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Business brief 2016: Vietnam

20-05-2016

Le Quang Vinh

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.

"When the Trans-Pacific Partnership Agreement takes effect, Vietnam will be required to accept one of three types of inventions."

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Although Vietnam’s multiple efforts to reduce counterfeiting and piracy have been recognised by IP owners during the last few years, counterfeiting persists and is causing a headache to the IP enforcement agencies. Vietnam has a long border with China, from where it seems the greatest number of fake goods come. Counterfeit goods are in existence in all forms, particularly clothes, cosmetics, nutritional supplements, medicine, music, film, and software.

What are the best strategies for dealing with the problem?

Intensive investigation to find out the origin of counterfeit goods before proceeding with legal action is the best strategy. It pays to remember that the volume of fake goods seized may usually be one of the decisive factors resulting in a criminal action. However, this requires a lot of time, money and close collaboration among IP owners, local attorneys, IP enforcement bodies and the press.

How can public-private partnerships to tackle counterfeiting be improved?

Public-private cooperation during the fight against counterfeiting is of course advised. However, this type of cooperation has not been popular in Vietnam.

Copyright

What are the key challenges for copyright owners in your jurisdiction?

Key challenges are:

IP enforcement bodies including judges, particularly at the provincial level, that are in charge of copyright disputes or piracy generally have insufficient copyright knowledge and lack experience;

Piracy and other infringement acts concerning copyright and related rights exist in different geographical areas, leading to a lack of human resources to tackle them;

The great increase in copyright infringement on the internet is very hard to deal with because infringing individuals or organisations are not based in Vietnam or have their servers abroad; and

A number of IP owners are silent while their copyrighted works are being infringed.

How should people ensure they are protected against copyright infringement?

Copyright infringement may be dealt with by using one of three remedies: a criminal penalty (article 170a of the Criminal Code as amended in 2009); an administrative violation fine of up to $22,400 under Decree 109/2011/ND-CP amending Decree 47/2009/ND-CP; and a civil lawsuit with a compensation claim in accordance with the IP Law and Civil Proceeding Code.

The state authorities mentioned above relating to trademark and patent matters are also competent to tackle copyright-related infringement.

What is the best way to deal with infringement?

Similar to trademark and patent infringement, an administrative measure is highly recommended in light of cost, time and effectiveness.

Are there any other IP developments we should know about?

It is noted that an internet service provider may be liable for indemnifying any damage as a result of a violation of copyright and neighbouring rights if it is, among others, the initial source of the infringement on the internet.

Le Quang Vinh is a founding partner at Bross & Partners. He is a qualified patent, design, trademark and copyright attorney. He has more than 17 years of experience advising and representing clients on trademarks, designs, patents, copyright, and domain names. He can be contacted at: vinh@bross.vn

Le Quang Vinh, Bross & Partners, patent, trademark, copyright, counterfeit, NOIP,

WIPR

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