New circular for industrial property guidelines drafted

Vietnam

The Ministry of Science and Technology has drafted a circular that provides guidelines for the implementation of the new IP law and Decree 103/2006/ND-CP on industrial property. Among other things, the circular provides guidelines on procedures for (i) establishing industrial property rights, and (ii) registering contracts for the transfer of industrial property rights, representatives and information.

Highlights of the provisions relating to trademarks include the following:

  • Trademark rights shall be established on the basis of a decision of the National Office of Intellectual Property (NOIP) on the grant of a trademark registration certificate.

  • With regard to international trademark registrations under the Madrid Agreement and Madrid Protocol - in force in Vietnam since July 11 2006 (see Madrid Protocol to come into force in Vietnam) - trademark rights shall be established on the basis of a NOIP decision or certificate of international trademark registration.

  • Well-known trademark rights shall be established on the basis of widespread use of those trademarks without completing registration procedures. If a well-known trademark is recognized under civil procedure or by a NOIP decision, it shall be recorded in the list of well-known trademarks by the NOIP.

  • Trademark applications must indicate clearly the type of mark applied for - whether a normal trademark, collective mark, certification mark or associated mark. With regard to associated marks, the applicant must specify the associating factors between the marks mark or the goods/services bearing the mark. With regard to certification marks, the applicant must specify the purpose, content and mode of certification.

  • In order to determine whether a trademark is identical or confusingly similar to a cited mark, the structures, contents, pronunciations, meanings and appearances of the two trademarks must be compared, as well as the goods and/or services in question.

  • A trademark shall be deemed identical or confusingly similar to a cited mark that is used for goods and/or services identical, similar or interrelated to that of the trademark in question in the following cases:

    • the trademark is identical to the cited mark and the goods and/or services bearing such trademark are identical or similar to those bearing the cited mark;

    • the trademark is confusingly similar to the cited mark and the goods and/or services bearing such trademark are identical or similar to those bearing the cited mark; or

    • the trademark is identical or similar to the cited mark, which is a well-known trademark, and the use of the trademark in question may mislead consumers about the origin and holder of the cited mark.

Le Hoai Duong, LÊ & LÊ, Hanoi

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