How to Handle Rejection of International Trademark Registration In Vietnam By The NOIP?

Cancellation Against of Trademark in Vietnam

The procedure to register a trademark in Vietnam is carried out at the National Office of Intellectual Property of Vietnam (NOIP). The duration calculated from the full receipt of the dossier to the announcement is at least 12 months, or it can be expended from 16 months to 18 months.

However, in many cases, NOIP could send a notice on its intended refusal of the trademark application because of the following reasons:

·         There are grounds to affirm that the subject matter stated in the application does not fully satisfy the conditions for protection;

·         If there are more than one registration applied in the same time with full conditions to issue the protection title, but your application is not the first.

After receiving the refusal intention notice, applicants and all organizations and individuals have rights to reject the notice within 02 months, this duration can be extended one time, the extended time is 02 months.

If reasons in the notice are not correct and the applicant does not agree with the notice, within the given duration, the applicant could send written comment to NOIP, in which display the applicant’s comment, submit supplemental documents and proof to support.

After receiving the written comment, NOIP shall re-examine before issue the final decision.

The time limit for re-examination of applications is equal to two thirds of the time limit for examination; for complicated cases involving many circumstances which need to be verified or requiring expert opinions, that time limit may be prolonged but must not exceed the time limit for examination. Re – examination is only carried out one time.

However, in many cases, the applicant cannot display convincing arguments or reliable proofs, that makes NOIP does not agree and keep their own intention to refuse issuing the protection title. Therefore, when receiving intention notice to refuse issuing protection titles, applicants should find legal advice from consultants who have experience in intellectual property.

Source: ANTLawyers.vn

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Guidance of Representative Office Setting-up in Vietnam

Establishment of representative offices of foreign traders in Vietnam

The establishment of representative offices of foreign traders in Vietnam have to follow the procedures as guided by the Commercial Law in Vietnam and the related decrees providing instructions of the law.

Preparation of dossiers for establishment of representative offices includes:

·         An application form for License for Establishment of the representative office using the form promulgated by the Ministry of Industry and Trade and signed by a competent representative of the foreign trader.

·         Copies of the Certificate of Business Registration or equivalent documents of the foreign trader (shall be certified or legalized by overseas diplomatic missions or Consulates of Vietnam under laws of Vietnam);

·         A letter of appointment of the head of the representative office (shall be translated into Vietnamese and certified true in accordance with laws of Vietnam);

·         Copies of audited financial statements or certificates of fulfillment of tax liabilities or financial obligations of the last fiscal year or equivalent documents as proof of existence and operation of the foreign trader issued or certified by competent authorities where such foreign trader is established (shall be translated into Vietnamese and certified true in accordance with laws of Vietnam);

·         Copies of the passport or ID card (for Vietnamese) or copies of the passport (for foreigners) of the head of the representative office (shall be translated into Vietnamese and certified true in accordance with laws of Vietnam.);

·         Documents on the expected location of the representative office including:

Copies of memorandum of understanding or leasing agreements or documents as proof of the right to use a location as the representative office;

Copies of documents on the expected location of the representative office.

Procedures for granting of Licenses for Establishment of representative offices:

·         Foreign traders submit applications directly or via post or online (if applicable) to the Department of Industry and Trade of the locality where the representative office is to be located.

·         Within 03 working days from the date of receipt of the dossier, the Department of Industry and Trade shall examine and request the supplement if the dossier is incomplete and invalid. Requests for additional records are made at most once during the processing of applications.

·         Except for the establishment of a representative office have to submit for directions of the relevant Ministry of Industry, within 07 working days from the date of receipt of a complete and valid application the Department of Industry and Trade shall grant or refuse to grant a license for establish a representative office for foreign trader. In case of refusal, the reasons must be clearly stated in writing.

·         Where the establishment of a Representative Office is subject to the approval of the relevant Minister or the Head of the ministerial level agency and the establishment of a Representative Office not yet stipulated in the normative document. The Department of Industry and Trade shall send a written request for directions to the specialized management ministry within 03 working days from the date of receipt of a complete and valid dossier. Within 05 working days from the date of receipt of the written request for the directions of the Department of Industry and Trade, the specialized management ministry shall issue a written statement stating its consent or refusal to grant a license for the establishment of the representative office. Within 5 working days after receiving the opinions of the specialized managing ministries, the provincial / municipal Industry and Trade Services shall grant or refuse to grant permits for the establishment of representative offices to foreign traders. In case of non-licensing, the reasons therefor must be clearly stated in writing.

In addition, for certain special cases managed by the specialized management ministry, the licensing of representative offices is carried out in accordance with the specific regulations.

Our lawyers in Vietnam constantly follow up with changes of law to provide the client with update for better decision making process.

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Renewal of License for the Establishment of Branches Office in Vietnam

How to extend branch license in Vietnam?

The extension of the license for the establishment of a foreign trader’s branch in Vietnam shall be following the regulation of the commercial law and the relevant guiding decrees and circulars under Vietnam laws.

Preparation of dossiers for extension of license for the establishment of branches includes:

• Application for extension of license for the establishment of branches, made according to the form set by the Ministry of Industry and Trade, signed by a competent representative of the foreign trader;
• A copy of the business registration certificate or equivalent paper of the foreign trader that is translated into Vietnamese and certified by a Vietnamese diplomatic mission or consulate abroad consular legalization in accordance with the law of Vietnam;
• Copies of audited financial statements or documents certifying the fulfillment of tax or financial obligations in the latest fiscal year or papers of equivalent value issued by competent agencies or organizations (where the foreign trader established) to prove the existence and operation of the foreign trader in the latest financial year, it must be translated into Vietnamese and authenticated in accordance with the provisions of Vietnamese law;
• A copy of the license for the establishment of the branch.

The order and procedures for extension of the license for the establishment of the branch at a competent agency shall be as follows:

• A dossier for extension of the license for the establishment of the branch must be submitted within 30 days at the latest before the license expires;
• Foreign traders submit applications directly or via post or online (if applicable) to the Ministry of Industry and Trade;
• Within 03 working days from the date of receipt of the dossier, the Ministry of Industry and Trade shall check and request the supplement if the dossier is incomplete and invalid. Requests for supplementary records are made at most once during the process of processing applications;
• Within 05 working days from the date of receipt of the complete and valid dossier, the Ministry of Industry and Trade shall renew the branch establishment permit. In case of non-renewal, the reasons therefor must be clearly stated in writing;
• In case the extension of the license for the establishment of the branch is not governed in specialized legal documents, the Ministry of Industry and Trade shall send a written request for comment to the specialized management ministry within 03 working days from the date of receipt of a complete and valid file. Within 5 working days from the date of receiving the Ministry of Industry and Trade’s written request, the specialized managing ministries shall clearly state whether they agree or disagree with the license extension. Within 5 working days after receiving the opinions of the specialized management ministry, the Ministry of Industry and Trade shall extend or not extend the branch establishment permit to the foreign trader. In case of non-renewal, the reasons therefor must be clearly stated in writing;
• Within 15 days from the date of extension of the license for the establishment of the branch, the Ministry of Industry and Trade shall publish on the website of the Ministry.

Our lawyers in Vietnam constantly follow up with changes of law to provide the client with update for better decision making process.

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Brazil started to apply anti-dumping tax on goods from Vietnam

On April 24^th, 2017, the Brazilian investigation authority decided to initiate an investigation to verify the existence of dumping, injury and a causal link between them in the imports of seamless stainless steel tubes imported from Malaysia, Thailand and Vietnam

Investigated products are seamless stainless steel tubes with diameter equal or higher than 6mm and not higher than 2.032 mm and thickness equal or higher than 0.40 mm and not higher than 12.70 mm, classified as HS code: 7306.40.00 and 7306.90.20 on the Common Nomenclature of MERCOSUR – NCM, from Malaysia, Thailand and Vietnam.

Plaintiffs are Aperam Inox Tubos Brasil Ltda. and Marcegaglia do Brasil Ltda.

The alleged dumping margin with Vietnam is 18.0%, Malaysia is 26.4% and Thailand is 19.1%

The Period of Investigation is from October 2015 to September 2016 and the injury period is from October 2011 to September 2016.

The time duration for concerned parties to answer and submit the questionnaire is 30 days since the date of receiving (this duration shall be extended but not exceeding 30 days).  Concerned parties shall have 20 days to register to join the investigation i.e. May 15^th, 2017.

All concerned parties shall have 70 days to submit comments about using alternative country for normal value calculation, by Jul 3^rd, 2017.

If concerned parties have legal representative, the representative shall be allowed within 91 days since the initiation of the investigation, by Jul 24^th, 2017.

To ensure the rights and benefits, the concerned parties are suggested to join and submit the questionnaire fully and find the support from experienced anti-dumping law firm and lawyers in Vietnam and Brazil.

Our lawyers in Vietnam constantly follow up with changes of law to provide the client with update for better decision making process.

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How To Conduct Legal Due Diligence for M&A in Vietnam?

Legal Due Diligence help management make better investment decision in Vietnam

Mergers and Acquisitions (M&A) has become popular in Vietnam as the country develops and more investors are eager to invest and gain control of the business enough to engage in, decide important business matters through partial or full ownership of an enterprise.  A successful M&A mean the parties achieve their financial and commercial goals (increasing capital, raising management capacity, branding, etc) and ensuring safety and restraint the risk at the lowest level, though legal due diligence undertaken by law firm in Vietnam.

The Importance of Legal Due Diligence of Enterprise in M&A activities

Legal due diligence of enterprises focuses on full and detailed assessment of legal issues relating to the legal entity, capital contribution status, shareholder status, legal rights and obligations. From the investigation information, the parties can anticipate legal risks, assess opportunities to come up with alternatives. In addition, legal assessments help parties evaluate the reliability of their counterparts as well as understand their advantages and constraints for the negotiation process.

What Legal Due Diligence in M&A Activities Entail?

• Evaluate the factors related to the legal status and capacity of the target enterprise: Review the legitimacy of the establishment, operation, possession of enterprise; ensure that the enterprise is not subject to procedures for dissolution or bankruptcy and compliance with the law of the enterprise in the course of operation. The information to be checked includes: dossiers, certificate of enterprise establishment, operation licenses, practice certificates, professional liability insurance, company charter, agreement between the company owner on rights of shareholders, capital contributors, minutes of meetings, member/shareholder register, certificate of capital contribution.
• Evaluate the factors related to the business and financial activities of the target enterprise: Review the system of customers and partners of the enterprise; the documents on economic contracts (with customers, suppliers, etc); dossier of investment, construction, land, project; information on guarantee, mortgage (if any), debt and credit agreement, M&A, financial leasing contract, exclusive contract, franchise, etc, in terms of value, legality, validity, progress to evaluate legal risks in the future. Review the financial statements on the accuracy of the financial status of the business.
• Verify the factors related to labor: Review labor contracts, labor agreements, internal labor regulations to determine the enterprise’s financial obligations to employees, compliance Labor law and reception of labor after the purchase or sale.
• Verify the factors related to intellectual property: Review intellectual property rights of enterprises including: trademarks, trade names, industrial designs, layout designs, business secrets, etc; the property has granted the patent/license. Review matters of infringement of intellectual property rights of other organizations, individuals or legal persons in order to anticipate the risks of being sued or claiming damages.

In addition, in an M&A deal, the acquirer should ensure that participation in capital contribution or acquisition of the target enterprise is permitted, the form of M&A implementation is in accordance with the law and the M&A deal was approved by the competent authority of each party. After that, the factors related to M&A transaction procedures and constraints and restrictions of law (if any) must be evaluated.

Our lawyers in Vietnam constantly follow up with changes of law to provide the client with update for better decision making process.

Source: ANTLawyers.vn

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Patent Prosecution Highway Mechanism Between Vietnam and Japan

First pilot program between Vietnam National Office of Intellectual Property (NOIP) and Japanese Patent Office (JPO)

PatentProsecution Highway Mechanism Between Vietnam and Japan

NOIP and JPO have jointly undertaken the first Pilot Patent Prosecution Highway program (“PPH”) since 01^st Apr, 2016.

According to this bilateral PPH, the patent application filed at JPO (previously filed at NOIP) falling into one of the three following cases:

(i)     An application which validly claims for priority under the Paris Convention on the basis of NOIP application(s), or

(ii)     A PCT national phase application to Japan without priority claim, or

(iii)   An application which validly claims for priority under the Paris Convention to the PCT application(s) without priority claim.

And meeting other conditions regulated in Procedures guidance to file a request to JPO for PPH program between JPO and NOIP (“Procedures”), the applicant shall be entitled to request JPO to fast prosecute the application on the basis of providing research and evaluation results of NOIP and other relevant documents to JPO for references.

For the patent application filed at NOIP (previously submitted to JPO) falling into one of the three following cases:

(i)     An application which validly claims for priority under the Paris Convention on the basis of JPO application(s), or

(ii)     A PCT national phase application to Vietnam without priority claims and this PCT submitted to JPO as an international application receiving agency (applications’ number initiating with PCT/JP hereby referred to as “PCT/JP applications”), or

(iii) An application claims for priority under the Paris Convention on the basis of PCT/JP application(s) without priority claims;

And meeting other conditions regulated in the Procedures, the applicant shall be entitled to request NOIP to fast prosecute the application on the basis of providing research and evaluation results of JPO and other relevant documents to NOIP for references. The duration of the PPH program shall be expired by the date of March 31^st, 2019.

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Circular 15/2012/TT-BVHTTDL on the procedure for issuing copyrights assessors card

The submission requests for the assessor’s card could be sent via post mail or at the office of the Department of Copyright – Ministry of Culture, Sports and Tourism.

Copyright in Vietnam

Dossiers includes:

– The required declaration form

– Copy of satisfactory test results for professional appraiser or documents of the Council of acceptable for free of professional assessment test

– A copy of the ID card

– 02 photos 3×4 cm

The time for making decision and issuing card is 15 working days after receiving the complete and valid dossiers; in case of refusal, there must be written notification with reasons.

Copyrights assessors card  takes effect from the date of issuance.

This guidance is regulated in Circular 15/2012/TT-BVHTTDL on the assessment of copyright and related rights, taking effect from February 1^st 2013 .

How ANT Lawyers IP Practice Could Help You?

Please click here to learn more about ANT Lawyers IP Practice or contact our Copyright Attorneys in Vietnam for advice via email ant@antlawyers.vn or call us at +844 32 23 27 71

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How to Register Industrial Design in Vietnam?

Industrial design is the outward appearance of a product embodied in three-dimensional configuration, lines, colors or a combination of such elements. An impressed appearance shall increase the value of products, the attraction to customers and the distinction from other same products. In fact, however, appearances of products can be copied easily if there no legal protection and prior prevention. Filling industrial design in National Office of Intellectual Property shall guarantee that your product appearance is protected from violation of others.

Register industrial design in Vietnam

With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to offer you Industrial Design Filing service as follow:

1. ANT Lawyers service in Industry Design

Our services in this area include:
a. Evaluate the possibility of registration and use of Industrial Design;
b. Search for information on the registration and use of Industrial design;
c. File application and proceed with the legal procedures on the registration of Industrial design;
d. Advise and proceed with the legal procedures on the record of assignment of Industrial Design application;
e. Advise and proceed with the legal procedures on the record of amendment of Industrial Design application such as: name and address of the applicant;
f. Advise and proceed with the legal procedures on the amendment of the Industrial Design Certificate on the basis of transferring of ownership, merging companies; record of change of name and address of the Certificate holder;
g. Advise on the renewal of validity of the exclusive Industrial Design Certificate.
h. License and Assignment;
i. Opposition against proceedings;
j. Appeal; cancellation; invalidation;

2. How to file Industrial Design in Vietnam

a. Required documents:
i. Original Power of Attorney from the Applicant(s);
The POA must be signed by an applicant or duly authorized representative on behalf of the Applicant (no further notarization or legalization is required);
The POA is required at the time of filing, please therefore arrange to have and provide us with scan copy via fax or email first and original one can be followed within one [01] month later.
ii. Full name and address of applicant(s);
iii. Full name, address and nationality of designer(s);
iv. Drawing of design;
The drawings of design must show clearly 7 views (separately in jpeg. format is preferable): perspective view, front view, rear view, right view, left view, top view, bottom view, at a same scale; and the minimum resolution is 300DPI.
v. Original certified true copy of priority document (if any);
vi. Salient novelty features description in which showing the using purpose or Lorcano classification of design, if any.
b. Time and procedures
The ID application will be examined by National Office of Intellectual Property of Viet Nam (NOIP) with ID Examination Procedure as below:
i. Formality examination: Under Intellectual Property Law of Vietnam, the above application will be examined as to form within one [01] month as from the filing date or date entering the national phase. If the ID application meets the requirements as to form, the NOIP will issue a decision of formality acceptance and then the application will be further processed.
ii. The Substantive Examination: The above application will be examined as to substance within 12 months.
• Notification of the Substantive Examination Results.
• The Decision of Refusal or Request to pay fee.
• Issuing the ID of Invention
Note: The deadline for filing design application in Vietnam on the basis of claiming priority right under Paris convention is 6 months counted from the earliest priority date;
iii. The total time from filing to registration in straightforward case is 12-14 months. However, in practice, this duration can be extended further 3-6 months;
c. ID Term and Maintenance
A registered industrial design is given an initial protection period of 5 years from the date of filing and is extended for two further consecutive terms of 5 years each. The maximum protection period is 15 years.

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How to Handle Trademark Infringement in Vietnam?

Counterfeit destroys businesses, business environments, markets as well as the image of the country. Handling trademark infringement in Vietnam has been practically challenging.

Handling trademark infringement in Vietnam

Vietnam government has been trying to curb the counterfeits however the results are limited.  The counterfeit business generates huge profits due to the gap price anywhere in the world.   Almost goods which is either popular or luxury, high or low-value of either domestic or foreign brands are being counterfeited, imitated in Vietnam.  Falsification of household goods, food, cosmetics, shoes and items of higher value such as bags, watches, glasses, etc may be found all over Vietnam. For effective anti-counterfeit, we need a close cooperation among the authority agencies in inspection, control of production, import and circulation in the market.  The Southern Department of Goods Quality Control in Vietnam in one of its regular inspections when cooperating with competent agencies in Ho Chi Minh City found after checking 79 stores with 416 items including: oil, helmets, toys, electronic devices that 33.89% of goods of unsatisfactorily labeled, 14.5% unsatisfactory quality. Where the consumers buy counterfeit goods, they could and should report to State authorities, Anti-Counterfeit and Brand Protection Association as an effort to contribute to curbing counterfeit in Vietnam.  The international brands being infringed could request assistance from local law firms in Vietnam.

ANT Lawyers’ Intellectual Property lawyers in Vietnam have assisted a number of clients being foreign brands in its effort to protect their intellectual property and industrial property rights in Vietnam under Intellectual Property Law through advisory, and implementation service.

How ANT Lawyers IP Practice Could Help You?

Please click here to learn more about ANT Lawyers IP Practice or contact our trademark attorneys in Vietnam for advice via email ant@antlawyers.vn or call us at +844 32 23 27 71

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Recordal of Trademark Assignment in Vietnam

Assignment of a trademark right means the transfer of ownership right by owner of such trademark right to another organization or individual.

Trademark Assignment in Vietnam be established in the form of written agreement. Oral agreements, letters or telegrams shall not be accepted and have no legal effect.

Recordalof Trademark Assignment in Vietnam

Required documents

You are required to provide us the following documents:

• One executed original of Deed of Assignment, which must be signed and sealed by both Assignor and Assignee. Since the Deed of Assignment has two pages, both Assignor and Assignee should sign on each page or use company stamp to inter-cross seal over all pages (NO      further notarization or legalization is required);
• A Power of Attorney (POA) that should only be signed by the Representative of Assignee; 
• The relevant original Certificate of Trademark Registration (if recording the assignment for a registered one).

Procedures and time

After the recordal of assignment is completed, the NOIP will issue the following documents:

• The Notice of Assignment Recordal in case of a pending Trademark Application.
• The Certificate for Registration of Deed of Assignment in case ofTrademark Registration. In addition, the name and address of new owner will be endorsed on the last page of this Certificate of Trademark Registration.

The whole duration for recordal of assignment will in straightforward case is 2 months counted from the filing date. However, in practice, this duration can be extended from 3-6 months.

Other matters

Under Vietnam Intellectual Property Law, the trademark assignment will not be approved in the following cases:

• The subject mark for assignment identical/confusingly similar to the trade name of assignor as it shall cause the confusion as to the origin of goods or services with those of assignor. 

• The subject mark for assignment similar or identical to other trademarks but not for assignment of Assignor in respect of similar goods or services as it shall cause the confusion as to the origin of goods or services with the rest of assignor.

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