Filing & Registration

 NON-CONTENTIOUS

 I. Assignment  

1.  What documents and information are required for the trademark assignment?

2.  Can there be partial assignment in respect of trademark registration?

3.  Is it necessary to include the provision on assignment cost in Deed of Assignment?

4. What statutory provisions in a Deed of Assignment are to be required?

5. Will it be compulsory to use a trademark prior to filing an application for registration?

II. Term of protection & renewal

1. What is the initial term of protection for patent, trademark, and design in  Vietnam?

2. What is the effective date from which this term of protection runs?

3. Will the first-to-use rule be accepted for trademark applications in Vietnam?  

4. Is there a grace period for late renewal?

III. Domain name

1.  What is the procedure of registration of domain name in Vietnam?

      2.  What kinds of domain names are registrable in Vietnam?

3. Is it possible to register a domain name in the name of foreign companies? 

IV. Copyright

1. What kind of works will be protected under Vietnam copyright law?

2. What documents and information are required for copyright registration.

3. How does the protection of works created by foreigner stipulate?

4. How long does it take to grant a registration from the filing date?

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IP Litigation & Infringement

IP Legislation

Non-Contentious

I. Assigment

1.  What documents and information are required for the trademark assignment?

	A Power of Attorney, which is to be made in the name and executed by either   the  Assignee or Assignor and then must be public notarized.
	Two originals of the Assignment Agreement (including appendices, if any) which must be executed by both Assignee and Assignor and the must be  public notarized.
	An original relevant certificate of trademark registration for assignment.

2.    Can there be partial assignment in respect of trademark registration?

   Yes, there can be partial assignment in respect of whole class.

3.  Is it necessary to include the provision on assignment cost in Deed of Assignment?

Yes, please note that true valuable consideration is not required to be appeared on the assignment agreement, however in order to be accepted by the National Office of Industrial for registration, a provision in relation to the price must be stated. As a matter of prudence client may state a symbolic cost to satisfy the requirement on consideration. 

4.  What statutory provisions in a Deed of Assignment are to be required?

• Under Vietnam Trademark Law and according to relevant provisions relating to former of assignment of ownership of trademark registration the following matters, which should be provided for, appeared to be deficient and have to be added to the Deed of assignment:

• Registered business name and address of assignor and assignee,

• Particulars Industrial Property object to be assigned including Certificate of trademark  registration number, granting date etc.

• Scope of assignment (assignment as a whole or partial) ,

• Price of assignment,

• Conditions for  amendment, termination, and invalidity of the contract,

• Settlement of claims and disputes;

• Signature of a representative of the assignor and assignee and Certified by notarized public.

5. Will it be compulsory to use a trademark prior to filing an application for            registration?

                 No need.

II. Term of protection & renewal

1.  What is the initial term of protection for patent, trademark, and design in           Vietnam?

   a)   10 years counted from the filing date for the trademark registration.

   b)   7 years counted from the filing date for the design patent.

   c)    20 years counted from the filing date for the patent.

2.  What is the effective date from which this term of protection runs?

    The effective date is granting date of registration/patent.

3.  Will the first-to-use rule be accepted for trademark applications in Vietnam?  

    No, the first-to-file rule is applied.

4.  Is there a grace period for late renewal?

    Yes, within 6 months after expiry date of registration. 

III. Domain name

1.  What is the procedure of registration of domain name in Vietnam?

          According to the decision of the General Department of Post of Vietnam (now being Ministry of Post and Telecommunication) on regulations on domain name distribution and management, there are five (05) levels of registrable domain name: the highest level “. VN” is used for Internet Server System in Vietnam. The second level is used for Internet Service Providers (ISPs) e.g. “VNN.VN” or “ PT.VN” (at present there are four  ISPs in Vietnam and here VNN and FPT is the domain name of ISPs). Under the decision foreign clients can register only domain name at the third level (e.g. ABC.FPT.VN) to the fifth level (e.g. 123.234.ABC.FPT.VN) and clients can choose one out of ISPs in operation in Vietnam, namely FPT, VNN, NETNAM, VIETTEL and SAIGONNET.

          When registration, the registrant of a domain name must provide explanation on the relation between the applied domain name and his/her business as one of measures to prevent the conflict with other rights such as copyrights, industrial property, trademark rights and the registrant shall be liable in this relation to these rights for the registration and the use of the will be granted domain name. It is also provided that the resale of a registered domain name is prohibited. There is no provision, which may be construed as limiting a registrant to have more than one domain name or can only have one unique registered domain name with an ISP.

2.   What kinds of domain names are registrable in Vietnam?

The types of domain names that are available for registration in Vietnam can be:

• xxx.com.vn: for enterprises, companies, and commercial organisations. This is the     type of domain name that is registered most popularly in Vietnam

• xxx.edu.vn: for research, education organisations and schools,

• xxx.gov.vn: for state authorities in central and province, 

• xxx.net.vn: for computer network companies,

• xxx.org.vn: for social and political organisations,

• xxx.int.vn:  for representative of international organisations in Vietnam.

3. Is it possible to register a domain name in the name of foreign companies?

The application for registration of a domain name must be filed with the Ministry of Post and Telecommunication of Vietnam. There is no provision that prohibits the registration of domain names of companies that are not present in Vietnam. However, due to the lack of specific regulations, the grant of domain names for foreign companies are still much depending on the subjective opinions from the Ministry.

The Ministry of Post and Telecommunication of Vietnam has accepted for the registration of the first domain name “AMAZON.COM.VN” for a foreign company without legal presence in the Vietnam. This serves a precedent case, paving the way for the Ministry to grant domain names for foreign companies without legal presence in Vietnam.

Therefore, our recommendation is that the application for domain name for overseas companies without presence in Vietnam should be filed and possibility of registration could be  sought through practical approach to the Ministry.

IV. Copyright

1. What kind of works will be protected under Vietnam copyright law?

    That are:

	lectures, speeches; theatrical works and other forms of artistic performance;
	cinematographic and video works; radio and television works;
	press works; architectural works; plastic art works; applied art works;
	photographic works; scientific works, text books, teaching materials;
	graphic works, drawings, patterns, sketches and maps related to  topography, works of architecture or  scientific projects;
	translated, adapted, re-written, transformed, compiled, annotated, selected and anthological works;
	computer software; and other works prescribed by law.

2. What documents and information are required for copyright registration.

    Documents

1. A Notarized Power of Attorney signed by the application (s) (with full name capacity of the subscriber in the case of legal entity) (our form is enclosed) and certified by a duly admitted public notary, having   jurisdiction throughout and practicing in the applicant’s state ( i.e. country) of nationality.

2. Deed of Assignment from author (s) to the applicant (s) (author’s declaration) , or  certified document proving the right to apply e. g. certified copy of labor contract, if  the applicant is not the author.

3. Copy of the works, fixed or represented in a media.

    Information

1. Full name, address, nationality of applicant (s) and author (s);

2. Title of works, Kind of works, nature of work and two copies of work;

3. Date on which creation of work was completed, date and place of the first-made- public of works;

3. How does the protection of works created by foreigner stipulate?

Vietnam is not yet member to any International Convention for protection of copyrights. Under the current legislation, namely the (1) Civil Code, (2) the    Government Decree for implementing the Copyrights  protection under the Civil    Code, (3) the government Decree guiding the Application of Civil Relations    involving Foreign Element, and (4) the Agreement between the government of  Vietnam and United States of  America on the Establishment of Copyright relations, Vietnam shall recognize and protect works of foreigners in the following cases:

    a. Under (1), (2) and (3) above: if the works are created or first published in Vietnam;

    b. Under (1), (2) and (4) if

1. Works of authors, creators who are US national or domicile; or

2. The works are first published in US or Vietnam;

3. Works for which a US national or domicile owns economic rights, or such rights are owned by a judicial entity directly or indirectly controlled by, majority of whose shares or other proprietary interest is owned by, any national or domicile of US provided that such rights was acquired within one year  following the first publication of the works.

Vietnam shall extend the protection under (4) to works of nationals and    domicile  of US, and works first  published in US, prior to this agreement’s effect    if such works have not fallen into public domain after their protection term.

4. How long does it take to grant a registration from the filing date?

    In general, it takes 10-15 days from the date of filing to get the certificate of copyright     registration in Vietnam.

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