By ELITE Law Firm
based on the VNIPO’s Notification No. 3492 dated 25 Aug. 2023
On August 23, 2023, the Government issued Decree No. 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property and protection of industrial property rights, rights to plant varieties and state management of intellectual property (hereinafter referred to as “the Decree”). The Decree was issued under a simplified procedure, so it will take effect as soon as the signing date. This Decree has replaced Decree No. 103/2006/ND-CP dated September 22, 2006 of the Government detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property (amended and supplemented). and Decree No. 105/2006/ND-CP dated September 22, 2006 of the Government detailing and guiding the implementation of a number of articles of the Intellectual Property Law on the protection of intellectual property rights and State management of intellectual property (amended and supplemented). Additionally, some contents on procedures for establishing industrial property rights in Circular No. 01/2007/TT-BKHCN dated February 14, 2007, of the Ministry of Science and Technology, guiding the implementation of Decree No. 103/ 2006/ND-CP (amended and supplemented), and the entire content of Circular No. 01/2008/TT-BKHCN dated February 25, 2008, of the Ministry of Science and Technology, guiding the issuance and revocation Industrial property assessor card and Certificate of organization qualified to operate industrial property assessment (amended and supplemented) have been included in this Decree.
The Intellectual Property Office of Vietnam (VNIPO) would like to announce a number of outstanding new points related to procedures for establishing industrial property rights in this Decree for organizations and individuals to conveniently implement, specifically as follows:
1. Application forms, protection title forms and instructions for declaring declarations are specified in Appendix I, II, IV of the Decree (replacing declaration forms, protection title forms and corresponding instructions according to Circular No. 01/2007/TT-BKHCN).
2. Procedures and scope of security control for inventions are specified in Article 14 and Appendix VII of the Decree.
3. Procedures for amending and supplementing applications for registration of establishment of industrial property rights
- Regulations that the applicant has the right to request to amend some additional information in the application: the applicant’s country code, the inventor’s address, layout design, industrial design; amending the industrial property representative (Article 16.1.b);
- In case the applicant proactively amends the application before the application is accepted for formality or is refused on formality or amended or supplemented on the basis of a notification from the state management agency on ownership rights industrial sector (VNIPO), the applicant only needs to submit a document stating the content(s) of the request for amendment and supplementation instead of submitting the Declaration forms for amendment as before (Article 16.2.b);
- The applicant does not have to submit a detailed explanation of the amended content in case of amending the trademark sample, list of goods and services bearing the mark, or a description of the specific characteristics of the product bearing the Geographical Indication (GI), map of the geographical area corresponding to the GI (Article 16.2.d);
- The applicant must submit supporting documents (evidence) in case the applicant changes the name, nationality of the author, name, and address of the organization (similar to the case of amending the copyright); The applicant must submit a declaration of change of representative when conducting procedures to change representative (Article 16.2.e).
4. Division of an application for registration of industrial property rights:
- A request for division of a mark registration application is only accepted in case of partial separation of the list of goods and services (Article 17.1.a);
- When carrying out the procedure for dividing an industrial property registration application, the applicant must submit a written explanation of the object of protection and the content of changes compared to the original application (point c, clause 1, Article 17 of the Decree).
5. Withdrawal of an application for registration of industrial property rights:
Supplementing the regulation that the VNIPO must issue a notice of intention to refuse withdrawal acceptance of the application in case the request for withdrawal of application does not meet the conditions for the applicant to remedy (Article 17.2.b2).
6. Procedures related to applications for international registration of industrial designs under the Hague Agreement that have Vietnamese origin and have Vietnamese designation are prescribed from Article 22 to Article 24 of the Decree.
7. Requests for a Madrid Application of Vietnamese origin that has been granted an international registration number can be made directly with the International Bureau or through the VNIPO and regulation on the required documents if choosing to submit through the VNIPO (Clause 3, Article 26 of the Decree).
8. Supplementing regulations on the granting protection titles in the electronic form or in paper form. For applications for registration of IP rights filed from the effective date of this Decree, protection titles in the paper form will only be issued in cases where the applicant expresses the requirement in the Application (Article 29.1).
9. Amendment of protection title:
- The request for amendment of the trademark sample on the protection title (Trademark Registration Certificate) is accepted if it meets the following conditions: (i) only removing small details that are excluded elements (not separately protected) and (ii) does not change the ability distinctiveness of the trademark (point a, clause 3, Article 29 of the Decree);
- Procedures for reissuing or issuing copies of the Certificate of registration of agreements for transfer of rights to use industrial property objects (license agreements) are applied similarly to the procedures for reissuing or issuing copies of protection titles (Article 29.8).
10. Procedures related to confidential inventions are specified in Articles 48 to 52 of the Decree.
RESOLVING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY
PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY
FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY