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 the 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.
3 Types of 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 (in other jurisdictions known 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 dimensional (3D) 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, Vietnam acceded to the Hague Agreement Concerning the International Registration of Industrial Design, interested applicants can directly file with the National Office of Intellectual Property (NOIP) through a local registered intellectual property agent or submit through the Hague international design system
Except where PCT application prematurely entering Vietnamese national phase, formality check of which shall be merely made as 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 request for substance examination, the 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 90 days and upon payment by the applicant a patent for invention shall be issued in around 1-3 months thereafter.
Any patentee wishing to maintain validity of his/her granted patent must pay 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), or late annuity payment in a grace period of 6 months is also accepted against a penalty fee. However, in practice at the time of issuing notice of allowance, to be more convenient the NOIP usually requires applicant to pay 1st year annuity. Upon receipt of grant fee including 1st year annuity, the NOIP will issue a 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.
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 (3D) mark, position mark, series mark, trade dress (get-up) mark may be protected in some limited cases. Other types of special marks can be registrable subject to their compliance capability with corresponding particular requirements by the law 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 under one or more than one class according to the Nice Classification 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 the NOIP’s current heavy backlog and limited capacity the timeframe may prolong a further period of 8-10 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. 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 highly recommended to put his/her registered trademark into use in commerce, otherwise such mark may be vulnerable to invalidation by third party’s 5-year consecutive non-use-based revocation action.
Copyright and Related Rights
Generally speaking, all literary and artistic works as mentioned in the Berne Convention are copyrightable works in Vietnam on the condition that they are created and fixed in a tangible form (also called as fixation requirement) 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 the 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 natural person who directly creates a part or whole literary and artistic work while copyright owner may mean 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.
Under the laws of Vietnam, copyright consists of moral rights and economic rights. The economic rights or property rights comprise 6 types of exclusive rights (right of reproduction, right of distribution, right of communication to the public, right of rental, right of making a derivative work, and right of public performance) and the moral right includes 4 types of exclusive rights (right to name works; the right to name or right to a pseudonym; right to publish a work or permit others to publish; and the right to protect the integrity of, prevent others from modifying, mutilating or penetrating the work).
No legal concept "work made for hire" under the copyright legislation of Vietnam. The so-called "work made for hire" in the form of an organization or individual entering into a contract with an author to create an artistic work, or "work made for hire" in the form of an organization or individual assigning the task to the author who is hired by that individual or organizations, is not "work made for hire" in the sense of Section 101 of the US Copyright Act of 1976 because the moral rights (except for rights to publish or allow others to publish) are neither alienable nor transferrable as well as author of the work cannot be an organization or corporation under the copyright legislation of Vietnam.
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 (75) 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 (50) 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.
Section 9(2) Berne Convention fair use as a defense to copyright or related rights infringement claim may be accepted if the three-step test is found satisfied. More particularly, exceptions to copyright infringement is set forth in Article 25 of the IP Law under the title “cases of use of published works where permission and payment of royalties and/or remunerations are not required”. To be considered an exception to the exclusive right, all of the six (6) conditions as follows must be satisfied:
- The work being copied or used by a third party must be the published work; and
- The work being copied or used shall not include any of three types of work: cinematographic works, or plastic works, or software and computer programs; and
- Use or reproduction is permitted only in conjunction with the 10 cases described in Article 25 (upon reallocation only 7 cases, namely: (i) self-duplication of works by the user for scientific research or teaching purpose, reproduction by libraries for archival and research purpose; (ii) quoting works for commentary, writing newspaper and teaching; (iii) performing dramatic works or other performance arts without collecting any charges in any form; (iv) audiovisual recording of a performance for teaching or reporting; (v) photographing or televising plastic art, architectural, photographic, applied-art works displayed photography or television of visual, architectural, photography, applied art works be displayed at public places for purpose of presenting images of such works; (vi) transcription of works into Braille or characters of other languages for the blind; and (vii) importing a copy of the work of other for one’s own use; and
- Copy or use of the above works must not conflict with the normal exploitation of the work; and
- Copy or use of the above works must not unreasonably prejudice the legitimate interests of the right holder; and
- Copy or use of the above works must attribute author's name, source and origin of the work.
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 the Economic Police, Market Surveillance Agency, Science and Technology-specialized Inspectors, People’s Committees or Court to 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, acts of infringing industrial property rights, if found to have exercised on a commercial scale with deliberate fault against one of the two types of exclusive right (right of reproduction and right of communication to the public) pertaining to a copyrighted work or phonogram or audio and visual fixation, or if concluded as counterfeit trademark goods that have been traded in or manufactured on a commercial scale with deliberate fault, may be jailed up to 3 years. Act of patent infringement, even found on a commercial scale, is no longer liable for criminal sanction.
Where a lawsuit is brought before a court, apart from the request for compulsory termination of the infringing acts, the right 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).