Chương IV Thông tư 23/2023/TT-BKHCN hướng dẫn luật sở hữu trí tuệ và nghị định 65/2023/NĐ-CP hướng dẫn luật sở hữu trí tuệ về sở hữu công nghiệp, bảo vệ quyền sở hữu công nghiệp, quyền đối với giống cây trồng và quản lý nhà nước về sở hữu trí tuệ : Khiếu nại và giải quyết khiếu nại liên quan đến các thủ tục về sở hữu công nghiệp

Chapter IV

COMPLAINTS AND SETTLEMENT OF COMPLAINTS ABOUT INDUSTRIAL PROPERTY PROCEDURES

Article 35. Persons with complaint rights, subjects of complaints, prescriptive period of complaints, and complaint settlement persons

1. Persons with complaint rights are organizations and individuals prescribed in Article 119a of the Law on Intellectual Property.

2. Decisions and notifications that may be complained according to Clause 1 Article 119a of the Law on Intellectual Property are official decisions and notifications of the Intellectual Property Office of Vietnam concerning industrial property procedures according to corresponding regulations prescribed in this Circular, including the following decisions and notifications:

a) Application rejection notifications;

b) Valid application acceptance decisions;

c) Application rejection decisions;

d) Notifications of acceptance or rejection of requests for amendments to applications/application conversion/changes to applicants/application withdrawal;

dd) Protection title issuance rejection decisions; protection title issuance decisions;

e) Decisions on protection rejection of internationally registered industrial designs; decisions on protection rejection of internationally registered marks; decisions on protection acceptance of internationally registered industrial designs; and decisions on protection acceptance of internationally registered marks;

g) Decisions on issuance of protection title copies, decisions on re-issuance of protection titles; decisions to reject the issuance of protection title copies, decisions to reject the re-issuance of protection titles;

h) Notifications of the maintenance of protection title validity, decisions to reject the maintenance of protection title validity;

i) Decisions on renewal of protection title validity, decisions to reject the renewal of protection title validity;

k) Decisions on amendments to protection titles, decisions to reject requests for amendments to protection titles;

l) Decisions to partly or wholly terminate protection title validity, notifications of rejection of termination of protection title validity;

m) Decisions on and notifications of the processing of applications for the termination of the validity of internationally registered marks; decisions on and notifications of the processing of applications for the termination of the validity of internationally registered industrial designs;

n) Administrative decisions concerning industrial property representatives, industrial property appraisal, and transfer of industrial property rights;

o) Decisions on settlement of first-time complaints of the Intellectual Property Office of Vietnam;

p) Decisions, notifications, and other acts meeting the requirements for being subjects of complaints according to complaint laws.

Notifications for informing and requesting completion of applications are not subjects of complaints due to not being administrative decisions, e.g., appraisal result notifications, notifications of deficiencies, amendment requests, document supplements, intended rejection, notifications of temporary rejection of the protection of internationally registered marks, notifications of rejection of the protection of internationally registered industrial designs.

3. The following contents shall not be accepted during the settlement of complaints:

a) Requests for amendments or supplements to applications for industrial property right establishment that are the subject matters of decisions or notifications subject to complaints (e.g., request for amendments to the description of an invention (including protection request); request for amendments to the set of photos or drawings and the industrial design description; request for amendments to samples of a mark and the list of goods and services bearing the mark; request for amendments to names of products with a geographical indication and the description of the characteristics of products with such a geographical indication and the map of the geographical area corresponding to the geographical indication regarding a geographical indication registration application, unless otherwise prescribed by international treaties that Vietnam is a signatory;

b) Circumstances already existed during the appraisal of industrial property registration applications, but due to objective reasons that the Intellectual Property Office of Vietnam and relevant organizations and individuals only know about such circumstances after decisions on protection title issuance or decisions on rejection of protection title issuance are issued (hereinafter referred to as "new circumstances"), except for cases where such circumstances are brought up by third parties according to Point b Clause 6 Article 38 of this Circular.

4. Complaint applications shall be submitted within the prescriptive period prescribed in Article 9 and Article 33 of the Law on Complaints.

5. The person competent to settle first-time complaints is the Director of the Intellectual Property Office of Vietnam; the person competent to settle second-time complaints is the Minister of Science and Technology of Vietnam (hereinafter referred to as “complaint settlement persons”).

Article 36. Complaint applications

1. Complaint applications shall comply with Clause 1 Article 3 of Decree No. 124/2020/ND-CP dated October 19, 2020 elaborating several Articles and measures to implement the Law on Complaints (hereinafter referred to as "Decree No. 124/2020/ND-CP"), which specifies information according to Article 119a of the Law on Intellectual Property and documents concerning complaint contents according to Clause 2 Article 8 of the Law on Complaints, specifically:

a) Copies of decisions or notifications subjects to complaints of the Intellectual Property Office of Vietnam and copies of industrial property registration applications that are the subject matters of such decisions or notifications (in case of submitting complaint applications for the second time) or documents guiding the information on the mentioned documents;

b) Copies of decisions on first-time complaint settlement (regarding second-time complaints);

c) Proofs (evidence or material evidence) used to prove and clarify complaint arguments.

Proofs may be added within 1 month from the date of complaint application submission.

2. In case of submitting a complaint application through a legal representative in Vietnam according to Clause 2 Article 119a of the Law on Intellectual Property, an authorizing document shall be enclosed with the application; regarding a second-time complaint, copies of the authorizing document subject to Clause 5 Article 3 of this Circular shall be confirmed by the Intellectual Property Office of Vietnam.

Article 37. Complaint application withdrawal and complaint settlement suspension

1. An applicant may withdraw his/her complaint application according to Article 10 of the Law on Complaints. If the withdrawal of the complaint application is under the authorization of the application, the authorized withdrawal of the complaint application shall be specified in the authorizing document. A withdrawn application shall be considered not submitted. The petitioner shall not receive a refund for the complaint application and paid complaint settlement service provision fees, except for cases where the complaint application is withdrawn before the date of notification of the application acceptance or rejection.

2. The complaint settlement person shall issue a decision to suspend the complaint settlement in the following cases:

a) The petitioner withdraws the complaint application;

b) The protection title, internationally registered mark, or internationally registered industrial design in Vietnam has its validity terminated, or the validity of the internationally registered mark has lapsed according to a relevant international treaty.

Article 38. Complaint settlement procedures

1. The acceptance of a complaint application shall comply with Article 27 of the Law on Complaints and Clause 1 Article 119a of the Law on Intellectual Property, specifically:

a) Within 10 days from the date of receipt of the application, the complaint settlement person shall:

(i) Issue a notification of rejection of the acceptance of the complaint application if it is subject to one of the cases prescribed in Point b of this Clause, specifying the reasons for the rejection; or

(ii) Issue a notification of acceptance of the complaint application if it is not subject to cases prescribed in Point b of this Clause, specifying the application acceptance date and determining the lookup fees and/or appraisal fees regarding cases where a re-appraisal is necessary to carry out the complaint settlement corresponding to the complaint contents (if any) and impose a 1-month time limit for the petitioner to pay the mentioned fees.

b) The complaint application shall not be accepted for settlement in one of the following cases:

(i) The subject of the complaint is not an official decision or notification according to Clause 2 Article 35 of this Circular;

(ii) The decision, notification, or act subject to the complaint is not directly related to legitimate rights or benefits of the petitioner;

(iii) The complaint application is not submitted in compliance with Clause 2 Article 36 of this Circular;

(iv) The complaint application is submitted outside of the prescribed prescriptive period, except for cases prescribed in Clauses 3 and 4 Article 15 of Decree No. 65/2023/ND-CP;

(v) The complaint already has a decision on second-time complaint settlement;

(vi) The complaint has already been accepted by a Court or settled by a judgment or decision of a Court, except for the case of having a decision on administrative case settlement suspension of a Court;

(vii) The petitioner continues to complain after the 30-day time limit from the date of the decision on suspension of the complaint settlement according to Article 10 and Clause 8 Article 11 of the Law on Complaints;

(viii) The complaint application does not point out elements contrary to laws of the decision, notification, or act subject to the complaint and only requests for amendments to the application that is the subject matter of the mentioned decision or notification.

(ix) The complaint application for a notification, administrative decision, or act concerns a subject matter of industrial property subject to state secret scope.

c) If the petitioner does not pay the appraisal fees for the case where a re-appraisal is necessary for the complaint settlement according to the notification of complaint settlement acceptance prescribed in Paragraph (ii) Point a of this Clause, the complaint application shall be settled based on documents provided in the application.

2. The time limit for complaint settlement shall comply with Article 119a of the Law on Intellectual Property and Articles 28 and 37 of the Law on Complaints.

3. To determine the complaint contents, the complaint settlement person shall collect suggestions from persons with rights and obligations related to the accepted complaint application according to Article 21 and Decree No. 124/2020/ND-CP (hereinafter referred to as “related party”) as follows:

a) The complaint settlement person shall issue a written notification of the complaint contents to the related party and impose a 1-month time limit from the notification date for such a party to provide any feedback (if any);

b) The related party may provide information and evidence proving its reasoning within the time limit prescribed in Point a of this Clause, and the complaint settlement person shall assess such information and evidence when settling the complaint;

c) The complaint settlement person shall issue a written notification of the feedback of the related party and impose a 2-month time limit from the notification for the petitioner to provide feedback on the feedback of the related party;

d) After the prescribed time limit, if one party does not have any feedback, the complaint application shall be settled based on the documents provided in the application, including documents presenting the feedback of the other party.

4. During the first-time complaint settlement for complicated cases, the first-time complaint settlement person may, proactively or based on the request of the petitioner, carry out the re-appraisal according to Clause 4 Article 119a of the Law on Intellectual Property and Article 13 of this Circular. During the re-appraisal, the first-time complaint settlement may consult an independent specialist or a Counseling Council in conformity with the following regulations:

a) The first-time complaint settlement person may consult an independent specialist or a Counseling Council during the re-appraisal based on the complexity of the contents subject to re-appraisal.

A Counseling Council includes a president and members. The independent counseling specialist and the Counseling Council shall consult with the complaint settlement person on technical and legal issues of the contents subject to re-appraisal and settlement schemes.

The independent counseling specialist and the president and members of the Counseling Council are persons with appropriate qualifications selected from the list of industrial property counseling specialists and other sources (in case no compatible specialists can be chosen from such a list).

The Intellectual Property Office of Vietnam shall take charge and cooperate with the Inspectorate of the Ministry of Science and Technology of Vietnam in formulating the list of industrial property counseling specialists and disclosing it in the Industrial Property Official Gazette.

b) The Counseling Council shall be organized and operated under the following principles: (i) the Counseling Council shall be established according to a decision of the first-time complaint settlement person;

(ii) The Counseling Council shall operate in the form of meetings, collective discussions, and voting by majority;

(iii) Regarding related parties in a complaint case, the party with relevant rights and obligations may be invited to participate in the meeting of the Counseling Council to clarify the related circumstances.

c) The following persons shall not participate in the Counseling Council and work as independent counseling specialists in complaint cases:

(i) Persons subject to complaints (persons issuing decisions or notifications subject to complaints);

(ii) Persons who have appraised industrial property establishment registration applications related to the decisions or notifications subject to complaints;

(iii) Persons with rights and benefits related to complaint cases;

(iv) Persons not being objective in complaint cases as determined by related grounds.

Persons mentioned in this Point shall explain and provide information concerning the job they carried out that is subject to the complaint contents.

d) Suggestions from independent counseling specialists and the president and members of the Counseling Council and operational results of the Counseling Council shall be presented in writing.

5. The first-time complaint settlement person shall organize a dialogue session according to Article 30 of the Law on Complaints. Independent counseling specialists and members of the Counseling Council may be invited to participate in the dialogue session regarding the re-appraisal during the first-time complaint settlement (if any).

6. The person competent to settle first-time complaints shall issue a complaint settlement decision in compliance with the following regulations:

a) Based on the results of the re-assessment of the decision or notification subject to the complaint, the first-time complaint settlement person shall issue a complaint settlement decision, specifying Clause 2 Article 31 of the Law on Complaints.

b) Regarding the case where the petitioner, who is not the applicant or the person requesting the establishment of industrial property rights or registering a contract for transfer of industrial property rights that are subject matters of the decision or notification subject to the complaint, provides new circumstances that may affect the complaint settlement conclusion, the Intellectual Property Office of Vietnam shall carry out a re-appraisal of the contents concerning the new circumstances according to the procedure for re-appraisal of industrial property right establishment applications prescribed in Points b and c Clause 2 Article 13 of this Circular. The first-time complaint settlement person shall issue a complaint settlement decision according to Point a of this Clause based on the re-appraisal results.

7. Regulations on first-time complaint settlement in this Circular shall also apply to the second-time complaint settlement, except for regulations concerning consultation with specialists in application content re-appraisal prescribed in Clause 4 of this Article. Regarding complex complaint cases, if necessary, the second-time complaint settlement person shall establish a Counseling Council according to Clause 4 of this Article for consultation during the complaint settlement.

Article 39. Disclosure of complaint settlement decisions

A complaint settlement decision shall be disclosed on the web portal of the complaint settlement authority within 15 days and in the Industrial Property Official Gazette within 2 months from the decision issuance date.

Article 40. Validity of decisions and notifications subject to complaints and complaint settlement decisions 

1. A decision or notification subject to a complaint shall still be valid during the complaint settlement, except for the case where its implementation is suspended under a written decision of the complaint settlement person according to Article 35 of the Law on Complaints or at the request of a Court according to procedural laws.

2. The Intellectual Property Office of Vietnam shall immediately implement a legally effective complaint settlement decision according to Article 44 of the Law on Complaints, specifically:

a) A first-time complaint settlement decision of the Director of the Intellectual Property Office of Vietnam shall take legal effect after 30 days from the date of signing, and the petitioner does not submit a second complaint. In case of a remote area where travel is difficult, the mentioned time may be extended up to 45 days;

b) A second-time complaint settlement decision of the Minister of Science and Technology of Vietnam shall take legal effect after 30 days from the date of signing. In case of a remote area where travel is difficult, the mentioned time may be extended up to 45 days;

3. The acceptance of a second complaint shall be notified to the first-time complaint settlement person within 10 days from the acceptance date. In this case, the first-time complaint settlement decision shall not take legal effect. The decision or notification subject to the complaint shall continue to be valid until the second complaint settlement decision takes legal effect.

4. The person complaining for the second time may immediately notify the first-time complaint settlement person of the second-time complaint application submission to ensure his/her rights and benefits.

Article 41. Measures to limit arising complaints

1. The Intellectual Property Office of Vietnam shall reinspect and reassess issued notifications and decisions; if there are signs contrary to laws, promptly carry out amendments and remedial measures to prevent arising complaints, except for cases where such decisions and notifications are currently subject to complaints.

2. During the complaint settlement, the complaint settlement person shall encourage and create favorable conditions for related parties to mediate as prescribed by laws.