Vietnam is a member of almost international conventions or treaties on intellectual property rights regarding patent, trademark, new varieties of plants and copyright such as Paris Convention, Madrid Agreement and Madrid Protocol, Patent Cooperation Treaty (PCT), Berne Convention, Rome Convention, International Convention for the Protection of New Varieties of Plants (UPOV), Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
Although Vietnam’s IPR related legislation is generally recognized to have fully complied with the world common norms, its IPR enforcement practice effectiveness is not somewhat good.
Patent
Any invention belonging to one of three categories substance, product or process that enables to solve a particular technical problem by the application of natural laws, whether in the form either of PCT or non-PCT application, are able to be granted a patent for invention with 20-year protection term provided it is of novelty, inventive step (non-obviousness) and industrial applicability. Where in the absence of inventive step, such invention may be granted as a patent for utility solution (also equivalently known in other jurisdictions as utility model, petty patent, innovation patent, small patent or minor patent) whose validity is 10 years.
Another patent also available for outward appearance of a product embodied in three in three dimensional configuration, lines, colors or a combination thereof is patent for industrial design on the condition that it is of novelty, creative nature and industrial application. A granted patent for industrial design would take effective in 5 years from the granting date and may be renewable twice 5 years each
Those want to register their inventions in Vietnam are able to use either national route (eg, by filing a new invention claiming Paris Convention priority in a period of 12 months) or international route (eg, entry into Vietnamese national phase based on a PCT application in 31 months from the earliest priority date). When seeking patent protection in multiple countries including potential extension into Vietnam, requests for PCT-based protection are commonly preferred by foreign inventors or applicants. For design, since Vietnam has not yet acceded to Hague Agreement Concerning the International Registration of Industrial Design, only way for potential applicant is to directly file with National Office of Intellectual Property (NOIP) through a local registered intellectual property agent.
Except where PCT application prematurely entering Vietnamese national phase, formality check of which shall be merely made from 32th month onward counting from the earliest priority date, all invention applications, whether PCT or non-PCT ones, will be examined as to formality within 01 month before they are published on the Industrial Property Gazette on or after the 19th month or within two (02) months from the date of formality acceptance, whichever date is the later. Applicant can hold the request for substantive examination until 42nd month (36th month for utility solution application) from the filing date or earliest priority date. As provided by the laws within a period of 18 months counting the date of substance examination submission, NOIP shall issue substantial examination report. Where the report favors the applicant meaning government fee for grant of patent and 1st year annuity are required to be paid within 30 days then a patent for invention shall be issued in around 1-3 months thereafter.
Any granted patent wishing to maintain validity shall be paid annuity annually, according to which time limit for paying annuity shall theoretically commence in 6 months prior to the date of expiry (accepted filing date or priority date) is accepted in a grace period of 6 months from the date of expiry provided penalty is made. However, in practice at the time of issuing grant notice, to be more convenient NOIP usually requires applicant to pay 1st year annuity. Upon receipt of grant fee including 1st year annuity, NOIP will issue decision on grant of patent (this decision is kept internally and never sent to applicant) leading to the fact the date of decision (also known as date of grant) shall be always shown on the patent. And afterwards, the time limit for attending to 2nd year annuity and subsequent years shall be stably calculated from the date of grant.
Trademark
Marks eligible for registration as trademark shall be visible ones in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors and they are neither confusingly similar to earlier marks nor misleading or deceiving consumer as to the origin or other characteristics of goods/services. Marks only embodied in Chinese, Japanese, Korean or non-Roman characters are generally not entitled to protection while other types of non-traditional marks, namely three dimensional, positional, series, trade dress (get-up) may be protected in some limited cases. Other types of special marks registrable subject to their compliance ability with corresponding particular requirements such as collective mark, certification mark, associated mark or defensive mark and well-known mark.
Any trademark holder whether a natural person or a juristic person may obtain protection either through international route ie. the Madrid system or through national route ie. direct filing represented by a Vietnam local IP agent.
To qualify for protection, any applied-for mark must be both inherently distinctive and capable of distinguishing goods/service bearing such applied-for mark from those of other subjects, which means Vietnam adopts both absolute refusal and relative refusal grounds during trademark examination.
As a civil law follower, Vietnam applies first to file rule in establishing trademark rights according to which only an applied-for mark that is filed or its priority date is claimed at the earliest amongst other applied-for marks identical with or confusingly similar to the former pertaining to identical or similar goods/services may be conferred protection.
A multi-class application for registration of a mark is accepted wherein applicant may claim one or some goods/services in one or more than one class according to the Nice Classification’s 11th edition. A trademark application is normally undergone such 4 stages as formality check in 1 month, publication of formally accepted application for possible opposition by third party, 9-month substantial examination from the publication date and finally grant of certificate of registration. It theoretically takes about 12 months where everything goes smooth to get a certificate but in practice due to NOIP’s current heavy backlog and limited capacity the timeframe may prolong a further period of 4-8 months.
Trademark registration shall be valid for a term of 10 years counting from the filing date and it can be renewed unlimitedly in 6 months prior to the expiry date, each for ten years. It is possible to file a request for late renewal in a grace period of 6 months after the expiry date of the registration against payment of a surcharge. There is no provision on submitting a request for premature renewal, however, from our own experience, a premature renewal request, e.g. 01 year before the due date, can be normally accepted by NOIP without shortening the term of the registration. Although no proof of use of registered mark is required as a prerequisite for each renewal, it is worth noting that registrant of a registered mark is required to put his/her trademark into use in commerce, otherwise such mark may be vulnerable to invalidation by third party’s 5-year consecutive non-use-based validity termination action against such mark.
Copyright
Generally speaking, all literary and artistic works as mentioned in Berne Convention are copyrightable in Vietnam on the condition that they are created and fixed in a certain material form with originality. Copyrighted literary and artistic works comprise, namely literary works, scientific works, textbooks, teaching courses and other works expressed in
written language or other characters, cinematographic works, photographic works, works of applied art, computer programs and data collections, etc. While performance, audio and visual fixation, broadcast or satellite signal carrying coded programmes are protected in the form of related rights (neighboring rights) provided that they are fixed or displayed without causing loss or damage to copyright.
Copyright author is the person who directly creates a part or whole literary and artistic work while copyright owner means an organization or individual who holds one, several or all of such economic rights as to make derivative works, display their works to the public, reproduce their works, distribute or import the original or copies of their works, communicate their works to the public by wireless or landline means, electronic information networks or other technical means, lease the original or copies of cinematographic works and computer programs.
To establish the entitlement to copyright ownership, the IP Law states that any organization which assigns the task of creating a work to an author who belongs to such organization shall become the owner of such copyright, particularly comprising economic rights as mentioned above paragraph plus another moral right being right to publish the works or authorize other persons to publish that work unless otherwise agreed. Where any organization or individual who enters into a contract with an author for the creation of a work shall be owner of such unless otherwise agreed by parties.
Likewise, for related rights, organizations and individuals who use their time and make a financial investment in or use their material and technical facilities to give a performance or to produce audio and visual fixation shall be the owners of such performance or audio and visual fixation unless otherwise agreed with the parties concerned. For broadcasting programs, ownership over the same would belong to right broadcasting organization if no otherwise agreement in contrary.
In terms of protection term, cinematographic works, photographic works, works of applied art and anonymous works have a term of protection of seventy five years from the date of first publication. For cinematographic works, photographic works and works of applied art which remain unpublished within twenty five years from the date of fixation, the term of protection is one hundred years from the date of fixation. Any work not specified at above paragraph would be protected for the whole life of the author and for fifty years after his/her death and where joint authorship, the term of protection expires in the fiftieth year after the death of the last surviving co-author.
Since both copyright and related right are established at the moment a work or subject of related right is created and fixed in a tangible medium of expression irrespective of its content, quality, form, mode and language and irrespective of whether or not such work has been published or registered, thus any concerned party may initiate a lawsuit before a court without providing certificate of copyright or related right registration. However, such registration of copyright or related right may help the registrant shift the burden of proof to the other party.
Fair use accepted, provided that he or she must neither affect the normal use of such works nor cause prejudice to the rights of the author or copyright holder and must provide information being the author's name and the source and origin of the work, for the use of other’s copyrighted work consists of:
(a) Making one copy of the work of an author for scientific research or teaching purposes;
(b) Reasonable quoting from a work in order to comment on or illustrate one's own works, without misrepresenting the author's views;
(c) Quoting from a work in order to write an article published in a newspaper or periodical, in a
radio or television broadcast or in a documentary, without misrepresenting the author's views;
(d) Quoting from a work in school or university for lecturing purposes without misrepresenting the author's views and not for commercial purposes;
(dd) Copying of a work by a library for archival and research purposes;
(e) Performing a stage work or other art work in mass cultural, communication or mobilization
activities without collecting fees in any form;
(g) Audio-visual recording of a performance in order to report current events or for teaching
purposes;
(h) Photographing or televising plastic art; or an architectural, photographic, or applied art work
displayed at a public place in order to present images of such work;
(i) Transcribing a work into braille or into characters of other languages for the blind;
(k) Importing copies of another's work for personal use.
However, acts mentioned above items (a) and (dd) shall not be considered as fair use where the work in use is architectural works, plastic works or computer programs.
Enforcement
To fight against counterfeit, piracy, infringement of patent, trademark or copyright, subject to the scale, extent and value of the infringing goods found or detained, registrant or its licensee may request one of IPR enforcement bodies such as Economic Police, Market Surveillance Agency, Science and Technology-specialized Inspectors, People’s Committees or Court handle such infringement by means of criminal liability, administrative fine or civil proceeding including injunction and/or damage claim.
It may be surprised to almost foreign registrants that more than 90% of IPR cases are annually settled by administrative measure of which a maximum fine for a case can be up to 500,000,000VND (roughly 23,000USD).
With respect to criminal liability, in addition to crime for making or trading in counterfeit goods of which highest penalty can be up to 15 years’ imprisonment not necessarily applicable for IPR-related incident, acts of infringing industrial property rights on a commercial scale including infringement of trademark or copyright/ neighboring right, if found to have constituted a crime, may be jailed up to 3 years. Please bear in mind that act of patent infringement even found on a commercial scale is no longer liable for criminal offence in accordance with the 1999 Penalty Code as revised in 2009.
Where a lawsuit is brought before a court, apart from the request for compulsory termination of the infringing acts, IPR holder may request the court to order defendant to pay spiritual and material loss wherein a maximum spiritual loss accepted would be 50,000,000VND (about 2,300USD) and where material loss claimed is unidentifiable, the court may pose a fixed amount of damage not exceeding 500,000,000VND (approximately 23,000USD).
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