrial Property for the opposition actions by any third party. Upon considering the opposition, the Trademark Office may issue an official notice of the refusal of the registration

4    What procedures of the registration for the trademark application are performed?

      The application for trademark registration will undergo following steps:

	Formality examination within 3 – 4 months from the filing date;
	Publication of the trademark application data in the Official Gazette of Industrial Property, if being accepted as to the formalities for the official opposition actions submitted by any third party in the 9-month period of the substantive examination;
	substantive examination within 9 months from the date on which the application accepted as to the formalities to make a decision of refusal or grant of the protection, and simultaneously trademark registration data to be published in the Official Gazette of Industrial Property for appeal by any third party.

1. Are there any provisions for criminal enforcement and remedies?

Yes, the grounds for criminal enforcement and remedies are:

1. the owner of right shall be entitled to request a competent state authority to    deal with or else initiate proceedings at trial against any third party for having    infringed his industrial property right. The owner shall have the right to  request injunction and damages against the infringer.  Before taking action like that, the owner of right may notify the infringer and request him to stop infringement.

2. the owner of patent or design shall have the right to request the court’s assistance against any person who has not paid due compensation.

3. The owner itself of right can take action or authorize other person to do  these. 

      2. What kinds of remedies are available?

	injunction
	delivery up
	damages
	seizure of infringing products
	fines
	term of imprisonment.

3. What kinds of sanctions are available?

  Administrative, civil and criminal sanctions can be taken for punishing infringing act.

4. Is it possible to protect a design simultaneously under registered design and   copyright     laws?

  Yes, it can be protected under both types of law in case a design is an applied fine   art   work.

5. Is there a provision for opposition proceedings prior to registration of trademark   and/or design patent being granted?

Yes, during the period of substantive examination, any third party shall have been   entitled to file an opposition to the grant of a certificate to applications, which   have   been published, in the Official Gazette of Industrial Property.

6. Who can institute opposition proceedings?

  any interested party including Registrar ex officio and registered proprietor.

7. Is there a provision for cancellation proceedings?

Yes, the grounds for cancellation are that:

1. the person who has been granted a certificate was not entitled to apply for  its  grant and has not been transferred such right by the entitled person.

2. the right to obtain a Patent for invention or design belongs to a number of  natural  or legal persons or other entities, one of whom has not agreed to   the  filing.

3. the patent for invention or design incorrectly states the creator due to a  deliberate  misinformation supplied by the applicant

4. the subject matter of protection does not meet the statutory criteria.

8. Who can institute cancellation proceedings?

        any interested party including Registrar and registered proprietor.

9. What kind of countermeasures can be taken by original proprietor in case his          trademark was improperly in the name of another.

1. A request for cancellation an improper registration can be filed with the Vietnamese National Office of Industrial Property under Article 6^septies of Paris Convention.

2. A cancellation trial can be also taken in case the original proprietor proves that the improper registrant has ever known, before filing, the subject mark already owned by the original proprietor. 

10. Are there any expiry dates for filing a cancellation trial?

1. No expiry dates for filing a cancellation trial in case an improper registration was granted for “unhealthy motives of the applicant”.

2. 5 years from the granting date for the other ones.

11. Has Vietnam performed the recognition of well-known marks?

According to the Vietnamese current intellectual property law, the provisions on the recognition of well-known marks are stipulated, however, these do not still run in practice.

                                                                                                                              Back to top>>