Nghị định 197-HDBT

DECREE

ON TRADE MARKS

With a view to unifying the administration of trademark throughout the country, to encourage manufacturing and commercial establishments to ensure and improve the quality of their products, in order to contribute to the increased circulation of goods in domestic and international markets, and to suppress the manufacture of fraudulent products, and illegal commercial practices;
This Ordinance is promulgated to protect the trademarks, and the legitimate interests of consumers as well as those of manufacturing and commercial establishments.

Chapter 1

GENERAL PROVISIONS

Article 1

1. State, collective and private organizations which are legal entities (hereinafter referred to as organizations), and neutral persons engaged in lawful manufacturing, commercial or service activities shall be entitled, and obliged to register and use trademarks and service marks to designate their products or services, pursuant to the provisions of this Ordinance.

2. This Ordinance shall apply to the legal protection of trademarks and to the protection of service marks ( hereinafter referred to as marks).

3. State, collective, private and social organizations which are legal entities shall be entitled to register and use collective marks. The members of the above organizations or their subsidiaries shall be entitled to use collective marks in accordance with the rules laid down by the organizations concerned.

4. Natural persons and legal entities of foreign countries shall benefit from the rights granted by this Ordinance in accordance with the international conventions to which Vietnam is a party, or the principle of reciprocity.

Natural persons and legal entities having no residence, headquarters or representative offices in Vietnam shall apply for the legal protection of marks in Vietnam through an industrial property agency.

Article 2

1. Trademark means a sign used to distinguish goods or services of the same kind, of different manufacturing and commercial establishments. A trademark may be a word, a figurative element or a combination thereof represented in one or more colors.

2. The signs specified below shall not be recognized as marks:

(a) signs that do not possess distinctive characteristics, in that they consist of an assembly of simple geometric shapes, figures or letters that cannot be pronounced, except in exceptional cases in which the signs have been widely used and recognized for a long time;

(b) conventional signs, and the usual figures and denominations for goods that are widely used and a matter of public knowledge;

(c) signs expressing time, place, manufacturing process, type, quality, quantity, nature, composition, purpose, value, amongst other things, that are of a descriptive character in relation to the product;

(d) signs liable to mislead the public as to the origin nature or purpose of the product, or signs likely to deceive the consume.

(e) signs identical or similar to official initials indicating control, quality, warranty, amongst other things, of domestic or international organizations;

(f) signs that represent State flags, armorial bearings or emblems, portraits of national leaders or heroes, geographical denominations relating to Vietnam or other countries, names or emblems of international organizations, except where the use of the such signs has been authorized by the competent authorities;

(g) signs that are contrary to the law, to public policy and to socialist morality;

(h) in the case of goods of the same type, signs identical or similar to marks previously registered in Vietnam, or protected by an international convention to which Vietnam is a party.

Article 3

The affixing of marks on goods or in connection with services pursuant to the provisions of this Ordinance shall not replace the affixing of labels or other signs pursuant to provisions on standards, technical conditions and conditions governing the delivery of the goods.

Chapter II

REGISTRATION OF MARKS

Article 4

1. The registration of marks shall be carried out by the National Office on Inventions attached to the State Committee for Science and Technology. In order to obtain legal protection for marks, legal entities and natural persons shall file an application for registration for registration there of with the National Office on Inventions.

2. Each application shall relate to one mark only and shall be accompanied by a list of the goods that are to bear the mark. It shall be drafted in accordance with the form prescribed by the implementation of this Ordinance.

3. The applicant shall pay the fees required for registration.The fees required for registration and the other fees mentioned in the following articles shall be prescribed by the State Committee for Science and Technology.

Article 5

1. Within a maximum period of one month after the date of receipt of the application for registration, the National Office on Inventions shall proceed to examine the application with respect to form, in order to ensure that the application has been filed in the proper manner.
Within six months after the date of acceptance of the application found to be in proper form, the National Office on Inventions shall proceed to examine the application with respect tosubstance, and shall decide to grant or refuse a certificate of registration of the mark. In the event of refusal, the grounds shall be notified to the applicant.

2. The mark for which a certificate of registration is granted shall be entered in the National register of Marks and shall be published in the Official bulletin of Inventions and Marks issued by the National Office on Invention. The owner of the mark shall pay a publication fee.

Article 6

Where two or more persons file applications for the registration of identical or confusingly similar marks for goods of the same kind, priority shall be granted to the person who files his application first on the basis of the following dates:
(a) the date on which the National Office on Inventions received the application, or the date of postal dispatch;

(b) the date of filing of the initial application in another country pursuant to the provisions of international conventions to which Vietnam is a party;

(c) the date on which the product bearing the mark was displayed in an official exhibition in Vietnam, if the application for registration of the marks in Vietnam, provided the international conventions to which Vietnam is a party do not otherwise provide.

Chapter III

LEGAL PROTECTION OF MARKS

Article 8

1. Marks shall be protected as from the date on which the National Office on Inventions rendered its decision to grant the certificate of registration.

2. The term of protection shall be ten (10) years following the date of priority. The term of protection may be extended for periods of ten (10) years each following the expiry date of the previous term of protection. For the purpose of the extension of the term of protection, the owner of the mark shall file a request for extension with the National Office on Invention six months prior to the expiry date of the term of protection and shall pay the required fees.

Article 9

1. During the term of validity, the owner of the mark shall have the exclusive right to use the mark to designate goods appearing in the list of goods that are to bear the mark in question, in connection with all manufacturing, commercial or service activities in the territory of Vietnam.

2. The owner of the shall be entitled to assign the right to use the mark by contract, either partially or totally, to other manufacturing or commercial establishment, provided that the assignee ensures the characteristics and quality of the goods that bear the mark. In the case of partial assignments, the contract shall provide for the right of the owner of the mark to verity the quality of goods.

3. The contract for assignment of the right to use the mark must be registered with the National Office on Inventions before it shall be of legal effect, and the owner of the mark must pay the prescribed fee.

Article 10

1. During the term of validity, the owner of the mark may apply to the National Office on Inventions for a change in his or her name or address, to secondary elements of the mark, or the list of goods bearing the mark. Such changes shall be entered in the National Register of Marks and on the certificate of registration of mark. The owner of the mark shall pay the prescribed fee.

2. Where the changes amount to a complete transformation of the mark, its owner shall file a new application for registration.

Article 11

The legal protection of marks shall terminate in the following cases:

(a) where the owner of the mark files a request to terminate the protection of the mark prior to the expiry of the term of validity;

(b) where the manufacturing or commercial establishment that owns the mark no longer exists, or no longer carries on its activities, and there is no legal successor to the right to use the mark;

(c) where the mark has not been used or assigned for five years following the date of decision to grant the certificate of registration, and the owner of the mark has not given legitimate reasons.

Article 12

Throughout the term of validity of the certificate of registration of the mark, any organization or person who discovers that mark has been registered in a manner contrary to the provisions of this Ordinance shall have the right to file a declaration with the National Office on Inventions requesting the cancellation of the legal protection of the mark concerned.

Article 13

1. The person filing the application for the registration of a mark or the owner of the mark shall have right to appeal against decisions concerning acceptance and examination of the application for registration of the mark, and refusing the grant of a certificate of registration for the mark contrary to the provisions of article 2.

2. Within three months after the date of receipt of notice of the above decisions, the person concerned shall file the appeal with the National Office on Inventions.

3. Within two months after the date of receipt of the appeal petition, the National Office on Inventions shall examine the appeal, settle the matter in issue, and notify its findings to the person concerned. In the event of a difference of opinion between the person concerned and the National Office on Inventions, the decision of the Chairman of the State Committee for Science and Technology shall be considered final.

Article 14

1. Any person or organization shall be regarded as having violated the right of use of the owner of the mark if he, she, or it has made use belonging to another person without authorization, or of identical or similar signs likely to be confused by consumers with a mark belonging to another person, in respect of goods appearing in the list for that mark.

2. The owner of the mark shall have the right to apply to the competent authorities for the imposition of a sanction in cases of violation of the right to use the mark.

Article 15

1. Organizations which, or persons who do not register or use marks pursuant to the provisions of clause 1 of article 1 shall not enjoy the rights provided for in the Ordinance, and shall be subject to legal sanctions in accordance with the extent of the consequences of failure to so register and use marks.

2. Organizations which, or persons who have violated the rights of an owner of a mark provided for in clause 1 of article 14 shall be subject to legal sanctions in accordance with the degree and consequences of the violation.
Chapter IV

ORGANIZATION AND ADMINISTRATION OF ACTIVITIES CONCERNING MARKS

Article 16

1. The State Committee for Science and Technology shall be responsible for administering the registration, legal protection and use of marks at the national level. The National Office on Inventions shall be the department responsible for assisting the Chairman of the said State Committee in performing the above function.

2. The Ministries, the State Committees, other bodies of the Council of Ministers, and the people's committees of the provinces, cities and special zones under central authority shall be responsible for administering activities concerning marks within their respective jurisdictions, including;

(a) giving instructions to manufacturing and commercial establishments in relation to applications for the registration of marks within the country or abroad;

(b) control the use of marks.

3. The department responsible for the management of innovations and inventions or, as the case may be, another appropriate department shall be responsible for assisting Ministries, State Committees, other bodies of the Council of Ministers, and the people's committees of the provinces, cities and special zones under the central authority, and also manufacturing and commercial establishments, in performing the above tasks, in accordance with their respective duties.

Chapter V

PROVISIONS FOR IMPLEMENTATION

Article 17

The Chairman of the State Committee for Science and Technology shall be responsible for promulgating, either on his own initiative or in consultation with the bodies associated there with, instructions for the interpretation of this Ordinance and for the purpose of directing and organizing its implementation.

Article 18

Ministers, chairmen of State Committees, heads of other bodies of the Council of Ministers, and chairmen of people's committee of the provinces, cities and special zones under central authority shall be responsible for promoting and supervising the implementation of this Ordinance