Business brief 2016: Vietnam

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

Those who want to register their inventions in Vietnam are able to use either the national route (eg, by filing a new invention claiming Paris Convention priority in a period of 12 months) or the international route (eg, entry into Vietnamese national phase based on a Patent Cooperation Treaty [PCT] application in 31 months from the earliest priority date). When seeking patent protection in multiple countries, requests for PCT-based protection are commonly preferred by inventors or applicants.

What are the costs of obtaining a patent, and what are the costs of defending it?

It normally costs about $2,000 for obtaining a patent from filing or entering national phase of Vietnam through to grant.

Depending on the complexity of infringement or a dispute relating to a granted patent, defending it will typically cost from $7,000 to $10,000.

Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?

Under section 4.12 of the 2005 IP Law as amended in 2009, only subject matter existing in the form of a product or process may be patentable, so the National Office of Intellectual Property of Vietnam’s (NOIP) examiners usually reject ‘use claims’, stating that they are neither a product nor process.

When the Trans-Pacific Partnership Agreement takes effect, Vietnam will be required to accept one of three types of inventions: new uses of a known product; new methods of using a known product; and new processes of using a known product. In other words, ‘use claims’ will be accepted by the NOIP.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Neither a specialist IP court nor judges with IP-related knowledge are available in Vietnam, which are major threats to patentees. Where you find someone allegedly infringing your patent, you are highly recommended to select a reliable local IP agent by judging its capacity through its preliminary strategic advice. As an out-of-court remedy, it is advisable to send an infringement warning letter to an alleged infringer asking it to stop the infringement.

Trademarks

How do you register or secure trademark rights and what protection do they grant?

Trademark owners may choose to file either a national application or an international application through the Madrid system. Each trademark registration is protected for ten years from the filing date and may be renewed every ten years thereafter.

What are the costs of registering a trademark and what are the costs of defending it?

Total costs inclusive of attorneys’ fees, government charges and other costs for obtaining a trademark registration in one class containing up to six goods/services are around $250, and those for renewal are about $100.

When fighting infringement, average costs may be in the range of $4,000 to $10,000 subject to the degree of complexity and the location of the infringement.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

Key threats to trademark owners include fake goods and internet-based infringements including cybersquatting. The best strategy for dealing with infringement in Vietnam regularly chosen by trademark owners is to use administrative measures, eg, using one of the state authorities such as the Market Management Agency, and specialist inspectors within the provincial Departments of Science and Technology. This remedy is significantly preferred since it is fast and low cost, while the infringer may be fined up to $22,400.

What are the most common mistakes trademark owners make?

Failure to use a trademark or use it consecutively, or use it in practice similar to the reproduction of the mark as registered within a period of five years from its granting date, is a common mistake that may help an infringer strike back by filing a non-use cancellation action.

Are there any nuances in the trademark law(s) that foreign companies should be aware of?

Non-traditional marks, particularly 3D marks and geographic name-based marks, are generally hard to successfully register in Vietnam since they are considered lacking inherent distinctiveness or being merely geographically descriptive.