In November 2017, Vietnam’s Ministry of Science and Technology (MOST) released an amended Circular announcing some changes to procedures at the National Office of Industrial Property (NOIP).
The initial Circular (No. 01/2007/TT-BKHCN) was issued on 14 February 2007 and guided the implementation of a number of articles of the Law on Intellectual Property. It subsequently underwent a number of revisions, with the latest being in 2013. According to the latest Circular, a number of changes in regard to trademark-related procedures will take place from 15 January 2018:
- More time to respond to office actions
- Opportunity for Madrid application holders to file responses to provisional refusals before entering the appeal proceedings
- Supplementary procedures for handling appeals
- One-month time limit for NOIP to send notice of termination or invalidation request
- Withdrawn applications can no longer be revived
- NOIP to provide results of examination of opposed applications
- Procedure to challenge NOIP’s disclaimer entries
- Recognition of well-known trademarks
1. More time for responding to office actions
The time limit for responding to an office action regarding formality examinations has been changed from one month to two months from the date of issuance of the office action.
Similarly, the time limit for responding to an office action regarding substantive examinations has been changed from two months to three months.
These time limits may be extended once for the same periods.
2. Madrid application holders can file responses to provisional refusals before entering appeal proceedings
Under the Circular 01, if a Madrid application was provisionally refused, the application holder was given 90 days to file an appeal to the NOIP Trial Board. The Trial Board, however, is not the division that conducts the substantive examination of Madrid applications and the Decision of the Trial Board is final at the NOIP level.
The amended Circular provides for the application holder to file a response to the provisional refusal of the NOIP within 90 days. The response will be handled by the Geographical Indication Division – the division handling substantive examinations of Madrid applications. If the Geographical Indication Division does not change its opinion after reviewing the response, the NOIP will issue a Decision of Refusal and the applicant can file an appeal within 90 days, which will be handled by the Trial Board.
With this new provision, Madrid applicants are now treated the same as national applicants in overcoming NOIP refusals. The only difference is that Madrid applicants have 90 days instead of 60 days to file a response.
3. Supplementary procedures for handling appeals
Under the amended Circular, the NOIP may decide to seek consultation of independent advisory experts, or set up an advisory panel comprising experts, in respective fields to provide consultation to the NOIP in handling appeals.
The NOIP may also hold a “hearing session” that would allow related parties to attend and present arguments. The advisory experts or advisory panel may also be invited to attend the “hearing session” and provide consultation afterward.
4. One-month time limit for NOIP to send notice of termination or invalidation request
Circular 01 did not specify a time limit for the NOIP to send a Notice of the cancellation action to the holder of the trademark registration. This lack of proactive notice often caused unreasonable delays in the NOIP process. The amended Circular now provides a one-month time limit for the NOIP to send notices.
5. Withdrawn applications can no longer be revived
The amended Circular now clearly specifies that, if an application is withdrawn, the application can never be revived. In effect, withdrawn applications will be treated as if they were never filed.
Because withdrawn applications shall be considered as if they were never filed, applicants should carefully evaluate the possibility of withdrawing applications. Instead of withdrawing applications, applicants may prefer the alternative of letting the subject application lapse without taking any action within the given time limit.
6. NOIP to provide results of examination of opposed applications
Under Circular 01, while the NOIP was required to notify opponents of the final opposition results, the NOIP was under no official obligation to provide detailed results. The amended Circular now requires that, in addition to the providing the final opposition results, the NOIP shall also provide the opponent with detailed results of the examination of the opposed application.
7. Procedure to challenge NOIP’s disclaimer entries
At times, the NOIP proactively makes disclaimers of elements of a mark in its decision granting registration. Under the Circular 01, there was no specific procedure for applicants to respond or appeal against such proactive disclaimer entries.
Under the amended Circular, Applicants can challenge such proactive NOIP disclaimer entries within 90 days of the entry made by the NOIP.
8. Recognition of well-known trademarks
Under the Vietnam IP law, well-known trademarks can be recognized by a Court Decision or a Decision of the NOIP based on the examination of an application for recording a mark as well-known.
On a case-by-case basis, the NOIP issues decisions acknowledging marks are well-known when handling cases related to infringements, appeals, cancellations or oppositions. However, such acknowledgements are not considered as official decisions of recognition of well-known trademark status.
The amended Circular now specifies that, if a mark is recognized as well-known in a decision handling an infringement case involving such trademark, or a decision refusing registrations of another mark (including opposition and cancellation proceedings), it will be added to the list of well-known marks maintained at the NOIP.
However, the amended Circular does not include any provision for filing and handling applications for recognition of well-known marks.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.