Subject to the nature and severity of IPR infringement, when an industrial design infringement occurs, the holder may resort to administrative, civil or border control route to fight thereagainst. If the alleged infringing products are found to be imported into Vietnam via customs, priority should be given to recordal of customs supervision for the design patent in Vietnam....
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In 2018, PIAGGIO & C. S.p.A. (“PIAGGIO”), the holder of Design Patent No. 20652 for protection of motorbike industrial design, filed a suit against a Vietnamese company named “DETECH Technology Development Supporting Joint Stock Company” (“DETECH”). ...
Continue readingRegistration application: Under Vietnam IP Law, the time period from application to registration for a straightforward application is 12 months. Response toward OA: For a Notice of Formality Deficiencies/Shortcomings: The IP Vietnam issues a Notice of Formality Deficiencies/Shortcomings, requiring the applicant to file a response within 02 months from the date of the Notice. If the response is satisfactory, a Notice of Formality Acceptance must be issued within 02 month after the filing date of the response (See Point 13.8b, Circular No. 01/2007/TT-BKHCN, as revised). For a Notice of a third party’s opposition: The IP Vietnam issues a Notice of a third...
Continue readingIf Vietnam IP issues a final decision to reject a trademark application, there are 02 (two) remaining options for recourse. In detail, the applicant may either file an appeal with the with the Science and Technology Minister (“MOST”), the supervising body of the IP Vietnam or initiate lawsuits at court. If an applied-for mark is finally rejected to register by the MOST or a competent court in Vietnam, assuming that such refusal is based on absolute ground (e.g. a merely distinctive mark or weakly distinctive mark), ...
Continue readingTo be more compatible with the recent signed trade pacts, including European Vietnam Free Trade Agreement (“EVFTA”), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”), and most recently the Regional Comprehensive Economic Partnership (“RCEP”) and the UK Vietnam Free Trade Agreement (“UKVFTA”), some new critical trademark examination principles/practices have been introduced/adopted by the IP Office of Vietnam (“IP Vietnam”). KENFOX IP & LAW OFFICE provides below several important takeaways....
Continue reading1. Differences between a multiple-class trademark application and a single-class trademark application Each trademark application filed with the IP Office of Vietnam may request registration of a mark used for one or more than one goods or services (See Point 37.2, Circular No. 01/2007/TT-BKHCN, as revised). That being said, a trademark application can cover either 01 class or multiple classes of goods/services. Hereunder are main differences between a multiple-class trademark application and a single-class trademark application in Vietnam. Criteria of comparison A multi-class Trademark Application A single-class Trademark Application Fees Filing fee is slightly reduced as compared to a single-class Trademark Application in terms of both official...
Continue readingHow the goods and/or services bearing this trademark are deemed related/relevant to those under an earlier mark is very important to determine registrability of similar trademarks in Vietnam. Whether Nice Classification is the only basis for making an assessment on relatedness/relevance of the goods/services bearing trademarks? Of course, it is not....
Continue readingRegistering a trademark in Vietnam is a legal administrative proceeding in which a trademark applicant (either a natural person or a legal entity) file an application to register a trademark with the Intellectual Property Office of Vietnam (“IP Vietnam”). Of note, co-ownership of a trademark is possible in Vietnam. Trademarks to be protected under the IP Law of Vietnam include: (i) Trade/service Mark; (ii) Collective Mark; (iii) Certification Mark; (iv) Associated Mark and (v) Well-known Mark...
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Transfer of industrial property rights in Vietnam comprises 02 forms: (1) Assignment of industrial property rights and; (2) Licensing of industrial property rights. How to differentiate the assignment and licensing of industrial property rights as statutorily provided in Vietnam? You may find the key differences between these two types of transfer of industrial property rights in the below table....
Continue readingWithdrawing an invalidation request which has been filed with the Intellectual Property Office of Vietnam (“IP Vietnam”) is not expressly provided for in the Law on Intellectual Property of Vietnam 2005, revised in 2009 and 2019 (“Vietnam IP Law”) and its by-laws. As a matter of practice, the IP Vietnam has accepted withdrawal of invalidation requests, provided that (i) the withdrawal authority is explicitly formed in the Power of Attorney and (ii) the requester of invalidation action has rendered reasons for such withdrawal. Therefore, a request for invalidation action already filed with the IP Vietnam can be withdrawn. The Vietnam IP...
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