Hanoi, Vietnam – On 30 November 2023, the Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN (the “Circular”) detailing a number of articles of the Intellectual Property Law of Vietnam as revised under Law No. 07/2022/QH15 dated 16 June 2022 (the “IP Law”) and measures to implement Decree No. 65/2023/ND-CP dated 23 August 2023 of the Government detailing a number of articles and measures to implement the IP Law on industrial property, protection of industrial property rights, and rights to plant varieties and state management of intellectual property related to procedures for establishing industrial property rights and ensuring industrial property information.
The Circular has replaced Circular No. 01/2007/TT-BKHCN dated 14 February 2007, as revised and supplemented from time to time, to meet the updated requirements under the prevailing IP Law concurrently with Decree No. 65/2023/ND-CP. The Circular was developed with the goal of detailing the assigned contents and measures to implement Decree No. 65/2023/ND-CP. Basically, the content of the Circular inherits the provisions of current documents with appropriate changes to overcome difficulties and problems that have arisen during recent implementation and supplement the contents assigned to the Minister of Science and Technology to stipulate in detail under the Law amending and supplementing a number of articles of the IP Law. Below are some noteworthy changes of the Circular:
Using the results of substantive examination issued by foreign patent offices
The Circular stipulates a number of cases where the results of substantive examination issued by foreign patent offices can be used such as: during the substantive examination of a patent application, the Intellectual Property Office of Vietnam (IP Vietnam) can refer to, or the applicant can request IP Vietnam to use, the results of substantive examination as to a patent application filed abroad to examine its patentability if certain statutory conditions are met.
Cases of invalidation of protection titles
For patent certificates that are invalidated because the invention for which the protection certificate is granted exceeds the scope disclosed in the original specification of the patent application Article 96.2.đ of the IP Law in cases where compared to the original specification and for persons with average knowledge in the relevant art, the patent specification has a change in content and this change appears information that does not originate directly and clearly from the original specification, specifically:
- During the process of amending and supplementing the application, the applicant includes in the specification technical signs, or technical signs that cannot be directly and clearly determined from the original specification;
- Adding information that cannot be directly and clearly identified from the original specification and/or claims to clearly disclose the invention or fully disclose the claims;
- Contents added to the specification are technical signs related to dimensional parameters obtained by measuring dimensional parameters on the figures;
- Including the specification an additional element or component not mentioned in the original specification that results in special effects and/or advantages not included in the original application;
- Adding to the specification those effects and/or advantages (benefits) that cannot be determined by a person with average knowledge in the relevant art from the original application;
- Changing the technical features of the claims where such changed technical features are not disclosed or not directly and clearly identified from the original specification;
- Introducing new contents by changing undefined contents to definite and specific content;
- Combining separate technical signs of the original application into a new technical sign while the relationship between these technical signs is not disclosed in the original application;
- Changing one or more technical signs in the specification to make the technical signs different from the technical signs stated in the original specification;
- Removing from the claims a technical sign that is necessary for the subject matter sought to be protected to achieve a proposed purpose, and/or removing this technical sign causes change the technical sign or other technical sign(s).
A trademark registration certification can be invalidated due to the applicant registering a trademark in bad faith as prescribed in Point a, Clause 1, Article 96.1.a of the IP Law in the following cases:
- There is a basis to believe that, at the time of filing the application, the applicant knew or had a basis to know that the mark he was registering was identical or similar to the extent that it is difficult to distinguish from a mark that is widely used in Vietnam or a well-known trademark in other countries for identical or similar goods or services; and
- Such registration is intended to take advantage of the reputation and prestige of that mark to profit, or primarily for the purpose of reselling, licensing or transferring registration rights to the holder of the trademarks, or such registration aims to prevent the ability of the holder with the above trademark to enter the market and limit competition, or other acts contrary to fair trade practices.
Bad faith in trademark registration
Article 34.2 of the Circular provides for the cases which are considered to bad faith in filing a trademark application, such as taking advantage of the reputation and prestige of that mark to profit, or primarily for the purpose of reselling, licensing or transferring registration rights to the holder of the trademarks; or such registration aims to prevent the ability of the holder with the above trademark to enter the market and limit competition, or other acts contrary to fair trade practices. Such provision shall thereby help collect evidence to prove the bad faith of a dishonest applicants. The bad faith shall be considered during the examination of the trademark application.
Settling oppositions to industrial property registration applications
In case of an opposition to an industrial registration application, IP Vietnam shall receive and notify such opposition to the applicant, setting a period of two (2) months from the date of the notification for the applicant to respond in writing.
In case the trademark and goods or services in the opposed application are identical to the trademark, goods and services proposed by the opposing party or there is a clear basis to conclude that the opposed trademark, goods and services is confusingly similar or not confusingly similar to the mark, goods or service raised by the opposing party, the IP Vietnam will handle the opposition during the substantive examination and notify the opposing party of the results of settling the opposition along with the results of substantive examination for the corresponding application.
After receiving the opinions of the applicant, if deemed necessary, IP Vietnam shall notify such opinions to the opposing party, setting the time limit of two (2) months from the date of the notification for the opposing party to respond in writing.