Current IPR Framework in Vietnam

Vietnam joined the Paris Convention for the Protection of Industrial Property in 1949 and has concluded and acceded to the Berne Convention on copyright; the Geneva Convention on recorded works; the Brussels Convention on satellite transmissions; the Madrid Agreement and Protocol on international registration of marks; the Patent Co-operation Treaty (PCT); the Stockholm Convention Establishing the World Intellectual Property Organization (WIPO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

With WTO accession in January 2007, Vietnam committed to fulfill IP obligations in the TRIPS Agreement on all bilateral and multilateral commercial and trade relations between Vietnam and its partners.

Vietnam has complied through passage of its Civil Code in 2005 and the Law on Intellectual Property on Intellectual Property (IP Law year 2005), enacted in November 2005, entered into force on July 1, 2006. The latter governs copyright, inventions, industrial designs, trademarks and trade names, geographical indicators, business secrets and such specific areas as integrated circuit designs and plant varieties. Where Vietnam’s legal provisions on IP rights differ from IP provisions in treaties to which Vietnam is a contracting party, those treaties prevail.

A series of Government regulations were issued to provide instructions for the implementation of the IP Law year 2005. This included Decree No. 100/2006/ND-CP dated September 21 2006 on copyrights and related rights, Decree No. 103/2006/ND-CP dated September 22 2006 on industrial property rights, Decree No. 104/2006/ND-CP on new plant variety rights, Decree No. 105/2006/ND-CP on state management and enforcement of IP rights, Decree No. 106/2006/ND-CP on administrative sanctions on IP infringement. The regulations clarified the principles and provisions enshrined in the IP Law and in fact they brought the IP Law into effect.

In May 2009, the Government of Vietnam promulgated Decree No.47/2009/ND-CP Providing Regulations for Penalties for Administrative Violations in Copyright and Related Rights (Decree No. 47), with an effective date of June 30, 2009. Decree No. 47 replaces the provisions on corresponding administrative penalties that were previously provided for under Decree No. 56/2006/ND-CP on Administrative Sanctions in the Fields of Culture and Information (Decree No. 56), dated June 6, 2006.

Most recently, In June 2009 the National Assembly of Vietnam has further passed a new law to amend and supplement a number of articles in the existing IP Law (2005). The amended IP Law(2009), come into force on January 1, 2010, will not only improve the national IP protection system but also bring the country's enforcement framework closer to international standards provided in the TRIPS Agreement.

I.          COPYRIGHT

Registration

In contrast to trademarks and patents, copyrights are manifested once the copyrightable work is created and copyrights that are granted within treaty countries are immediately applicable to all other treaty countries. However, persons may still voluntarily apply for a copyright certificate in Vietnam. Detailed application instructions and application materials may be found at the Copyright Office within the Ministry of Culture and Information.

The term of copyright protection

 The term of copyright protection  is now 75 years (previously 50 years) from the first publication, applies to cinematographic works   photographic works. And anonymous works. For cinematographic works, photographic works and applied art works not published within 25 years from the fixation date protection lasts for 100 years from the fixation date of the work.

(b) What is protected under copyright law?

• Literary and scientific works, textbooks, teaching materials and other works expressed in forms of letters or other writing characters;
• Lectures, presentations and other speeches;
• Journalistic works;
• Musical works;
• Dramatic works;
• Cinematographic works and works created by similar methods;
• Fine art works and applied art works;
• Photographic works;
• Architectural works;
• Graphics, sketches, maps, drawings relevant to topography and scientific works;
• Folk artistic and literary works;
• Computer programs and compilations of data.

Infringement and enforcement

Copyright infringement entails using, reproducing, reprinting, importing, exporting, selling, publishing, disseminating, or otherwise exploiting a copyrighted work without prior permission from the author or the copyright owner and/or without appropriate remuneration through royalties or other financial duties to either the author or legal owner of the copyright.

In connection to use of published works, it is regulated that broadcasting organizations using published works for the purpose of carrying out broadcasting programs with sponsorship, advertisements or collection of money in any form will not be liable for obtaining permission from the copyright owner but have to pay royalties or remunerations to them in accordance with the Government regulations.

With regards to copyright and related rights violations, the maximum penalty level can reach VND 500 million (approximately USD 28,000). Previously, under Decree No. 56, the maximum penalty was VND 70 million (approximately USD 3,900). In addition to monetary penalties, infringers may be required to proceed with certain steps to remedy their infringement, such as having the goods destroyed and/or destroying or re-exporting equipment used in violations. Decree No. 47 also clearly grants to various levels and types of authorities the power to impose specific fine levels.

II.         PATENTS

In order to obtain a patent right, the applicant has to file a patent application with the National Office of Intellectual Property of Vietnam (NOIP) and go through examinations to determine whether the invention/utility solution meets the patentability.

Validity Term of Patent

Patents for inventions are valid for 20 years, for utility solutions are valid for 10 years counted from the filing date of patent application and  are non-renewable. Additionally, the existing  IP Law provides for protection of layout-designs of semiconductor integrated circuits until one of the following is achieved: (1) the end of 10 years as from the filing date; (2) the end of 10 years as from the date the layout-designs were first commercially exploited anywhere in the world by the person having the right to registration or his or licensee; or (3) the end of 15 years as from the date of creation of the layout-designs.

Non-patentable Subject Matters

The following shall be exempted from protection under Vietnam patent law:

1.       discoveries, scientific theories, mathematical methods;

2.       schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;

3.       presentations of information;

4.       aesthetic solutions;

5.       plant varieties, animal varieties;

6.       essentially biological processes for the production of plants and animals except microbiological processes; and

7.       preventive, diagnostic and therapeutic method for treatment on the human/animal body.

Priority Rights

The applicant(s) is/are allowed to claim priority from a first patent application earlier filed in a foreign country in accordance with the Paris Convention (usually called Convention priority or from a first patent application earlier filed in Vietnam within 12 months from the date of filing of the first application.

Filling Patent Application

Vietnam has adopted the first-to-file system. Vietnam patent law determines priority based on the date of the first application and shall confer the rights on the party who is the first to file a patent application. That is to say, where two or more parties apply for a patent for the same invention, the first party to file will be granted the patent regardless of the date of actual invention. Under this system, who came up with the idea first does not matter. All that matters is who got their paperwork to Vietnam Patent Office first. Therefore it is advisable to file a patent application as soon as possible after the invention is conceived.

Formality Examination

Vietnamese patent applications shall be checked to see whether it fulfills the necessary procedural and formal requirements within 1 month from the filing date. The applications accepted as to formality shall be published in the 19th month from the priority date. The PCT national phase applications shall be published in the 2nd month from the date of acceptance.

Request for Substantive Examination

The published Vietnam patent applications shall not be examined on their merits without a request from either applicant or a third party. The request for substantive examination must be submitted to within 42 months from the earliest priority date. Late filing within six months computed from the expiration of the 42 month period is available upon payment of late submission fees. Failure to submit the request within the prescribed time limits shall result in the application to be deemed as having been withdrawn. For utility solution, the corresponding time limit is 36 months.

Substantive Examination Process

After the patent application has been filed with the Vietnam Patent Office, a patent examiner shall carefully review and examine the application in order to determine the invention's patentability. To be patentable, an invention must be novel, involve an inventive step, and is susceptible to industrial applicability. 

Novelty Requirement: An invention must be new on a worldwide basic in order to meet the novelty requirement stipulated by Vietnam patent law. An invention shall be considered to be new if it was not publicly disclosed by means of use, written description or in any other way inside or outside the country, prior to the filing date or the priority date where priority is claimed.

An invention shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Further, an invention shall not be considered to lack novelty if:

(i)                   the invention was disclosed by another person without permission of the inventor/applicant;

(ii)                 it was disclosed by the inventor/applicant in a scientific report; and

(iii)                the invention was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an invention is filed within 6 months from the date of disclosure. 

Inventive Step: An invention is regarded to involve an inventive step, if, having regards to all technical solutions already publicly disclosed by means of use, written description or in any other way inside or outside the country prior to the filing date, or where priority is claimed, the priority date of the patent application, it constitutes an inventive progress and cannot be easily created by a person having ordinary skill in the art.

There is no requirement for an inventive step for utility solution. That is, in order to be patentable a utility solution does not have to involve an inventive step. It need to be new only, and susceptible to industrial applicability.

Industrial Application: An invention shall be considered to be capable of industrial applicability if it can be applied to mass production or manufacture of the product or it is possible to repeatedly apply the process that is the subject matter of the invention to get stable results.

If no reasons for refusal have been found, the NOIP will make a decision to grant a patent. The Vietnam Patent Office may accept the examination results carried out in some other countries such as the United States, EPO, Japan, Australia, Canada, Russian Federation, etc. as well as family patent(s) issued in any of said countries.

Patent Opposition/Appeal

According to Vietnam IP Law and Regulations, both opposition and appeal proceedings are available. At any time during the period from the date of publication to the issuance of a patent, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a patent. Post-grant opposition is possible in the form of invalidation of a patent. Applicant or any third party having rights and/or interests relating to the NOIP’s decision with respects to the prosecution of a pending patent application may appeal in an appropriate manner.

Opposition

According to Vietnam IP Law, both pre-grant opposition and post-grant opposition are possible. At any time during the period from the date of publication to the issuance of a patent, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a patent. Post-grant opposition is available in the form of invalidation of a patent.

Pre-grant opposition can be filed on one of the following grounds:

   (i) the invention claimed in the pending patent application does not meet patentability criteria;

   (ii) the applicant(s) are not one who is entitled to file the patent application; and

   (iii) the absence of an agreement to file one application only between persons who are entitled to file such patent application in case that there are more than one person entitled to do so.

Invalidation can be initiated on one of the following grounds:

   (i) the patented invention did not meet patentability criteria upon issuance;

   (ii) the applicant(s) are not one who have been entitled to file the patent application that was granted the patent;

   (iii) the absence of an agreement to file one application only between persons who have been entitled to file such patent application in case that there are more than one person entitled to do so.

Appeal

Applicant(s) or any third party having rights and/or interests in relation to the NOIP’s decision or notification with respects to the prosecution of a pending patent application may appeal the NOIP’s decision or notification either to the Ministry of Science and Technology or or initiate a lawsuit to the court in accordance with the Intellectual Property Law and relevant laws. The appellant must file a first instance appeal to the NOIP as the authority directly issuing the decision/notification. In case that the appellant does not agree with the administrative decision of the NOIP on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) against the first instance appeal’s decision to the Ministry of Science & Technology (MOST), or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings.

PCT applications

The time limit for entry of a PCT application into Vietnam national phase under both Chapter I and Chapter II is 31 months (not 30 months) from the earliest priority date. However, a late entry within six (06) months counted from the expiration of 31 month period is available upon payment of appropriate fees.

Information required

Full Name, Address, and Nationality of the Applicant(s)/Inventor(s).

Priority data (if any) including application number, priority date and priority country.

Documents required

A copy of both original and amended specification (if any) in English for purpose of translation into Vietnamese. It is advisable to provide us with such documents as early as possible, e.g. two weeks before the due date of filing for the purpose of translation.

A Power of Attorney signed by the Applicant to appoint Pham & Associates as his/her patent agent in Vietnam. Notarization is not necessary.

An originally signed Deed of Assignment of the right to file application where the Applicant of Vietnamese patent application has been assigned the right from other legally entitled party(s). Notarization is not necessary.

Certified copy(s) of priority application(s) in case the Vietnamese patent application is not national phase of a PCT application.

Note:

The time limit for entry of a PCT application into Vietnam national phase under both Chapter I and Chapter II is 31 months (not 30 months) from the earliest priority date. However, a late entry within six (06) months counted from the expiration of 31 month period is available upon payment of appropriate fees;

Power of Attorney and Deed of Assignment documents are not required at filing. However said originally signed documents must be submitted to the National Office of Intellectual Property of Vietnam (NOIP) within 34 months from the priority date for PCT national phase applications or within one (01) month from the date of the NOIP’s Notice for non-PCT applications.

In case that certified copy(s) of priority application(s) are required, these certified document(s) need to be submitted to the NOIP within three (03) months from the filing date.

Vietnam National Phase of PCT application

The time limit for entry into Vietnam national phase of a PCT application under both PCT Chapter I and PCT Chapter II is 31 months computed from the priority date. A late entry within six months after the 31 month period expires is available provided that the applicant shall pay a late entry fee.

For entering Vietnam national phase, a copy of the PCT international application is not required, but the applicant needs to submit the Vietnamese translation thereof to the Vietnam Patent Office (NOIP) at the filing. Also, a Vietnamese translation of the International Preliminary Examination Report (so-called International Preliminary Report on Patentability) is necessary to be submitted to the NOIP at the time of the request for substantive examination. Although no copy of priority application is needed, the applicant must furnish the NOIP with an original Power of Attorney within 34 months from the priority date. Neither notarization nor legalization is necessary for the Power of Attorney.

 III.        TRADEMARKS

 A trademark is a sign used to distinguish the goods or services of different entities or individuals. A registrable mark must be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colours, and capable of distinguishing goods or services of the trademark owner from goods or services of others.

Collective mark is a mark used to distinguish goods or services of members of an organization that is the owner of such a mark from goods or services of non-member entities or individuals.

Certification mark is a mark that is authorized by the owner to other organizations or individuals for use on their goods or services in order to certify characteristics with respect to origin, materials, method or mode of goods manufacture, or service provision, quality, accuracy, safety or other definable characteristics of the goods or services bearing that mark.

Associated marks are the marks registered by the same owner, identical with or similar to each other and are used for identical or similar or related goods and services.

Well-known mark is a mark that has become widely known by the consumers throughout the territory of Vietnam.

Well‑Known Trademarks

The recent development with respect to the Vietnam trademark regulations provides a new approach to the concept of well-known trademark and new regime of protection therefor in Vietnam. Specifically, the rights over a well-known trademark are no longer subject to any registration for recognition with the competent authority as previously required.  Instead, the rights over a well-known trademark are automatically established through the use of the mark in commerce that makes the mark become widely known by the consumers throughout the territory of Vietnam.

Criteria for consideration the well-known status of a mark:

-          Number of the relevant consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;

-          Territorial extent of circulation of the goods or services bearing the mark;

-          Turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;

-          Duration of continuous use of the mark;

-          Widespread goodwill of the goods or services bearing the mark;

-          Number of countries in which the mark has been protected;

-          Number of countries in which the mark has been recognized as well known;

-          Value of the mark in assignment, licensing, investment capital contribution.

Signs not registrable as a mark

-          Signs identical with or confusingly similar to the national flags, national emblems of Vietnam or any foreign countries;

-          Signs identical with or confusingly similar to symbols, flags, armorial bearings, abbreviations or full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless authorized by these agencies or organizations;

-          Signs identical with or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or famous persons of Vietnam or any foreign countries;

-          Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations having noticed and requested for repression of use of such seals, except for the very seals registered as certification marks in the name of the very organizations;

-          Signs liable to mislead, confuse or deceive consumers as to the origin, nature, intended purposes, quality, value or other characteristics of the goods or services.

First-to-File Principle

The "first‑to‑file" principle is also adopted for trademark protection in Vietnam. Therefore, if there are two or more trademark applications for registration of the identical or confusingly similar trademarks, for the identical or similar goods and/or services, the registration shall be granted to the application having the earliest priority date or the earliest filing date. Since the first party to file an application with the National Office of Intellectual Property of Vietnam (“NOIP”) is deemed to have priority over the others, it is important that the trademark owners should register their trademarks in Vietnam as soon as possible.

Examination Process

Vietnam trademark application shall automatically be examined by the NOIP with respect to formalities. The NOIP shall conduct the formality check within one (01) month from the filing date. The applications shall be published in the IP Gazette within two (02) months from the date of acceptance. The published application shall be substantively examined within nine (09) months from the date of publication.

Term of Trademark Registration Certificate

The validity term of trademark registration is 10 years counted from the filing date. The term is renewable for an unlimited number of ten-year terms.

Trademark Opposition/Appeal

According to Vietnam IP Law and Regulations, both opposition and appeal proceedings are available. At any time  prior to the registration is isued,  from the date of publication of the pending trademark application any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a certificate of trademark registration. Post-registration opposition is possible on the grounds of bad faith and/or unregistrability. Applicant or any third party having rights and/or interests relating to the NOIP’s decision with respects to the prosecution of a pending patent application may appeal in an appropriate manner.

Opposition

According to Vietnam IP Law, both pre-registration opposition and post-registration opposition are possible. The opponent must file an opposition in writing against the grant or refusal to grant a trademark registration during the period from the publication of the trademark application until the issuance of trademark registration. After the registration has been granted, the opponent can file such post-registration opposition any time within the validity duration of the registration in case the opposition is made on the ground of bad faith, or within five years from the granting date of the trademark registration in case the opposition is made on the ground of unregistrability.

Appeal

Applicant(s) or any third party having rights and/or interests in relation to the NOIP’s decision or notification with respects to the prosecution of a pending trademark application may appeal the NOIP’s decision or notification either to the Ministry of Science and Technology or or initiate a lawsuit to the court in accordance with the Intellectual Property Law and relevant laws. The appellant must file a first instance appeal to the NOIP as the authority directly issuing the decision/notification. In case that the appellant does not agree with the administrative decision of the NOIP on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) against the first instance appeal’s decision to the Ministry of Science & Technology (MOST), or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings

Requirements for Trademark Registration

A signed Power of Attorney from the Applicant to authorize  Pham & Associates to file the trademark application in Vietnam. Though not required at filing, this originally signed document must be submitted to the NOIP within one (01) month from the date of the NOIP’s  Notice.

Information required

-          Full name, address, and nationality of the applicant;

-          Priority data: number of priority application(s), priority date, and priority country;

-          List of goods/services covered by the mark and respective class(s).

Documents required

-          15 trademark specimens with the size not larger than 8x8 cm nor smaller than 0.8cm x 0.8cm;

-          Certified copy of priority document according to the Paris Convention (if any). This document must be submitted to the National Office of Intellectual Property of Vietnam (NOIP) within 3 months from the filing date.

-          A signed Power of Attorney from the Applicant to authorize Pham & Associates to file the trademark application in Vietnam. Though not required at filing, this originally signed document must be submitted to the NOIP within one (01) month from the date of the NOIP’s Notice. Notarization is not necessary.

This e-mail address is being protected from spam bots, you need JavaScript enabled to view it IV.        DESIGNS

Industrial design is the exterior shape of a product represented in three dimensional forms, lines, colors or any combination thereof. An industrial design shall be protectable if it is new, creative and capable of industrial application.

Designs exempted from Protection

The following shall be excluded from protection:

·          exterior shape of a product dictated merely by technical features thereof;

·          exterior shape of a civil or an industrial construction work;

·          exterior shape of a product that is invisible during the use of the product.

Also, industrial designs shall not be patented if they are contrary to social morality, public order, or detrimental to national defense and security.

Requirements for Protection

Novelty of an Industrial Design : To be protected, an industrial design must substantially differ from industrial designs that are have been disclosed to the public anywhere in the world by means of use, written description or in any other way prior to the date of filing or the priority date of the design application. In other words, Vietnam has adopted the absolute worldwide novelty system. One design shall not be substantially different from the other if they are distinguished merely by designing features that are not easily recognized and memorized and that cannot serve to distinguish the two designs as a whole.

An industrial design shall not be considered as publicly disclosed if it is known to only a restricted number of persons who are under obligation to keep it secret. Also, an industrial design shall not be considered as being anticipated if:

a)       the design was disclosed by another person without permission of the author and/or applicant;

b)       it was disclosed by the author and/or applicant in a scientific report; or

c)       the design was displayed at a national exhibition or an officially recognized international exhibition, provided that the patent application for such industrial design is filed within six months from the date of disclosure.

Creativity of an Industrial Design: An industrial design shall be regarded as creative if, having regards to the industrial designs already disclosed to the public anywhere in the world prior to the date of filing or the priority date of the industrial design application, it cannot be easily created by a person ordinarily skilled in the art.

Industrial Applicability of an Industrial Design: An industrial design shall be regarded as being capable of industrial application if it can serve as a template for mass production of the product having exterior shape embodying such industrial design by industrial or handicraft method.

First-to-File Principle

Vietnam follows the first-to-file system. Vietnam design law determines priority based on the date of the first application and shall confer the rights on the party who is the first to file a design application. That is to say, where two or more parties apply for a patent for the same industrial design, the first party to file will be granted the patent regardless of the date of actual creation. Therefore it is advisable to file a patent application for the design as soon as possible after the design is created.

Examination

The NOIP shall conduct the formality check for design application to see whether it fulfills the necessary procedural and formal requirements within 1 month from the filing date. The applications accepted as to formality shall be published in the IP Gazette within two months from the date of acceptance. The published application shall be substantively examined within seven (07) months from the date of publication.

Term of Protection

The validity term of design patent is five years counted from the filing date. The term can be renewed twice, each time for five years.

Requirements for Acquiring Design

In order to file a design application, the applicant is require to furnish with a Power of Attorney authorizing Pham & Associates to file the design application with the National Office of Intellectual Property of Vietnam (NOIP) and prosecute on behalf of the applicant.

Information required

-          Full name, Address, and Nationality of the applicant(s)/inventor(s);

-          Priority Data including number of priority application(s), filing date, country of priority.

Documents required

-          Description of industrial design and claim(s) in English (if any).

-          Photos/drawings (6 sets) for each design illustrating the front, rear, left, right, top, bottom, and perspective views.

-          Certified copy(s) of priority document(s) (if any).

-          Deed of Assignment of the right to file application if the applicant has been assigned the right from other legal party(s).

-          Power of Attorney authorizing Pham & Associates to file the design application.

Note

-          Fax copies of photos/drawings are acceptable at filing, provided that the originals must be submitted to the National Office of Intellectual Property of Vietnam (NOIP) within one (01)  month from the date of the NOIP’s Notice.

-          Power of Attorney and Deed of Assignment documents are not required at filing. However said originally signed documents must be submitted within one (01) month from the date of the NOIP’s Notice. Notarization is not necessary.

-          Certified copy(s) of priority application(s) need to be submitted to the NOIP within three (03) months from the filing date.

Time frame for obtaining design patent

-          The NOIP shall conduct the formality check for design application within one (01) month from the filing date. The applications shall be published within two (02) months from the date of acceptance. The published application shall be substantively examined within seven (07) months from the date of publication.

-          On average, the time frame for obtaining design patent in smooth cases is estimated to be approx. 12 months from the filing date.

Validity term of design patent

The validity term of design patent is five years counted from the filing date. The term can be renewed twice, each time for five years.

Design Right Enforcement

Dispute arises out of design rights may be settled either by administrative, civil, economic court, or criminal court. Patent owner may resort to administrative, civil, or criminal procedures or border measures in order to protect their design rights.

Dispute arises out of design rights may be settled either by administrative, civil, economic court, or criminal court.

Administrative Court  is entitled to settle design disputes between two parties one of which is any organization/individual and the other is a State management authority.

Matters subject to settlement under jurisdiction of the Administrative Court may include:

-          refusal of application for a patent or refusal of grant of a patent;

-          refusal of a grant of a patent; and

-          request for suspension or cancellation of a patent.

Civil Court is entitled to settle design right disputes among any individuals and/or any organizations and/or between individuals and organizations.

Matters subject to settlement under jurisdiction of the Civil Court may include:

-          violation of industrial design rights;

-          disagreement arising in relation to remuneration to be paid.

Economic Court is entitled to settled design right disputes relating to License and Assignment of design rights with regards to economic content.

V.         LICENCING/ASSIGNMENT

All the assignment or license contracts must be made in writing. The validity of a license contract for use of a patented industrial design shall be terminated ex-officio upon the termination of the licensor’s right.

The assignment contract of design right shall become effective only upon registration with the National Office of Intellectual Property (NOIP).

All the assignment or license contracts must be made in writing and contain certain statutory provisions. License contract shall not have such provisions that unreasonably restrict the right of the licensee, particularly those provisions not deriving from the rights of the licensor such as, for example, prohibiting the licensee from complaining about the validity of the industrial design right or the right to license of the licensor.

An application for registration of a license contract for use of a protected industrial design or an assignment contract of industrial design right shall comprise the following:

-          A request for registration of contract, made in prescribed form;

-          An original or a true certified copy of the contract;

-          An original of the design patent in case of assignment of industrial design right;

-          A co-owners’ written consent, or a written explanation to explain the reason why any co-owner disagrees to assign the right (if any) in case there are several co-owners;

-          A receipt of prescribed fees and charges;

-          A Power of Attorney if the right has been obtained through a IP representative.

VI.        BUSINESS SECRETS

Similar to the protection of geographical indication, business secrets are accorded protection for the first time in the IP Law. They are officially referred to in Article 127. Acts of infringing the rights to business secrets and Article 128. Obligation to keep secrecy of the test data.

 Registration

The IP Law provides for the protection of business secrets from unlawful use. However, at present, there is no registration process.

Infringement

Infringement of business secrets entails knowingly disclosing or using the business secret for commercial purposes without permission from the owner of the secret and/or breaching a contract with said owner over the agreed concealment of said secret.

VII.       MEASURES FOR SETTLEMENT OF IPR INFRINGEMENT

IPRs owners may resort to administrative, civil, or criminal procedures or border measures in order to protect their IP rights.

Administrative procedure - If a IPR owner seeks to stop an infringement, a settlement between parties in accordance with the administrative measures can be the most preferred option, provided that the criteria for applying such measures are met. In the amended IP Law (2009), administrative measures shall be applied if the infringement of IP rights causes losses to authors and IP rights owners, to consumers or to society.

Administrative penalties and remedies include:

a)  Warning;

b)  Monetary fine.

c)  Depending on nature and level of the infringement, the IPR infringing organizations and

individuals are liable to complementary remedies such as (i) confiscation of intellectual property counterfeit goods, materials, raw materials and implements mainly used for manufacturing or trading such intellectual property counterfeit goods (ii) suspension of relevant business activities for a definite term and (iii) restoration remedies, such as compelling destruction, distribution or use of the intellectual property counterfeit goods for non-commercial purposes; or compelling delivery of the transiting goods out of the territory of Vietnam or re-export

of the intellectual property counterfeit goods etc.

Civil procedures – IPR owners can file civil lawsuit against the allegedly infringer(s) and claim for compensation before civil courts. The court of jurisdiction over IPR infringements and disputes is the provincial People's Court where the defendant resides.

Currently, provisional measures applicable to acts of IPR infringement are available. Prompt and effective provisional measures shall be applied when it is necessary to prevent an infringement from occurring, and to prevent infringing goods from entering into the channels of commerce (this includes preventing imported infringing goods from being dispersed into domestic distribution channels) and where such measures are needed to preserve relevant evidence in regards to the alleged infringement.

Civil remedies taken by Courts to handle organizations and individuals that have committed acts of infringement of IPRs include:

a)       Compelling termination of the infringement of intellectual property rights;

b)       Compelling public rectification and apology;

c)       Compelling the performance of civil obligations;

d)       Compelling compensation for damages;

e)       Compelling destruction, distribution or use for non-commercial purpose in respect of goods, materials etc.

Criminal procedure - criminal procedures shall be applied in cases organization(s) or individual(s) have committed acts of IPR infringement(s) having factors constitutes a crime. Sanctions must include imprisonment and/or monetary fines sufficient to provide a deterrent, consistent with the level of penalties applied for crimes of a corresponding gravity.

Criminal remedies in appropriate cases must also include seizure, forfeiture and destruction of the infringing goods and of materials and instruments used to produce them.

Border control measures - border control measures shall include suspension of customs procedures of the release of goods suspected to infringe design rights and control, supervision to detect goods containing infringing elements.