On 1 January 2006, the Civil Code came into force, and on 1 July 2006, the Law on Intellectual Property, which codified the government regulations on intellectual property, came into force. These are the two principal laws governing the protection of intellectual property rights in Vietnam and adopted by Vietnam to conform to WTO standards on intellectual property protection. In addition to these laws, Vietnam is also a State Party to the Paris Convention, the Madrid Agreement, Madrid Protocol, and the Stockholm Convention of 1967 (which established the World Intellectual Property Organization). Vietnam is also a member of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), the Berne Convention for the Protection of Literary and Artistic Works with effect from 26 October 2004, the Geneva Convention for the Protection of Producers of Phonograms against Unauthorised Duplication of their Phonograms with effect from 06 July 2005, the Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite with effect from 12 January 2006, the International Convention for the Protection of New Varieties of Plant with effect from 24 December 2006, and the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations with effect from 01 March 2007.
Vietnam's industrial property regime is administered principally by MOST acting through NOIP. The copyright regime is administered by the Ministry of Culture, Sports and Tourism, acting through the Copyright Department.
1. Protection of Intellectual Property Rights in Vietnam Generally, except for trade secrets, geographic indications, and trade names (which are entitled to legal protection as far as it fulfils the conditions of formation and usage), intellectual property rights are protected in Vietnam upon registration on a first-to-file priority basis.
Below is a summary of the various types of intellectual property rights protected in Vietnam and the duration of the protection:
A technical solution presenting worldwide novelty and an inventive step applicable in socio-economic fields
2. Trademarks Trademarks are generally protected by registration but certain marks, including logos, cannot be registered if they are: • not distinctive; • widely used; • descriptive of the goods or services in question; or • misleading, deceptive, or identical to or confusingly similar to existing registrations. 2.1 Priority rights Vietnam adopts a first-to-file rather than a first-to-use priority system, so that an 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 international trademark treaties. Trademarks that have been internationally registered in accordance with an international treaty can also be established in Vietnam once 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 present evidence in support of their claim of priority. 2.2 Registration procedure Vietnam has adopted the classification of goods and services as specified in the Nice Agreement for the purposes of trademark registration although Vietnam is not a member of the Nice Agreement. A preliminary trademark search can be conducted by the applicant 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 organization or directly in Vietnam. 2.3 "Well-known" trademarks Trademarks may still be protected in Vietnam in the absence of first-to-file priority. "Well-known" trademarks in Vietnam are protected in perpetuity. A trademark will be deemed well-known if it has wide public recognition as evaluated on the following criteria: - number of customers; - location for sales; - sales turnover; - the number of years in continuous use; - reputation of goods or services bearing the mark; - the number of countries where the trademark has been protected or recognised as well-known; and - costs for an assignment or licensing of the mark, or investment capital contribution value of the mark.
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. The following are excluded from patent protection: scientific discoveries, theories, or mathematical methods; schemes, plans, rules and methods for performing mental acts; methods of training domestic animals, playing games, and doing business; computer programs; the presentation of information; solutions of aesthetic characteristics only; plant varieties or animal breeds; processes of plant or animal production which are principally of a biological nature, other than microbiological processes; and human and animal disease prevention methods, diagnostic and treatment methods. An applicant unable to secure protection as an invention patent may qualify for protection as a utility solution patent (which is essentially an invention without involving an inventive step). 3.2 Priority rights The priority of applications for patent protection is determined by either the date on which NOIP receives the application or in accordance with the applicable international treaties. Applicants relying on international treaties to establish a right of priority shall make an express statement to that effect in their application and present evidence in support of their claim of priority. Vietnam is a State Party to the Patent Cooperation Treaty ("PCT"). State Parties 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. Applying for patent protection directly in Vietnam will only be possible if the invention or utility solution has not been made public anywhere in the world by being used or described in a written publication before the filing date or priority date, as applicable. A patent application must be submitted to NOIP. NOIP publishes 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 determines the patentability of the invention or utility solution and its scope of protection.
4. Industrial designs An industrial design is evaluated for worldwide novelty in the same way as an invention which requires a substantial distinction and uniqueness when evaluated by 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 works, and the shape of a product which is invisible during the use of the product. A technical design should not be disclosed in any form or 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 by 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 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. Those who translate, adapt or edit works are deemed to be the authors of their derivative work. Owners of works may be authors or co-authors, authorities or organizations which delegate a duty to an author to create a work, individuals or organizations 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 and organizations 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 and 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. Works of foreign authors not first published in Vietnam must be published in Vietnam within thirty days of first publication. Vietnam has acceded to the Berne Convention for the Protection of Literary and Artistic Works that provides the protection of Vietnamese copyright law to qualifying works under 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, Sports and Tourism. 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 working days from the receipt of the application. The Ministry of Culture, Sports and Tourism has primary responsibility for the protection of copyright in Vietnam and is assisted at the local level by a network of Culture, Sports and Tourism 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 License 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 such as the particulars of the parties, price, rights and obligations, scope, term, and territory for licensing. Assignment of certain types of industrial property, including inventions, industrial designs, layout designs of an integrated circuit, and trademarks, must be registered with NOIP. The licensing of industrial property rights is binding on the licensor and the licensee without registration with NOIP, but is ineffective against third-parties until registration with NOIP. 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. 6.4 Prohibited terms Certain terms restricting a licensee's rights may be invalid, especially those terms that do not originate or protect the rights of the licensor. These terms 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; - direct or indirect limits on the licensee's export of goods or services provided under the industrial property object license contract to territories where the licensor is neither the owner of the corresponding industrial property right nor the exclusive importer of such goods (e.g., where the licensor grants exclusive license of the industrial property); - any obligation of the licensee to purchase from a source appointed by the licensor and without product quality assurance of all or a certain percentage of materials, accessories, or equipment from the licensor or another supplier; 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 license 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 license or assignment of industrial property rights for the purpose of squeezing out competitors and attempting to monopolize the market. 6.6 License 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. 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. Proceedings can be filed at NOIP for verification of the infringement. The customs authorities, market management authorities and economic police have the power to regulate infringing goods and to take the necessary action to seize infringing products. The courses of action available to them include: powers of search; sealing up of premises; temporary detention of persons; temporary custody of goods; and the suspension of production and sale of goods. 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 the suspension of a business license; confiscation of counterfeit goods, facilities or materials used in the infringement; compelled destruction of counterfeit goods; distribution or use of counterfeit goods for non-commercial purposes; and compensation for damages. Penalties must be applied within one year, or two years for business activities which infringe legal rights of registered trademarks, geographical indications, inventions, or industrial designs, following the date of the infringement. After these statutory time limits have passed, infringers will not be subject to penalties. 7.3 Border control The Law on Intellectual Property allows customs authorities to apply border control measures for all goods that infringe on intellectual property rights. Border control measures include: - suspension of customs procedures for goods suspected of infringing intellectual property rights; and - inspection of goods so an intellectual property right holder may collect information to exercise the right to request suspension of customs procedures. Customs authorities can suspend the release of goods where there is: (a) a request from the intellectual property right holder; (b) production of protection certificates and evidence of infringement, and (c) a sum of money has been deposited or a bank guarantee has been provided for possible compensation to persons later determined to have not infringed on intellectual property rights.