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A REVIEW OF TRADEMARK DEVELOPMENTS IN THE DRAFT AMENDMENT OF CIRCULAR 3055

26/06/2013
As it seeks to implement its commitments to international multilateral and bilateral treaties, Vietnam is planning to make amendments to its laws governing the protection of intellectual property (IP). Likewise, in preparation for signing other internatio

The government’s Draft Amendment aims at completing the Circular so that it will be able, in part, to resolve the problems Vietnam is experiencing in protecting IP rights and simplify administrative procedures to conform with international laws and practices. A variety of government agencies and law firms have been asked to comment on the Draft Amendment. This article does not list all the amendments, supplements and new provisions proposed in the Draft Amendment, but only compares some of its prominent trademark developments to the Circular.

Procedures for the recognition of well-known marks

Unregistered well-known marks are protected in Vietnam, but the owner must file an application for recognition of the well-known mark with the Vietnam National Office of Industrial Property (NOIP). The upholding of the intellectual property rights to a well-known mark depends upon NOIP recognition. So far, however, there are no official procedures in place allowing an owner to exercise this right. The Draft Amendment fills this gap. In particular, it clearly sets out the requirements of applications, the criteria for assessing whether a mark is well known and the duration for processing applications. According to the Draft Amendment, the value of a mark in the form of either assignment, licensing or investment capital contribution will also be taken into consideration by the NOIP when deciding whether a mark is well known. Controversy remains regarding the evaluation of intellectual property assets in general, and trademarks in particular, partly because the area is so new and precedents have not yet been set. For example, it is not clear which authority will have the power to evaluate trademarks upon a mark owner’s request, and it is not known whether courts or the NOIP will recognize the value of a mark evaluated by Vietnamese trademark experts based up on foreign methods and research.

The applications for recognition of well-known marks must be published in the Official Gazette of Industrial Property (IP Gazette) for purposes of opposition.

Filing requirements and registration timing

The Draft Amendment simplifies the application process by removing the requirement to submit certain kinds of information and documents. Documents certifying the legal right to file an application in a case where the applicant has received the right to file an application from another person, or documents evincing the legal right to use signs (i.e. trade names, symbols, medals, etc.) on the trademark, no longer need to be submitted. The NOIP may request that the applicants submit such documents only in cases where it has grounds to suspect the authenticity of the information in an application. Nonetheless, applicants still have to submit a copy of their business licence. The number of copies of documents and samples of the mark to be registered has also been reduced, for example, 10 trademark samples rather than 15).

The shortening of the examination process, as now stipulated in the Draft Amendment, is also expected to simplify registration procedures. The time periods for the examination as to form and the examination as to substance of trademark applications shall be shortened from three to one month, and from nine to six months, respectively. It will take the applicant seven months to obtain the registration of a straightforward trademark application instead of 12 months as happens now. The new examination periods will also apply to applications for recognition of well-known marks.

Trademark Opposition

Trademark owners are deeply concerned about the procedure and time limit set on opposing conflicting trademark applications that are pending. To date, trademark owners have had little chance to oppose conflicting trademark applications in Vietnam because trademark applications have not been published in the IP Gazette. In practice, trademark owners may do this after conducting searches against their registered marks at the NOIP.

The law was amended in 2001 to provide for the publication of pending applications, as opposed to the usual practice of only publishing registrations. Despite this recent amendment, the change has not yet been implemented because there are no guidelines on the publishing of pending trademark applications. The Draft Amendment, however, stipulates the relevant procedures for publication. A trademark application, including an application for the recognition of a well-known mark, shall be published in the IP Gazette within the second month from the date of acceptance of the application as to form. International trademark registrations extended into Vietnam under the Madrid Agreement shall be published within the second month calculated from the date of receipt of the WIPO’s notice.

Unfortunately, the Draft Amendment does not clearly detail opposition procedures. It only provides generally that the NOIP will examine and consider a third party’s opposition (if any) against any published trademark application. Upon the completion of the examination as to substance of an application, the NOIP shall inform the person who has made the opposition of the NOIP’s opinion. The Draft Amendment is silent regarding the time limit for filing an opposition.

Assessment of the registration qualifications of trademarks

This amendment is significant. The NOIP has its own guidebook on the assessment of the registration qualification of trademarks for trademark examiners only. It should be noted that lack of knowledge about intellectual property on the part of judges (one of the reasons why so few trademark cases have been brought to court so far in Vietnam) and on the part of the IP enforcement authorities, is now a problem of great concern in Vietnam. Therefore, the legalization of a set of guidelines on the assessment of the qualifications for the registration of trademarks – in particular the assessment of the distinctiveness, non-distinctiveness and the similarity of trademarks – will help the courts and the IP enforcement authorities in passing judgments and handling trademark disputes and infringements in Vietnam.

Trademark Licensing

The Circular covers three types of trademark licences: exclusive licences; non-exclusive licences; and sub-licences. These terms, however, are not defined in the Circular. The Draft Amendment not only defines these three terms but also includes an additional type of licence, namely sole licences. A sole licence allows the owner to grant a trademark licence where the licensee is not authorized to exclusively use the licensed trademark, and the licensor is obligated not to grant another licence to other persons for the use of such a licensed trademark, but may still reserve the right to use that mark. This development brings Vietnamese regulations on licensing into line with international laws and practices.

The procedure for the registration of trademark licence agreements is also considerably simplified. Under the Circular, two original licence agreements had to submitted. Under the Draft Amendment, a copy or even an extract of the signed licence agreement is also acceptable; the submission of copies of certificates of registration of trademarks under the licence and the licensee’s business licence shall not be required. Furthermore, the Draft Amendment completely removes the procedure for approval (by the Ministry of Science and Technology), before proceeding with the registration at the NOIP. This is in respect to those licence agreements where one party is a government organization or an organization having state capital contribution and the other party is an individual or non-government organization; or where the licensor is an individual, legal person or other entity of Vietnam and the licensee is a foreign individual or organization. The time limit of 60 days for the filing with the NOIP for registration of the signed licence agreement will also be removed.

The Future

Significant progress has been made in the Draft Amendment, but much more is needed to overcome the remaining shortcomings, such as a lack of clarity in the wording of provisions and inconsistency in meaning. Many other legal questions also remain unresolved. It is expected that after collecting comments from law firms and other government agencies, the Draft Amendment shall be further developed in order to become an effective legal directive that is not burdensome on IP owners.

 

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