Chương 2 Nghị định 103/2006/NĐ-CP hướng dẫn luật sở hữu trí tuệ về sở hữu công nghiệp: Xác lập quyền sở hữu công nghiệp

Chapter II

ESTABLISHMENT OF INDUSTRIAL PROPERTY RIGHTS

Article 6.- Bases and procedures for the establishment of industrial property rights

1. Industrial property rights to inventions, layout designs, industrial designs, marks and geographical indications are established on the basis of decisions of the state management agency in charge of industrial property which grants protection titles to applicants for registration of those objects according to the provisions of Chapters VII, VIII and IX of the Law on Intellectual Property. Industrial property rights to marks internationally registered under the Madrid Agreement and the Madrid Protocol are established on the basis of recognition of such international registration by the state management agency.

2. Industrial property rights to well-known marks are established on the basis of widespread use of those marks according to the provisions of Article 75 of the Law on Intellectual Property, not requiring the completion of registration procedures.

3. Industrial property rights to trade names are established on the basis of lawful use of those names according to geographical areas (territories) and business domains, not requiring the completion of registration procedures.

4. Industrial property rights to business secrets are established on the basis of financial and intellectual investments or any other lawful methods to find, create or acquire information and keep the confidentiality of information which constitutes those business secrets, not requiring the completion of registration procedures.

5. The Science and Technology Ministry specifies forms and contents of various industrial property registration applications prescribed in Articles 100, 101, 102, 103, 104, 105, 106 and 107 of the Law on Intellectual Property, guides the order and procedures for processing of applications, sets out forms of protection title and the national register of industrial property, and specifies the format and contents of the Industrial Property Official Gazette.

Article 7.- Right to registration of industrial property under treaties

1. Foreign organizations and individuals that satisfy the conditions for protection of industrial property rights in Vietnam specified in Article 2 of this Decree may file  applications for industrial property registration in Vietnam under treaties on or concerning international filing procedures.

Treaties mentioned in this Clause include:

a/ The 1970 Patent Cooperation Treaty, which was revised in 1984 (hereinafter referred to as the PCT for short);

b/ The 1891 Madrid Agreement on International Registration of Marks, which was revised in 1979 (hereinafter referred to as the Madrid Agreement) and the 1989 Protocol Relating to the Madrid Agreement (hereinafter referred to as the Madrid Protocol);

c/ Other treaties on or concerning international filing procedures to which Vietnam is a contracting party, as from the date such treaties become binding on Vietnam.

2. Vietnamese organizations and individuals may file applications for international industrial property registration to request the protection of their rights in Vietnam if it is so provided for by such treaties.

Article 8.- Right to registration of foreign geographical indications

Foreign individuals and organizations that are holders of rights to geographical indications under laws of countries of origin are entitled to register such geographical indications in Vietnam.

Article 9.- Right to registration of inventions, industrial designs and layout designs of the State

1. When an invention, an industrial design or a layout design is created on the basis of full financial, material and technical investments by the State, the right to registration of such invention, industrial design or layout design belongs to the State. The organization or state agency assigned by the State to act as the investor shall represent the State in exercising that right to registration.

2. When an invention, an industrial design or a layout design is created on the basis of capital contribution by the State (either in funds or material-technical facilities), part of the right to registration of such invention, industrial design or layout design belongs to the State in proportion to its capital contribution. The organization or state agency acting as the owner of the state investment capital shall represent the State in exercising that part of the right to registration.

3. When an invention, an industrial design or a layout design is created on the basis of research and development cooperation between a state agency or organization and another organization or individual, unless it is otherwise provided for in the research and development cooperation agreement, part of the right to registration of such invention, industrial design or layout design belongs to the State in proportion to such state agency’s or organization’s contribution to the cooperation. The state agency or organization which takes part in the research and development cooperation shall represent the State in exercising that right to registration.

4. The state agency or organization exercising the right to registration of an invention, an industrial design or a layout design specified in Clauses 1, 2 and 3 of this Article represents the State in being named as the protection title holder, manages industrial property rights to such object, and is entitled to assign the State’s part of the right to registration of invention, industrial design or layout design to another organization or individual if the assignee pays to the State a specified sum of money or satisfies reasonable commercial conditions compared with the commercial potential of such invention, industrial design or layout design.

Article 10.- Priority right of applications for registration of inventions, industrial designs or marks

The priority right of applications for registration of inventions, industrial designs or marks provided for in Article 91 of the Law on Intellectual Property applies as follows:

1. When the applicant for registration of an invention, an industrial design or a mark wishes to enjoy the priority right under the Paris Convention, his/her claim for such priority right is accepted if the following conditions are satisfied:

a/ He/she is a citizen of Vietnam or of a member country of the Paris Convention or resides or has a production or production establishment in Vietnam or in that member country;

b/ His/her first application has been filed in Vietnam or in a member country of the Paris Convention and contains a section relevant to the claim for priority right in the application for registration of invention, industrial design or mark;

c/ The registration application is filed within six months, for industrial design or mark registration applications; or twelve months for invention registration applications, as from the date of first filing;

d/ In the application for registration of an invention, industrial design or mark, the applicant clearly states his/her claim for the priority right and submits a copy of the first application specified at Point b of this Clause with certification by the agency which receives the first application in case of overseas filing;

e/ The fee for claim for priority right is fully paid.

2. If the applicant for registration of an invention, industrial design or a mark wants to enjoy the priority right under another treaty, his/her claim for such priority right is accepted if all the conditions for the priority right set out in that treaty are satisfied.

Article 11.- Invention international applications

1. In this Article, “PCT applications” are referred to the applications for invention registration which are filed under the PCT, including:

a/ Applications containing a claim for the protection in Vietnam and filed in any member countries of the PCT, including Vietnam (hereinafter referred to as PCT applications designating or selecting Vietnam);

b/ Applications filed in Vietnam and containing a claim for the protection in any member countries of the PCT, including Vietnam (hereinafter referred to as PCT applications originating from Vietnam).

2. The state management agency in charge of industrial property examines a PCT application selecting or designating Vietnam when the following conditions are fully satisfied:

a/ The applicant carries out procedures for registration of an invention at Vietnam’s state management agency in charge of industrial property (the national phase) under the PCT’s provisions within 31 months from the international filing date or from the priority date (if the priority right is claimed in the application);

b/ The applicant pays industrial property fees and charges according to the provisions of law.

3. A PCT application originating from Vietnam must be made in English or Russian and satisfy the PCT’s requirements on the form and contents. Applicants may file their applications with the state management agency in charge of industrial property or with the International Office of the World Intellectual Property Organization (WIPO).

4. The Science and Technology Ministry specifies the form and contents of, order and procedures for processing PCT applications from other countries designating or selecting Vietnam, and PCT applications originating from Vietnam.

Article 12.- Mark international applications

1. In this Article, “Madrid applications” are referred to the applications for international registration of marks filed under the Madrid Agreement or the Madrid Protocol, including:

a/ Applications originating from other member countries of the Madrid Agreement or the Madrid Protocol for protection of marks in Vietnam (hereinafter referred to as Madrid applications designating Vietnam);

b/ Applications filed in Vietnam for protection of marks in other member countries of the Madrid Agreement or the Madrid Protocol (hereinafter referred to as Madrid applications originating from Vietnam).

2. After being announced by the International Office of the World Intellectual Property Organization (WIPO), a Madrid application designating Vietnam shall go through the content examination like an application for mark registration filed according to national formalities.

For a mark accepted for protection, the state management agency in charge of industrial property shall issue and publish a decision on acceptance for protection of an internationally registered mark in the Industrial Property Official Gazette. At the request of an internationally registered mark owner, the state management agency in charge of industrial property issues a certificate of protection in Vietnam of internationally registered mark.

3. Vietnamese organizations or individuals may exercise the right to international registration of marks under the Madrid Agreement or the Madrid Protocol according to the following regulations:

a/ To file applications under the Madrid Agreement, if the protection is claimed in a member country of the Madrid Agreement, provided that they have been granted mark protection titles in Vietnam;

b/ To file applications under the Madrid Protocol, if the protection is claimed in a country which is a member of the Madrid Protocol but not a member of the Madrid Agreement, provided that they have filed applications for mark registration in Vietnam.

4. The state management agency in charge of industrial property receives Madrid applications originating from Vietnam.

5. The Science and Technology Ministry specifies the form and contents of, the order and procedures for processing of Madrid applications.

Article 13.- Establishment of industrial property rights on the basis of treaties on mutual protection recognition

1. When a treaty concerning industrial property to which Vietnam is a contracting party provides for the recognition and protection of industrial property rights of organizations and individuals of treaty members, industrial property rights of organizations and individuals of other members are recognized and protected in Vietnam.

Industrial property rights are protected within the scope and term of protection compliant with the provisions of treaties without having to complete the registration procedures specified in the Law on Intellectual Property.

2. The Science and Technology Ministry publishes all necessary information relevant to the industrial property rights recognized and protected in Vietnam under treaties.

Article 14.- Complaints about the registration of industrial property rights and settlement thereof

1. Applicants and all organizations and individuals with rights and interests directly related to decisions or notices concerning the processing of industrial property registration applications, which are issued by the state management agency in charge of industrial property, may lodge complaints with state management agency in charge of industrial property or initiate lawsuits at court according to the provisions of the Law on Intellectual Property and relevant laws. The time limit for settlement of complaints is specified in Clause 5 of this Article.

2. Upon the expiration of the time limit for settlement of complaints about decisions or notices concerning industrial property (first-time complaints) by agencies issuing such decisions or notices, if complaints are not settled or complainants disagree with complaint-settling decisions of these agencies, the complainants or persons with rights and interests directly related to those decisions may further lodge their complaints (second-time complaints) with the Science and Technology Minister or initiate lawsuits at court. Upon the expiration of the time limit for settlement of second-time complaints mentioned in Clause 5 of this Article, or if complainants disagree with complaint-settling decisions of the Science and Technology Minister, such complainants or persons with rights and interests directly related to those decisions may initiate lawsuits at court.

3. Contents of complaint must be presented in writing, clearly stating the full name and address of the complainant; serial number, signing date and contents of the complained notice or decision; contents of complaint, arguments and evidence on which the complaint is based; specific requests for the modification or annulment of the relevant notice or decision.

4. The right to complaint may only be exercised within the following time limit which does not include the period of time when the complainant cannot exercise his/her right to complaint due to any objective obstacle:

a/ The time limit for lodging a first-time complaint shall be 90 days from the date the person having the right to complaint receives or knows about the decision or notice on the processing of his/her industrial property registration application;

b/ The time limit for lodging a second-time complaint shall be 30 days from the date of expiration of the time limit for settlement of the first-time complaint specified in Clause 5 of this Article if by that date the first-time complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the first-time complaint.

5. Within 10 days from the date of receipt of a complaint about the grant, amendment, invalidation, annulment or prolongation of validity of a protection title, the person competent to settle that complaint shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

The time limit for settlement of complaints complies with the provisions of law on complaints.

The period of time for amending or supplementing complaint dossiers shall not be included in the time limit for settlement of complaints.

6. The complaint-settling order and procedures comply with the provisions of law on complaints.