HCMC UNIVERSITY OF LAW

FACULTY OF CIVIL LAW

INTELLECTUAL PROPERTY
LAW

2023

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AUTHORS

Dr. Nguyen Phuong Thao

LLM. Dang Nguyen Phuong Uyen

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 TABLE OF CONTENTS

CHAPTER 1: OVERVIEW OF INTELLECTUAL

PROPERTY LAW INDUSTRY………………………...4
CHAPTER 2: COPYRIGHT AND RIGHTS RELATED
TO COPYRIGHT……………………………………….20
CHAPTER 3: PATENT……..…………………….……50
CHAPTER 4: INDUSTRIAL DESIGN………….……161
CHAPTER 5: TRADEMARK……………………...…232
CHAPTER 6: OTHER OBJECTS OF INDUSTRIAL
PROPERTY RIGHTS……………………………...….335
CHAPTER 7: RIGHT TO PLANTS……………...……446

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 CHAPTER 1: OVERVIEW OF INTELLECTUAL
PROPERTY LAW INDUSTRY

1.1. INTELLECTUAL PROPERTY RIGHT

CONCEPT
Concepts such as intellectual property have become
familiar to many individuals and organizations in Vietnam
in recent years. So what is intellectual property? In the
simplest terms, intellectual property is research works,
literary, artistic and scientific works created by the creative
labor of the human mind. What is Intellectual Property
Rights (IP)? To a large extent, IP rights are the rights of
subjects recognized by the state to the results of human
creative activities in the fields of technology, science,
literature and the arts. The laws of countries around the
world when protecting intellectual property are aimed at
different purposes. On the one hand, the IP law is in place
to protect the creative achievements of individuals and
organizations with respect to the intellectual property
created by individuals and organizations. At the same time,
the law also defines which rights belong to individuals and

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organizations creating such intellectual products and which
rights belong to the public in order to ensure the legitimate
rights and interests of the public. Without this delimitation,
the exclusive rights of an individual or organization for too
long over a certain object of IP rights will cause difficulties
in accessing that right object from the public side. At the
same time, long-term exclusive attribution to a certain right
object will prevent as well as discourage other individuals
and subjects from creating literary, artistic and scientific
works.
On the other hand, IP law is set out to implement
state policies, encourage creative activities and apply
results to social life, promote economic and technical
development of the country. develop. It should be noted
that IP rights are rights granted by the state to individuals
and organizations for a certain period of time (protection
term). During the protection period, individuals and
organizations have the exclusive right to exploit, use, allow
or prevent other subjects from using these rights.
Notwithstanding, IPR rights do not apply to tangible assets
containing intellectual property. During the development of

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the world economy, different objects of IP rights have been
recognized and protected by law. Thus, up to the present
time, IP rights include subjects such as copyright and
related rights; rights to inventions, industrial designs,
trademarks, trade names, business secrets, geographical
indications; and rights to plant varieties. Because of the
importance in promulgating as well as implementing IP
policies, most countries in the world have regulations on IP
rights to protect the results of creative research activities of
individuals. person, organization. According to the
provisions of the Law on Intellectual Property of Vietnam,
intellectual property rights are the rights of organizations
and individuals to intellectual property, including copyright
and rights related to copyright, industrial property rights
and rights to varieties.
1.2. CHARACTERISTICS OF INTELLECTUAL
PROPERTY RIGHTS
1.2.1. Owning an intangible asset
Although intangible, intellectual property can be quantified
by specific metrics and asset values. The contribution of
intellectual property compared to tangible assets has now

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made a significant change in the asset structure of
corporations and companies around the world, especially
technology corporations. According to the 2018 statistical
report, Amazon is the leading company with an intangible
asset value of up to $827 billion, accounting for 96% of the
total value of the business. Microsoft is in second place
with an intangible asset value of $686 billion representing
95% of the total value of the business. Apple is in third
place with an intangible asset value of $648 billion or 85%
of the total value of the business. The intangible nature of
IP rights allows a right object to be used in many places and
used simultaneously without affecting each other. This is
unlikely to happen with tangible assets, because at a given
time, the use of tangible assets will be limited by a certain
number of people (a phone can be used for a certain amount
of time). by an individual or that phone can be used to play
music, show movies for a group of people at a time, a set
of tables and chairs can be used by one or several people at
the same time).
Meanwhile, with a song by a famous singer, at the
same time, many people can listen to it in many different

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countries and territories. For a style of Adidas sports shoe
that has many users around the world at the same time. Or
global fans wait together to see the latest installment of the
hottest series premiered on digital platforms at the same
time…When the legal use of the aforementioned IP rights
objects occurs simultaneously. time, will not cause the
value of intangible assets to decrease or be damaged.
Because of the intangible nature of intellectual property, if
the property is not effectively protected, it is vulnerable to
infringement. At the same time, to create an intellectual
property requires a lot of financial, effort, and intellectual
investment... so the new right holder is the one who has the
exclusive right to exploit and use the intellectual property
for a period of time. protection term. In addition,
intellectual property is the result of creative activities, so
research works and scientific and technical applications
have a high inheritance and continuity. This is not the same
as tangible assets. A tangible asset, over the course of use,
the technical characteristics, the functions of the asset will
gradually decrease over time. On the contrary, from a
literary work can be created derivative works such as

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drama, cai luong, drama, movie... Intangibility of
intellectual property is not affected by time factor as
tangible property.
1.2.2. Intellectual property rights are limited by the
country of protection (territorial)
Because intellectual property is an intangible
property, registration of protection for intellectual property
is required by the laws of all countries around the world.
The protection of intellectual property rights is protected in
accordance with the laws of each country. On the basis of
international treaties on intellectual property, member
states are obliged to internalize such regulations in
accordance with the development conditions of each
country in each stage of economic, political and social
development. certain. In fact, the provisions of IP rights in
the laws of countries do not contain much difference
because most countries rely on the framework provisions
of the main international treaties on IPR. However, because
the level of development and the economic, political, social
and cultural conditions of the countries are not the same,
the IP regulations of countries also contain differences.

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certain. For example, for computer programs, the IP Law
states that “a computer program is a collection of
instructions expressed in the form of instructions, codes,
schemas or any other form, when attached to a medium A
device that is operated in a computer programming
language is capable of making a computer or device do a
job or achieve a particular result. Computer programs are
protected as literary works, whether expressed in source or
machine code.”
1.2.3. Intellectual property rights create different
rights for subjects
The creation of an intellectual property can be the
work of one person, it can also be the work of a group of
people. In some cases, one or a group of people creates
intellectual property by themselves, but there are also cases
where the intellectual property is created by an entity other
than the right owner on the basis of a lease, contract, or
contract. co-assignment; or maybe a person becomes an
IPR owner on the basis of inheritance or succession of IP
rights. In relation to IP can be divided into two groups of
subjects:

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 - A group of subjects using intellectual labor to
create intellectual property. This group is called the authors
of IP rights. The author is the person who directly created
the work. Where two or more people directly co-create the
work with the intention that their contributions are
combined into a complete whole, those persons are co-
authors. The author is a subject with moral rights. Moral
rights are rights associated with authors, people directly, by
their mental labor to create the object of IP rights.
According to the provisions of the Intellectual Property
Law, moral rights include two types: attached to property
and not attached to property.
The provisions of the IP Law are consistent with the
provisions on types of moral rights in Clause 1, Article 17
of the Civil Code 2015. As for moral rights associated with
property, the right holder may transfer it to an individual or
organization. other. For example, the author has the right to
transfer the right to use the right to name a work or transfer
the right to publish his work to another individual or
organization. However, for moral rights that are not
attached to property, they cannot be transferred to other

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subjects because these are rights attached to each
individual, and according to the law, these rights are not
allowed to be transferred. These rights cannot be
transferred because they are tied to the author. A created
work usually bears the personal imprint of the author who
created that work. Therefore, with respect to his works, the
author has the right to protect the integrity of the work, not
to allow others to distort, not to allow others to modify or
mutilate the work in any way. prejudicial to the name and
reputation of the author.
- Group of subjects investing financially for the
creation of intellectual property. These people do not
directly create intellectual property, but invest financially
in research, development, and creation of intellectual
property. These people are IP rights holders. The group of
IP rights holders also includes the assignees of IP rights, the
inheritors of IP rights according to the provisions of the law
on inheritance and the inheritors of IP rights. Property
rights, also known as economic rights, belong to the owner
of IP rights. Because these are economic rights, the owner
has the right to exploit, transfer, grant the right (license) to

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allow other subjects to exploit their IP rights during the
term of protection. In fact, it is very common for an entity
to make a financial investment for an individual or
organization to create intellectual property. Because, in
many cases, the subject of financial investment does not
have in-depth specialized knowledge to create an
intellectual product.
For example, pharmaceutical corporations in the
world invest financially in creating functional foods that
prolong human life, or create brand-name drugs to support
the treatment of serious diseases such as: cancer, stroke,
heart, HIV/AIDS, lupus erythematosus, Parkinson's, or
create a vaccine to prevent Covid or other vaccines ... To
create the above pharmaceuticals, requires research
participants to have to are experts with certain specialized
knowledge such as biology, molecular biology, applied
physics, chemistry, biochemistry, microbiology, nutrition
and other specialized fields of study.
When researchers create certain studies, they are the
authors (co-authors) of those works. Those who invest
costs in the creation of the aforementioned drugs and

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vaccines are the owners if there is no other agreement
between these entities.
1.2.4. The owner has the exclusive right to use
With respect to tangible property, the owner of the
property is given the rights by law to possess, use and
dispose of such property. Ownership may be made directly
or may be through an entity other than the property owner.
Possession means that the subject holds and controls the
property directly or indirectly as the holder has the right to
the property. Possession of property allows the possessor to
have the ability to exploit the uses and features of the
property as well as to enjoy the benefits brought from it. In
contrast, due to its intangible nature, no one has the ability
to own intellectual property.
Instead, the right holder has the power to: use and
dispose of the intellectual property. In other words, no one
can physically hold the intellectual property and only the
owner of the IP right has the exclusive right to hold and
legally dominate his intellectual property. The use right of
an IPR owner is the right to exploit the use, assign, allow
or prohibit other subjects from using their rights during the

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term of protection. To put it simply, during the term of
protection, only the owner of the IP right has the exclusive
right to exercise his or her rights. When other subjects,
without the consent of the owner, use the above-mentioned
rights, they are considered to have infringed the owner's IP
rights. Imagine that if IP rights are not effectively protected,
any individual or organization can access and use the IP
rights of other subjects freely without having to pay any
fees. any money to the owner of IP rights.
For example, an author creates a literary work for 3
years, then due to the work selling well, many printing
establishments illegally print that work for sale (without the
author's consent). ), resulting in a serious decrease in the
income of the author of that literary work. This leads to the
situation that intellectual property rights holders as well as
other individuals and organizations will no longer have the
motivation to research, will not continue to invest
financially in research activities when they have no basis
for research. thinks its investments can be exploited to
recover costs; as well as the risks faced when an IPR object
is created without corresponding protection. Infringing

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individuals and organizations will only have to wait to have
free access to the results of a certain IPR owner's creative
research, which will lead to a society without creative
capacity. In addition, foreign investors will not invest in a
country if they have grounds to fear that their intellectual
property is not protected to a certain extent by the host
country. As a result, a country without factors promoting
development from inside and outside cannot develop
normally according to the laws of market economy.
1.3. CLASSIFICATION OF INTELLECTUAL
PROPERTY RIGHTS
1.3.1. Copyright
Subjects of copyright include literary, artistic and
scientific works; Copyright-related rights objects include
performances, sound recordings, video recordings,
broadcasts, encrypted program-carrying satellite signals.
Copyright protects the moral and property rights of authors
and copyright holders in literary, artistic and scientific
works. The moral rights of the author are protected
indefinitely while the property rights of the owner are
protected for a certain period of time. Copyright-related

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rights (referred to as related rights for short) are rights to
performances, phonograms, video recordings and
broadcasts carrying encrypted program-carrying satellite
signals. Related rights protect the rights of performers, the
rights of producers of phonograms and video recordings
and the rights of broadcasting organizations. Related rights
arise on the basis of copyright, such as from the literary
work The Endless Field by writer Nguyen Ngoc Tu, the
director created the screenplay and the film The Endless
Field was released to audiences. fake; or from the musical
work Like a flying cauldron by musician Trinh Cong Son,
there are many singers performing this musical work in
public… During the term of protection, the right holder has
the exclusive right to exploit the work, to permit or to
prevent others from using his work (except for the limited
use of the work in some cases in the Articles of
Association). 25, 25a and 26 IP Law).
1.3.2. Industrial property
Objects of industrial property rights include
inventions, industrial designs, semiconductor integrated
circuit layout designs, trade secrets, trademarks, trade

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names and geographical indications. In addition, this group
of rights also includes the right to combat unfair
competition as provided for in Article 10bis of the Paris
Convention. The protection conditions and term of
protection of objects of industrial property rights are not the
same, depending on each specific type of right. During the
term of protection, the right holder has the exclusive right
to use and permit others to use; prohibit others from using
industrial property objects; and determine the object of
industrial property. However, in order to ensure harmony
between the interests of the public, the interests of the State,
serving national defense, disease prevention, treatment,
nutrition for the people or meeting the urgent needs of
society in a in some cases the use of certain rights is not
considered an infringement. For example, in the case of
compulsory licensing of an invention (Article 145 of the IP
Law).
1.3.3. Rights to plant varieties
Plant varieties play an important role for countries,
especially countries with a high proportion of agricultural
exports like Vietnam. The recognition of rights to plant

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varieties will encourage activities of research, selection,
breeding, discovery, hybridization, transplantation, etc. to
create new plant varieties to meet the increasing demands
of the people in the country. as well as for export purposes.
During the protection term, the protection title holder has
the right to use or permit others to use the rights related to
the propagating materials of the protected variety such as
production or propagation or processing for the purpose of
propagation. , offering, selling or exporting, for inheritance,
inheritance and transfer of rights to plant varieties. The
exclusive rights of the protection title holder in some cases
may also be restricted according to the provisions of Article
195 of the IP Law.

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 CHAPTER 2: COPYRIGHT AND RIGHTS
RELATED TO COPYRIGHT
2.1. CONCEPT, CHARACTERISTICS OF
COPYRIGHT AND RIGHTS RELATED TO
COPYRIGHT
2.1.1. The concept of copyright
According to Clause 2, Article 4 of the Intellectual
Property Law, copyright is the right of an organization or
individual to a work they create or own. Countries
belonging to the continental European legal system (Civil
Law) use the term "copyright". Meanwhile, the term
"copyright" originates from the US - a country belonging
to the common law system (Common Law). Countries
following the continental European system use the term
"copyright" from the point of view of closely linking the
author and the work he has created, with particular
emphasis on the personal rights of the author. Countries
following the Anglo-American system focus on the
commercial value of works more pragmatically. Therefore,
they use the term "copyright" to emphasize the ability to
exploit the work through copying, distribution, etc. to bring

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economic value to the right holder. While moral rights are
an important element of copyright in the countries of the
Civil Law system, it is almost absent or not respected in the
countries of the Common Law system.
2.1.2. The concept of right related to copyright
Clause 3, Article 4 of the Intellectual Property Law
stipulates that “Rights related to copyright (hereinafter
referred to as related rights) are the rights of organizations
and individuals to performances, phonograms, video
recordings, broadcasts and broadcasts. , the satellite signal
carrying the program is encrypted.” In addition to the
author who is the person who directly creates the work,
there are also those who transmit that work to the public,
helping the public to access literary, artistic and scientific
works. Their work requires skills such as vocal quality (for
singers), use of musical instruments (for musicians), acting
ability (for actors), sound and video recording techniques
(for actors). producers of phonograms, video recordings),
etc. But they are not the creators of the work, nor are they
the copyright owners, so they are not covered by copyright.
They are the bridge to bring the work to the public. These

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people must also enjoy the protection of the law. Their
rights are called copyright-related rights, or related rights
for short. For example, the performing singer is the one
who conveys the song that the musician has composed to
the public. Drama artists are the people who bring a play to
the stage and are the bridge to bring the work closer to the
public.
First, related rights are established on the basis of
using an existing work In other words, related rights cannot
exist without the copyright associated with a prior mental
work. For example, the composition of the song
"Unforgettable Song" by musician Pham Minh Tuan is the
basis for forming the related rights of singer Cam Van -
who brought this song to the public and made a name for
himself. mine. Related rights exist parallel to and closely
related to copyright. The creation of a work protected by
copyright is the basis for the relevant right holders to
conduct their activities and thereby give rise to this right.
The relevant rights holders, although not directly creating
the work, nor are the rights holders to the work, act as a
bridge to bring the work to the public. For example, through

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the performance, the singer conveys the content of the song
to the audience. This work also requires certain creativity
and is protected by law. However, when exercising related
rights, related right holders must respect the moral rights
and property rights of authors and copyright holders to the
works used. In relation to copyright, related rights are
protected only on the condition that no damage is done to
the copyright. Clause 4, Article 17 of the Intellectual
Property Law stipulates: “Performances, phonograms,
video recordings, broadcasts, encrypted program-carrying
satellite signals shall be protected only according to the
provisions of Clauses 1, 2 and 2. 3 This is provided that it
is not prejudicial to copyright. For example, the
performance of an unpublished song must have the consent
of the copyright owner and must be paid in accordance with
the law. Second, objects protected by related rights must be
original This means that performances, sound recordings,
video recordings, broadcasts, encrypted program-carrying
satellite signals must be invested and created by the
relevant rights holders themselves with intellectual labor. .
For example, the music program "Vietnamese Songs" is

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invested by Vietnam Television Station and Cat Tien Sa
Company with financial and labor investment to
implement. These two subjects are protected by law with
related rights. The act of copying and distributing this
program without the consent of these rights holders is
considered an infringement of related rights.
2.2. OWNER OF COPYRIGHT AND RELATED
RIGHTS
According to Clause 1, Article 13 of the IP Law,
there are two types of subjects recognized and protected by
law: - Author; - Owner of copyright. The author is the
person who directly creates the work (Clause 1, Article
12a). For example, Nguyen Nhat Anh is recognized as the
author of the works "I see yellow flowers on green grass",
"I am Beto", "Kaleidoscope", "Give me a ticket to
childhood", " There are two cats sitting by the window”
created by himself. In the case of two or more people who
directly co-create the work with the intention that their
contributions are combined into a complete whole, those
persons are co-authors. For example, the Textbook of
Intellectual Property Law was written by many lecturers of

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the Ho Chi Minh City Law University, and they are all co-
authors of this textbook. The film "I see yellow flowers on
green grass" is adapted from the work of the same name by
writer Nguyen Nhat Anh which is recognized as the work
of many authors: Victor Vu (director); Viet Linh, Victor
Vu, Doan Nhat Nam (screenwriter); Nguyen K'Linh
(filming); Christopher Wong and Garrett Crosby (music
composer),… Note that only those who directly participate
in the creation of works with intellectual labor are
considered authors. Persons who assist, give opinions or
provide materials for other people to create works are not
recognized as authors or co-authors (Clause 2, Article 12a
of the Intellectual Property Law).
For example, the instructor is not considered an
author or co-author of a graduate thesis because the
instructor is not directly involved in the creation, but only
provides materials, direction, guidance, and suggestions.
Have students work on their own projects. In this case, only
the student writing the thesis will be recognized as the
thesis author. The creators of derivative works are not the
authors of the original work, but they have "directly

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created" the "derivative" work of the original work.
Therefore, they are still legally recognized as the authors of
the derivative works they have created. Indeed, the law
recognizes translators, adaptations, adaptations,
adaptations, compilations, annotations, selections from
other works as the authors.
For example, "A collection of love poems from
Hue" published by Young Publishing House is the work of
many authors - who have spent their efforts and intelligence
to collect and arrange in a logical order his works. famous
poets from Hue such as Hoang Phu Ngoc Tuong, Nguyen
Khoa Diem, Tran Vang Sao, Lam Thi My Da, etc. The
people who made this poetry anthology are not the authors
of each individual poem inside, but rather The author of the
anthology comes from his original creation.
The copyright owner may be the same author, or
may not be the author at the same time. If the work is
directly created by the author with his own effort and
expense, the author will also be the copyright owner.
However, in some cases, the copyright owner is not the
author:

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 Case 1: Copyright owner is an organization or
individual that assigns tasks to the author or enters into a
contract with the author (Article 39). In case the author is
an employee who is assigned a creative task by the
employer, the employer is the right owner of the work
created by the employee according to the provisions of
Clause 1, Article 39 of the Law. IPR: "The organization that
assigns the task of creating works to the author is a person
of their organization who is the owner of the rights
specified in Articles 20 and 3, Article 19 of this Law, unless
otherwise agreed." In case the author is the person who
enters into a contract with another individual or
organization to create a work, the agreement of the parties
to the contract shall be complied with. Usually, the author
receives a remuneration, and the individual or organization
that assigns the task to the author will become the owner of
the rights of that work. Clause 2, Article 39 of the
Intellectual Property Law clearly stipulates: “The
organization or individual that enters into a contract with a
work creator is the owner of the rights specified in Article

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20 and Clause 3, Article 19 of this Law, except for
otherwise agreed upon".
For example, the Ho Chi Minh City University of
Law tasked some lecturers from the Civil Law Faculty to
write a textbook and get paid for it. In this case, the
lecturers who wrote directly are the co-authors of the
textbook, and the copyright owner for the textbook is the
Ho Chi Minh City University of Law.
Case 2: The owner of the copyright is the heir
(Article 40) Article 40 of the Intellectual Property Law
stipulates: "Organizations and individuals that are entitled
to inherit copyright in accordance with the law on
inheritance are the owners of the rights specified in Articles
20 and 3, Article 19 of this Law". Thus, the heir is only
entitled to the moral rights associated with the property and
the property rights to the work. Moral rights not attached to
property still belong to the author even if the author is dead.
Subjects protected by law for related rights include:
- Performers: actors, singers, musicians, dancers and
others presenting literary and artistic works;

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 - Organizations and individuals that are related
rights holders;
- Producers of phonograms and video recordings:
Organizations and individuals that first shape the sounds
and images of the performance or other sounds and images;
- Broadcasting organization: Organization that
initiates and implements the broadcast.
2.3. SUBJECTS ARE PROTECTED OF COPYRIGHT
AND RELATED RIGHTS
Copyright protects creative works in the fields of
literature, art and science. It is these works that enrich the
cultural life of people. Copyright protection for works is
our way of respecting and recognizing the creative work of
our authors and encouraging everyone's creativity.
According to Clause 7, Article 4 of the Intellectual Property
Law, a work is defined as a creative product in the field of
literature, art and science expressed in any medium or form.
However, there is a view that this definition has not
highlighted the key and important signs for a creative
product to be considered a work. Regarding subjects
protected by copyright, the Berne Convention uses the term

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"Literary and Artistic Works" to include all works in the
field of literature, science and art, any expression or form,
such as books, booklets and other writings, lectures,
speeches, sermons and other works of the same kind;
dramatic or musical works, animated and pantomime
works, musical pieces with or without lyrics,
cinematographic works in which similar works are
represented by a similar procedure cinematographic works,
graphic works, painting, architecture, sculpture, engraving,
lithograph; photographic works in which similar works are
represented by a process analogous to that of photography;
works of applied art, illustrations, maps, plans, sketches
and other three-dimensional representations of space
related to geography, topography, architecture or science.
In addition to original works, works created that are based
on existing works are also protected. Such works are
collectively referred to as derivative works.
Types of works protected by copyright are listed in
Clause 1, Article 14 of the Intellectual Property Law. These
types of works can be divided into three groups: literary
works, artistic works and scientific works. However, this

30
division is only relative because a work can be both a
literary work and a scientific work (for example, "Ai and
Ky in the land of invisible numbers" by Ngo Bao Chau and
Nguyen Phuong Van), sometimes it is both a work of art
and a work of science (for example, a film exploring
science). In addition, the boundary between literary, artistic
and scientific works is not really clear. For example, is a
book on photographic techniques a work of literature or a
work of art? In the copyright dispute over the "Project to
invest in the construction and organization of a food night
market around Ben Thanh Market", the Court determined
that this project is a type of work protected by copyright. .
However, the Court did not specify what type of work this
is because this work is both scientific and technical but also
carries the aesthetic values of a work of art. In fact, the
important issue is to determine that this subject of dispute
is a creative work of the author and has been fixed in a
material form to answer the question of whether that object
is protected by copyright. author or not. As for determining
what type of work this is, scientific or artistic, does not

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mean much and does not affect the protection standard of
the work.
The protected subjects of related rights are specified
in Article 17 of the Intellectual Property Law, including:
Performances; Sound recordings, video recordings;
Broadcasts and program-carrying satellite signals are
encrypted. ϖFirst : Performance A performance is
protected if it falls into one of the following cases:
- Performances performed by Vietnamese citizens in
Vietnam or abroad;
- Performances performed by foreigners in Vietnam;
- Performances fixed on phonograms or video
recordings are protected according to the provisions of
Article 30. Performances that have not been fixed on
phonograms or video recordings that have been broadcast
are protected according to the provisions of Articles of this
Law. thirty first;
- Performances are protected under international
treaties to which Vietnam is a signatory. Monday : Sound
recording, video recording Sound recordings and video

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recordings are protected if they fall into one of the
following cases:
- Phonograms and video recordings of Vietnamese
phonogram or video recording producers;
- Phonograms and video recordings of producers of
phonograms and video recordings are protected under
international treaties to which Vietnam is a contracting
party.
- Broadcast program, encrypted program-carrying
satellite signal Encrypted program-carrying satellite signals
and broadcasts are protected if they fall into one of the
following cases:
- Broadcasts, satellite signals carrying encrypted
programs of broadcasting organizations having Vietnamese
nationality;
- Broadcasting programs, encrypted program-
carrying satellite signals of broadcasting organizations are
protected under international treaties to which Vietnam is a
contracting party.
2.4. CONTENTS

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 Authors and copyright holders are entitled to
copyright protection, including two groups of rights: moral
rights and property rights.
Moral rights include the rights specified in Article
19 of the IP Law, including moral rights not attached to
property and moral rights attached to property.
a/ Moral rights not attached to property
Moral rights without property are specified in Clauses 1, 2
and 4, Article 19 of the IP Law, including the following
rights: First: The right to name the work Authors have the
right to name their own works. If we compare the work to
the "brain child" of the author, this moral right is similar to
the right to name a child of a parent. Therefore, it can be
said that the right to name a work is an important personal
right of the author. The author has the right to transfer the
right to use the right to name the work to the organization
or individual receiving the transfer of property rights
specified in Clause 1, Article 20 of the Intellectual Property
Law.
This is a new regulation supplemented by the Law
on Amendments and Supplements to a Number of Articles

34
of the IP Law 2022 to allow authors, copyright holders,
organizations and individuals receiving copyright transfer
can agree to written agreement on the naming of the work.
Second: The right to put your real name or a pseudonym on
the work; be given a real name or a pseudonym when the
work is published, using The author has the right to use his
real name or use a pseudonym on the work, even to remain
anonymous. In fact, it's very common for authors to have
the same name. In order to protect their moral rights and
avoid misunderstandings, some authors have changed
themselves to a different pseudonym.
The right to protect the integrity of the work from
being misrepresented by others; not allow others to modify
or mutilate the work in any way that is detrimental to the
honor and reputation of the author. The modification and
mutilation of the work without the consent of the author as
well as the act of distorting the work is an infringement on
the integrity of the work and the moral rights of the author.
The right to protect the integrity of the work serves two
main purposes: first, to respect and protect the author's

35
"personal imprint" expressed in the work; second, to bring
to the public the work exactly as it is.
b/ Moral rights attached to property Moral rights
attached to property are specified in Clause 3, Article 19 of
the Intellectual Property Law: Publish works or allow
others to publish works. Publication of a work is the release
of a work to the public in a sufficient number of copies to
satisfy reasonable public demand. This distribution,
depending on the nature of the work, is made by the author
or copyright holder or by another individual or organization
with the consent of the author or copyright holder.
Publication of a work does not include the performance of
a theatrical, cinematographic or musical work; read in
public a literary work; broadcasting literary and artistic
works; Building works from architectural works. Unlike
the remaining moral rights, which are protected
indefinitely, the right to publish a work or to allow others
to publish a work is protected for a certain period of time.
Property rights
The property rights listed in Article 20 of the IP Law
are those for the purpose of exploiting the work of the

36
copyright owner. The rights holder may exercise these
rights directly or transfer them to others in exchange for a
commensurate compensation.
These property rights are characterized by
exclusivity, transience and transferability. Property rights
in copyright include:
- The right to make derivative works;
- The right to perform the work in public;
- The right to copy the work;
- The right to distribute, import for distribution of
the original or a copy of the work;
- The right to broadcast and communicate the work
to the public by wireline, radio, electronic information
network or any other technical means;
- The right to lease originals or copies of
cinematographic works and computer programs.
2.5. REGISTRATION OF COPYRIGHT, RELATED
RIGHTS
2.5.1. The concept of copyright and related rights
registration

37
 Copyright arises automatically from the time the
work is created and expressed in a certain material form,
regardless of whether it is registered or unregistered.
Related rights arise from when encrypted performances,
phonograms, video recordings, broadcasts, program-
carrying satellite signals are fixed or performed without
prejudice to copyright. Thus, registration of copyright and
related rights is not a mandatory procedure and is not the
basis for the arising of rights. However, the registration will
create favorable conditions for copyright holders and
related rights holders when disputes arise. Organizations
and individuals that have been granted copyright or related
rights registration certificates are not obliged to prove their
copyright or related rights in the event of a dispute, unless
there is a dispute. evidence to the contrary (Clause 3,
Article 49 of the IP Law). According to Clause 1, Article
49 of the Intellectual Property Law, registration of
copyright and related rights means that an author, copyright
holder or related right holder submits a dossier to a
competent state agency for recording. receive information
about authors, works, copyright holders, related rights

38
holders. When performing the registration, the right holder
is granted a certificate of registration of copyright, a
certificate of registration of related rights. This is very
beneficial for the author and the right holder in the event of
a dispute because the right holder is exempt from the
burden of proving in court about his copyright and related
rights and the registration certificate is granted. considered
as important evidence confirming the authorship, the owner
of the copyright in the work, the owner of the related rights
to the performance, phonogram, video recording or
broadcast. In addition, the registration of copyright and
related rights will make it more convenient for the right
holder to use, exploit, transfer the right to use, and transfer
the work and related right object. For example, when
exploiting and using works, conducting transactions related
to copyright, exploiters often require copyright owners to
provide proof that the copyright belongs to them. The most
valuable evidence in this case is the written record of the
competent state agency.
2.5.2. Procedures for registration of copyright and
related rights

39
 Procedures for registration of copyright and related
rights are guided in Chapter V of the IP Law (from Article
49 to Article 55). Dossier for registration of copyright and
related rights includes the following papers:
(1) Declaration for registration of copyright and
related rights in Vietnamese and according to the form. The
declaration must contain sufficient information about the
applicant, the author, the copyright owner or the related
rights holder; completion time; summary of the work,
performance, phonogram, video recording or broadcast; the
name of the author, the copyright holder, the work used as
a derivative work if the registered work is a derivative
work; time, place and form of publication; information on
re-issuance, renewal (if any), commitment of responsibility
for the information stated in the declaration;
(2) Two copies of a copyrighted work or two copies
of a related right profiling object. For works with particular
characteristics such as statues, monuments, reliefs,
monumental paintings associated with architectural works,
works that are too large or bulky, they shall be replaced
with three-dimensional photographs;

40
 (3) Power of attorney, if the applicant is an
authorized person;
(4) Documents proving that the owner of the right is
self-created or tasked to create, enters into a creative
contract, inherits or is assigned the right;
(5) Written consent of co-authors, if the work has
co-authors;
(6) Written consent of the co-owners, if the
copyright or related rights are jointly owned. To register
copyright and related rights, the applicant can submit the
application directly or by post to the Office of Copyright in
Hanoi or the Representative Office of the Copyright Office.
in Ho Chi Minh City and Da Nang City. Fees for
registration of copyright and related rights are specified in
Circular No. 211/2016/TT-BTC of the Ministry of Finance.
This fee ranges from 100,000 VND to 600,000 VND
depending on the type of work, each type of object of
related rights. For example, the cost for copyright
registration for textbooks and textbooks is 100,000 VND;
for cinematographic works is 500,000 VND; for computer
programs is 600,000 VND. The registration fee for sound

41
recordings is 200,000 VND, video recordings are 300,000
VND and broadcasts are 500,000 VND. Within 15 working
days from the date of receipt of a valid dossier, the
Copyright Office is responsible for granting a certificate of
copyright registration, a certificate of registration of related
rights to the applicant. In case of refusal, the Copyright
Office must notify in writing and clearly state the reasons
therefor to the applicant.
2.6. TERM OF COPYRIGHT AND RELATED
RIGHTS
2.6.1. Term of copyright protection
The term of copyright protection is specified in
Article 27 of the Intellectual Property Law. Moral rights not
attached to property (clauses 1, 2, 4, Article 19 of the
Intellectual Property Law) are protected indefinitely. Moral
rights attached to property (Clause 3, Article 19 of the
Intellectual Property Law) and property rights (Article 20
of the Intellectual Property Law) are protected for a certain
period of time. The specific term of protection depends on
the type of work. Works at the end of this term of protection
belong to the public. All organizations and individuals have

42
the right to use the work but must respect the personal rights
of the author. Specifically, the term of copyright protection
for moral rights attached to property and property rights is
as follows:
- Cinematographic works, photographic works,
applied arts, anonymous works have a term of protection of
75 years from the time the work is first published. If the
above works have not been published within 25 years from
the date of fixation, the term of protection is 100 years from
the date of fixation.
- Other works have a term of protection for the entire
life of the author and for 50 years following the year of the
author's death. For works with co-authors, the term of
protection ends in the 50th year after the year the last co-
author dies. A long term of protection is beneficial to the
copyright holder, but at the same time becomes a barrier to
the public's access to the work and, more deeply, affects the
development of culture, education.
On the contrary, a too short term of protection is
detrimental to the copyright holder, not enough to
adequately compensate for the efforts and expenses that the

43
author and the copyright owner has spent as well as not
encourage creativity. Therefore, the regulation of a
reasonable protection term, neither too long nor too short,
is meant to balance the interests of the copyright holder and
the interests of the community and society.
2.6.2. Term of related rights
According to Article 34 of the Intellectual Property
Law, the term of protection of related rights is prescribed
as follows:
- For performers: 50 years from the year following
the year the performance is fixed.
- For producers of phonograms and video
recordings: 50 years from the year following the year of
publication or 50 years from the year following the year of
fixed phonograms or video recordings if the phonograms or
video recordings have not been fixed yet.
- For broadcasting organizations: 50 years from the
year following the year the broadcast program is made. The
Rome Convention of 1961 provides for a minimum term of
protection for related rights only 20 years from the end of
the year in which: Fixation of phonograms is made (for

44
phonograms and for with the performances shaped therein);
Performances conducted (for performances not fixed in
sound recordings); The broadcast is done.
2.7. EXCEPTIONS AND LIMITATIONS OF
COPYRIGHT AND RELATED RIGHTS
2.7.1. Exceptions and limitations of copyright
The copyright owner has the exclusive right to
exercise his own rights or permit others to exercise his or
her property rights in the work. Yet these monopolies have
the potential to prevent the general public from accessing
literary, artistic and scientific values. Therefore, in order to
harmonize the interests of the copyright holder and the
public interest, the law provides for cases in which others
can use the published work without asking for permission,
without paying royalties (referred to as rights exceptions)
and cases where others may use a published work without
obtaining permission but paying royalties (referred to as
limited rights cases). The use of the work in these cases
must not conflict with the normal exploitation of the work
and not unreasonably damage the legitimate interests of the
author or the copyright owner. Regulations on exceptions

45
and limitations of copyright in particular and IP rights in
general is one of the most important contents of the
principle of balancing interests between the holders of
intellectual property rights and the interests of society.
society - fundamental and important principle of all
intellectual property legal systems.
The use cases of published works without
permission and without paying royalties are specified in
Articles 25 and 25a of the Intellectual Property Law.
Cases of using published works that do not require
permission but must pay royalties are specified in Article
26 of the Intellectual Property Law. Specifically,
broadcasting organizations use published works, works that
have been allowed by the copyright owner to be fixed on
phonograms and video recordings published for
commercial purposes to broadcast even with sponsorship.
or without sponsorship, with or without advertising, with or
without payment of any kind, permission is not required,
but royalties must be paid to the copyright owner from the
date of publication.
2.7.2. Exceptions and limitations of related rigths

46
 Similar to copyright, related rights also have the
exceptions and limitations noted in Articles 32 and 33 of
the IP Law, including:
(i) Exceptions that do not infringe related rights
(use cases of related rights subject matter do
not require permission, do not pay royalties);
(ii) Cases of limitation of related rights (use cases
of related rights subject which do not require
permission but must pay royalties).
The provisions of Vietnamese law on exceptions
and limitations of related rights must be compatible with
the provisions of international treaties such as Articles
18.65, 18.66 CPTPP Agreement, Article 12.14 EVFTA
Agreement, Article 13 TRIPS Agreement , Article 16 of the
WPPT Treaty and Article 15 of the Rome Convention.
- Recording, live video recording of part of the
performance for teaching purposes, not for commercial
purposes or for news reporting;
- Self-reproduce or assist people with disabilities to
copy part of performances, phonograms, video recordings

47
and broadcasts for scientific research, personal study and
non-commercial purposes;
- Reasonable reproduction of a part of a
performance, phonogram, video recording or broadcast for
personal teaching and non-commercial purposes, except in
the case of a performance, phonogram, recording picture,
this broadcast has been published for teaching;
- Reasonable quotations for news reporting
purposes;
- Broadcasting organizations themselves make
temporary copies for broadcasting when they enjoy
broadcasting rights.
In general, these are use cases for personal learning,
research, teaching or news purposes and are non-
commercial. Such use must also not conflict with normal
exploitation of performances, phonograms, video
recordings or broadcasts, and shall not unreasonably
damage the legitimate interests of the performers,
producers of phonograms, video recorders, broadcasting
organizations.

48
 Similar to the case of using published works without
asking for permission but having to pay money in the
provisions of copyright, Article 33 of the Intellectual
Property Law provides for cases of using published
phonograms and video recordings that are not obtain
permission but must pay royalties (referred to as limitations
of related rights). Specifically, organizations and
individuals use published phonograms and video
recordings for commercial purposes to broadcast, with or
without sponsorship, with advertising or without
advertising, or with money collection. or do not collect
money in any form, they do not have to ask for permission
but must pay royalties to performers, producers of
phonograms, video recordings and broadcasting
organizations from the time of use.

49
 CHAPTER 3: PATENT
3.1. DEFINITION AND CONDITIONS OF PATENT
PROTECTION
3.1.1. History of the development of law of patent
Patents are one of the earliest objects of IPR
protection and an object that plays a particularly important
role in the development of society. The forerunner of patent
protection has been recognized since about the fourteenth
century when there were "perks" granted to inventors by
the king to encourage the creation of new products1. The
world's first patent law was enacted in 1474, in Venice
(Venetian Patent Statute). This law gives inventors a 10-
year period of exclusive rights to make their own new
devices and provides sanctions for the use of such devices
without the permission of the patent owner as well as
sanctions for other acts of patent infringement.2 However,

1
W.H.Price (1906), English Patents of Monopoly, Boston: Houghton
Milffin; M. Frumkin (1945), “The origin of patent”, Journal of the patent
office society, vol 27(1945), p. 143 (quoted by Fritz Macklup (1958), An
economics review of the patent system, US Government printing Office -
Washington).
2
Ikechi Mgbeoji (2003), “The Juridical origins of the International Patent
System Towards a historiography of the Role of Patents in industrialization”,
Journal of the History of International Law, Volume 5, Issue 2, p. 413.

50
the law that has had a strong influence on the modern patent
system and is the "template" for patent law in many
countries is the UK exclusive Law, enacted in 1623.3 This
law recognized the exclusivity aspect of patents when
stipulating that all forms of monopoly in trade were
eliminated except for the monopoly on patents. The above
regulation is built on the basis of recognition of exclusive
rights to patents, allowing inventors to be required to grant
patents for their patents. In addition to the UK's exclusive
law, the approaches to the nature of inventors' rights to
patents in the formulation of patent law in the United States,
France and Austria also have a significant influence on the
law on National patents subsequently issued. In the United
States, the Constitution of 1787 gave the United States
Congress the power to promote creative activity by
granting authors and inventors exclusive rights for a certain
period of time. On the basis of the powers provided for by
the Constitution, in 1790, the United States Congress
enacted the first Patent Act. This law is built on the basis of

3
Fritz Macklup (1958), An economics review of the patent system, US
Government printing Office - Washington, p. 3.

51
recognizing "legal" rights to inventions without mentioning
the property rights of inventions. In France, the Patent Law
was enacted in 1791, affirming the rights of inventors to
their creations as property rights, based on "human rights".
In Austria, the Patent Law was enacted in 1810, stating that
inventors do not have property rights to inventions as a
natural human right, but that the state reserves these
privileges for them to limit " imitate” the inventor’s idea for
the common good of the community.4
Different approaches from the legal philosophical
basis on the nature of the inventor's rights have influenced
the patent laws of a variety of countries that were enacted
later, in particular the Massachusetts Patent Law was
enacted. 1641, South Carolina: 1691. Russian Patent Law
enacted in 1812; Prussia: 1815, Belgium and the
Netherlands: 1817; Spain: 1820, Bavaria: 1825; Sardinia:
1826; Sweden: 1834; Portugal: 1837; Italy: 1859; Japan:
1872, Germany: 1877, Switzerland: 1887…5

4
Fritz Macklup, p. 3.
5
Fritz Macklup, p. 3-5.

52
 From different approaches to the formulation of
patent law come different views in favor of patent
protection, of which there are four basic views.
The first view - the "Natural Law" view, according
to which people have natural property rights over their
creations. Appropriating other people's ideas without their
consent should be considered an act of "stealing". Society
has a responsibility to recognize and protect this property
right. Therefore, protecting patents is the best way for
society to recognize these property rights. This view is built
on George Hegel's theory of human creative freedom.
The second view - the reward perspective holds that
people should receive a reward commensurate with useful
service to society. The best way to ensure a fair reward for
inventors is to give them temporary monopolies in the form
of legal exclusivity over their invention. This view is built
on John Locke's theory of labor value, according to which
property is the achievement of someone's labor, that person
will be the owner and have full rights over his property as
the right to give, donate or sell properties. Intellectual
property created from the process of brain work is no

53
exception to this general principle. Classical British
economists have accepted the traditional view that a
monopoly is "bad for society," but that a temporary
monopoly granted to an inventor is a very good way to
reward costs and benefits. inventor's risk.6 The economist
Jeremy Bentham compares material rewards with those of
patent "privileges" arguing that the "privilege" of invention
is the "most commensurate, most natural, least
troublesome" reward, and " efficient, cost-effective”.7
The third view - the incentive view holds that
industrial development is important for the development of
society and that invention and industrial exploitation of
inventions are important for the development of society
industrial development. However, if an inventor or investor
in innovation only expects to profit from the exploitation of
the invention as a competitive exploitation of technological
knowledge, it may not encourage the innovation of patent
and exploit it to the fullest extent. Therefore, it is necessary

6
Adam Smith (1776), An inquiry into the nature and causes of the wealth of
nation, book V, Chapter 1 (quoted by Fritz Macklup, note (163)).
7
Jeremy Bentham, “A Manual of political economy”, The Works of Jeremy
Bentham, vol III, John Browing, 1948, p. 71 (quoted by Fritz Machlup, note
(163), p. 71).

54
to show inventors and investors that they will be rewarded
for the effort, time and financial costs of creating an
invention by increasing the possibility of profit for them.
The best, simplest and cheapest way is to give inventors
temporary monopolies in the form of patents. This third
view, not much different from the second, sees the purpose
of patent protection as a reward given to the inventor so that
he or she can profit from the exploitation of the invention.
That encourages creativity.
The fourth view, the disclosure view, holds that
patent protection is really an "exchange of secrets" or an
exchange of information disclosure between society and
inventors. If the inventors and/or investors do not expose
their creations, the industry will not flourish, technological
secrets may be lost when these people die and future
generations do not have access. with these creations. The
best way for inventors to expose their inventions is to give
inventors patent rights in return for their invention
disclosure.
Fritz Machlup was the first to collect and
systematically present the four views mentioned above in

55
1958. 8 These views are still widely accepted today. For
example, in the 2008 WIPO report on the international
system of patent protection, three economic reasons for
patent protection were cited, including: (i) encouraging
innovation; (ii) knowledge disclosure; (iii) technology
transfer, commercialization and knowledge diffusion.9
By the end of the 19th century, there were 45
10
countries promulgating patent laws and now most
countries have legal provisions on patent protection 11 ,
including countries protected by a separate patent law
(Patent Law) and countries protected by intellectual
property (Intellectual Property Law). In Vietnam, the first
document providing for patent protection is the Charter on
Technical Improvement Initiatives - Production
Rationalization and Patents issued together with Decree No.

8
Fritz Macklup, note (163), p. 24-25.
9
WIPO (2010), Exceptions and limitations to patent right, Proposal from
Brazil, Metting document of Standing committee on the law of patent: 14th
session from 25 January to 29 January 2010, para 28.
10
Le Xuan Thao (2005), Renovating and perfecting the law on IP, Justice
Publisher, p. 32.
11
On the website of the World Intellectual Property Organization (WIPO)
there is information on the patent laws of more than 100 countries around the
world. Details of national patent laws can be found at www.wipo.int.

56
31-CP dated January 23, 2013. 1981 of the Council of
Government. In 1989, Vietnam promulgated the Ordinance
No. 13-LCT/HDNN on the protection of industrial property
rights 12 , which specifically stipulates the concept of
invention, the conditions for invention protection, and the
duration of invention protection. The remarkable
development of Vietnam's patent law was marked by the
promulgation of the Vietnam Civil Code in 1995, which
specifically contains the sixth part regulating IPR rights.
Currently, in Vietnam, inventions are protected under the
Intellectual Property Law and guiding documents on the
implementation of the Intellectual Property Law.
3.1.2. Definition of Patent
Although the laws of most countries around the
world now have provisions for patent protection, only few
legal systems provide a definition of an invention. National
laws and even international treaties often provide for
protected types of inventions (e.g., Article 101 of the US
Patent Law) or list objects that are not patentable (eg.

12
Ordinance No. 13-LCT/HDNN on the protection of industrial property
rights dated 11/2/1989.

57
Article 52.2 of the European Patent Convention13, Article
27 of the TRIPS Agreement14). Only a small number of
countries have legislation that provides for the concept of a
patent, and there are generally two approaches to the
concept of a patent. In the first approach, the concept of
invention is given based on the technical nature of the
invention or on the way in which the invention is created.
For example, according to Japanese Patent Law, an
invention is the creation of a highly advanced technical idea
using the laws of nature.15 Accordingly, the definition of
invention is given based on the way the invention is created.
The second approach is to introduce the definition of
invention based on the protection standard. For example,
Vietnamese law before 2005 introduced the definition of
invention based on the standard of patent protection. Or
according to the encyclopedia, "Invention is a technical

13
See the European Community Patent Convention of 5 October 1973,
available at http://www.epo.org/patents/law/legal-
texts/html/epc/1973/e/ar52.html , access date: 28/12/2010.
14
TRIPS Agreement - Agreement on trade-related aspects of intellectual
property rights was signed on 15/4/1994.
15
Article 2 Japanese Patent Law.

58
solution that is new in terms of technical principle,
creativity and applicability".16
In Vietnam before the IP Law was promulgated, the
definition of invention was introduced according to patent
protection standards. Specifically, Article 4 of the
Ordinance on Protection of Industrial Property Rights 1989
stipulates: “Inventions are technical solutions that are new
compared to technical levels in the world, are innovative,
and are applicable in various fields. socio-economic sector”.
Inheriting the above approach, Article 782 of the 1995 Civil
Code stipulates: "An invention is a technical solution with
novelty, creativity and applicability in socio-economic
fields". The above provisions do not clarify the technical
nature of the invention while “the fundamental attribute of
an invention is a technical characteristic because the
invention is a technical solution, i.e. a technical means to
solve a problem"17. On November 29, 2005, the Law on
Intellectual Property of Vietnam was promulgated. Article
4 of the Intellectual Property Law stipulates: “An invention

16
wikipedia.org/wiki/sang_che, assess date 13/11/2009.
17
NOIP, Patent Information, accessed at www.noip.gov.vn, access date:
05/12/2009.

59
means a technical solution in form of a product or process
which is intended to solve a problem by application of laws
of nature”. Compared with previous legal documents, the
IP Law has taken a different approach to inventions,
approaching from the technical nature of inventions.
From the definition of invention given in Article 4
of the Law on Intellectual Property of Vietnam, it can be
seen that the essence of an invention is a technical solution.
An invention must first be a technical solution, that is, a
technical measure aimed at solving a definite problem.
Technical solution - an object protected as an invention is
a necessary and sufficient set of information about a
technical method and/or technical means to solve a
specified task. Technical solutions can be in the form of
products or processes but are man-made rather than those
that already exist in nature and are discovered by man.
Technical solutions may fall into one of the following
forms:
(i) Products. Patented products can be in the form of
objects (tools, machines, equipment, components,
electrical circuits, etc.) represented by a set of information

60
identifying a man-made product, characterized by signs
(features) of texture, the product has a function (use) as a
means to meet a certain human need. Products can be in
physical form (materials, substances, foodstuffs,
pharmaceuticals...) represented by a set of information
identifying an artificial product characterized by signs
(characteristics) about the presence, proportion and state of
elements, which function (use) as a means to satisfy a
certain human need. Products in the form of biological
materials such as genes, genetically modified
plants/animals, etc., are represented by a collection of
information about a product containing genetic information
that has been altered under human influence, capable of
self-regeneration.
(ii) Process (technological process; forecasting,
checking, processing...) is represented by a set of
information that defines how to carry out a particular
process or job, characterized by signs (characteristics) of
the order, conditions, participants, methods and means of
performing operations to achieve a certain goal.

61
 Not considered as a technical solution in the
following cases: (i) The object of the protection claim is
just an idea or an intention, only stating the problem but not
the solution to the problem, failing to answer the question
asking “how” or/and “by what means”; (ii) The problem
(task) to be solved is not a technical problem and cannot be
solved by technical means; (iii) Natural products, not man-
made creations18.
Patents in particular and IP rights in general play an
important role in the development of science, technology,
economic and social development. Both classical and
modern economists agree that economic growth is driven
by two main sources, the first is capital and labor, and the
second is technology, which includes intellectual

18
Circular No. 01/2007/TT-BKHCN dated February 14, 2007 of the Ministry
of Science and Technology guiding the implementation of Decree No.
103/2006/ND-CP of the Government detailing and guiding the
implementation of a number of articles of the IP Law on industrial property,
as amended by Circulars No. 13/2010/TT-BKHCN dated July 30, 2010,
Circular No. 18/2011/TT-BKHCN dated July 22, 2011, Circular No.
05/2013/TT-BKHCN dated February 20, 2013 and Circular No. 16/2016/TT-
BKHCN dated June 30, 2016 (hereinafter referred to as Circular 01/2007/TT-
BKHCN).

62
property.19 The importance of these two resources changes
over time. “Tangible assets such as land, labor and capital
used to be the benchmark against which economic status
was measured, that is no longer the case. The new driver of
prosperity in contemporary society is knowledge-based
20
wealth.” In intellectual property, patents play a
particularly important role. For enterprises, inventions are
assets of great commercial value. Businesses can enhance
their assets and competitiveness through patenting,
including licensing, business partnerships, joint ventures
and other lucrative transactions. For the country, one of the
leading criteria to assess the potential for scientific,
technological development and economic development of
a country today is based on the number of patent
applications and the number of patents. issued to citizens or
organizations of that country. Patents are a determining
factor in the scientific and technological potential of a

19
See: Mayer Mayer JÖrg, “Technology Diffusion, Human Capital and
Economic Growth”, United Nations Conference on Trade and Development,
No. 154, June 2001, <http://www.unctad.org/en/docs/dp_154.en.pdf>;
Factor Contributions to East Asian Economic Growth,
http://www.galbithink.org/topics/ea/account.html, accessed date: 30/6/2022.
20
Idris (2009), IP - An effective tool for economic development, WIPO, p. 54
(Vietnamese version).

63
country and one of the factors determining the
competitiveness of the economy. Patents are also an
important factor promoting the increase in living standards
and other socio-economic conditions of people in society.
3.1.3. Distinguish patents and utility solutions, patents
and inventions, patents and innovations
3.1.3.1. Distinguish patents and utility solutions
Under the laws of some countries, a technical
solution may be protected a patent or utility solution. In
Vietnam, the concept of a utility solutions was first
specified in Article 4(2) of the Ordinance on Protection of
Industrial Property, whereby “a utility solution is a new
technical solution compared to the technical level in
Vietnam. Vietnam, has the ability to practically apply in
socio-economic fields”. According to the above provisions,
the conditions for protection of utility solutions are very
simple, as long as a new technical solution in Vietnam can
be applied in practice, it can be protected by law. Then,
Article 783 of the Civil Code of 1995 stipulates that "A
utility solution is a technical solution that is new compared
to the technical level in the world and is applicable in socio-

64
economic fields". The above regulation has set higher
requirements than the Industrial Property Protection
Ordinance 1989 when it stipulates that utility solutions can
only be protected if they are new compared to the technical
level in the world. However, in the above two legal
documents, a utility solution is defined as a technical
solution with novelty and applicability and is protected in
Vietnam as an independent object of IP rights.
In the world, not many countries protect utility
solutions and the form of protection is not exactly the same.
Some countries such as Australia, France, China, Thailand,
Malaysia... protect "petty patents" (the definition of small
invention is understood similarly to the definition of utility
solution in Vietnamese Law) and protected under the Patent
Law. Some countries such as Japan, Korea, Germany, Italy,
Spain, Portugal, Brazil, Mexico, Russia, Bulgaria, Czech,
Philippines, Malaysia, Indonesia, ... protect "utility model”
(same as petty patent) and protected by a separate statute.
The biggest difference between petty patent/utility solution
and utility model is that the object of utility solution is
identical with the object of the patent- technical solutions

65
and the object of utility model is only structure (excluding
other types of technical solutions such as processes and
substances). Some other countries such as the United States,
Canada… do not protect utility models/petty inventions.
The protection of utility solutions is important in
encouraging innovation in developing and underdeveloped
countries. In these countries, the level of technology is still
low, so the protected patents are mostly patents of citizens
and legal entities of developed countries. 21 In addition,
utility solution protection will encourage creativity and

21
For example, in 2006, the number of patent applications was 1.76 million
and 727,000 patents were granted worldwide, of which, Patents or patents
have been granted to applicants from Japan, the United States and four
member countries of the European Union, Germany, France, the United
Kingdom, and the Netherlands, accounting for over 65% of the number of
applications. apply for patents respectively 29.1%, 22.1%, 7.4%, 2.5%, 2.3%,
1.6% respectively; degree holders from these countries at 29.9%, 21.3%,
7.7%, 3.5%, 1.8% and 1.4% respectively (Source: WIPO (2008), “World
Patent Report”, A Satictiscal Revie, p18, p24). In Vietnam, out of the total
number of applications for invention/utility solution patents filed with the
NOIP and the number of granted patents/utility solution patents, the number
of applications and the number of protection certificates of citizens,
Vietnamese organizations account for a very modest number. In 2009, the
number of patent applications filed by Vietnamese people was 258 out of a
total of 2890 applications filed with the National Office of Intellectual
Property of Vietnam, the number of protection titles granted to Vietnamese
people was 29 out of the total 677. The number of Vietnamese utility solution
patent applications is 133 out of 253 applications filed with the NOIP, the
number of utility solution patents granted is 45 out of 67 titles granted
(Source: NOIP, updated on April 16, 2011).

66
investment to develop and protect innovative results that do
not meet patent protection requirements because utility
solution protection supports for the patent system to protect
small technical solutions that are the result of creative
activities but do not fully meet the standards of patent
protection. Therefore, the utility solution brings important
benefits to small and medium enterprises and can promote
technology development in developing countries like
Vietnam.
Utility solution protection differs from patent
protection in the following aspects:
First, the criteria for novelty of utility solutions may
be lower than for novelty of patents because some countries
require technical solutions that only need to be novel within
the national territory to be eligible for protection in the
name of a utility solution22. However, in Vietnam, the law
requires that ipatents and utility solutions must be new
compared to the technical level in the world.

22
Patents and utility solutions – training course material for IPR trainers
provided by the ECAPII program.

67
 Second, the requirement for inventiveness is lower
than for patent. For example, Vietnamese law requires that
a technical solution only needs to be novel, industrially
applicable, and not common knowledge to be granted a
patent for a utility solution.
Third, the utility solution term is shorter than the
patent term. For example, under Vietnamese law, utility
solution patents are only valid for 10 years from the filing
date.
Fourth, the object of utility solution protection may
be narrower than that of an invention. “In general,
processes are not protected in the name of utility solutions”.
Besides the differences, patent protection and utility
solutions have many similarities. In essence, patents and
utility solutions are technical solutions and must meet the
requirements of novelty and industrial applicability. The
procedure for establishing rights to patents and utility
solutions is basically the same. The rights that the patent
owner and the utility solution owner are provided by law
are similar. Therefore, according to the Vietnam
Intellectual Property Law and the guiding documents for

68
the implementation of the IP Law, the utility solution is no
longer protected by the law as a separate object but is
regulated together with the patent as a special form of
patents. Article 58(2) of the Intellectual Property Law
stipulates: “Unless it is a common knowlegde, an invention
shall be protected by mode of grant of utility solution patent
when it satistfies the following conditions: a) Being novel;
b) Being susceptible of industrial application”.
Thus, according to current Vietnamese law, a utility
solution is a special form of an patent with a lower level of
inventiveness than an invention and a shorter term of
protection. Therefore, in this Chapter, utility solutions will
not be studied as an independent object of IP rights.
3.1.3.2. Distinguish patent and invention
The laws of many countries around the world make
a clear distinction between patent and invention. Invention
is the discovery of a thing, phenomenon or law that already
exists in the natural world, not man-made. A patent is either
not available in nature but is created by man, or something
already exists in nature but is intentionally manipulated by
man to transform, perfect and create something that does

69
not exist, or the method of transforming the already
mentioned above. 23 However, the distinction between
patent and invention is not always clear-cut, furthermore
patents are likely to be granted from inventions when
incorporated into technical application. For example,
finding a relationship between the structure and location of
DNA can be considered an invention when it is applied to
genetic engineering. 24 Thus, inventions do not directly
change nature, but from inventions, a series of patents can
be born and that is what changes the world.25
3.1.3.3. Distinguish patents and innovations
An iinnovation is a technical solution or a new
production organization solution that is used and brings
socio-economic benefits.
In Vietnam, according to the provisions of Article 3
of the Initiative's Charter issued together with Decree No.

23
Japan Patent Office – Asia-Pacific Industrial Property Center, Patent
Protection - Entrepreneur's Manual, National Office of Intellectual Property
Translation, p.15.
24
Patentss and utility solutions – training course material for IPR trainers
provided by the ECAPII program.
25
Japan Patent Office – Asia-Pacific Industrial Property Center, Patent
Protection - Entrepreneur's Manual, National Office of Intellectual Property
Translation, note (183) p.15.

70
13/2012/ND-CP dated March 2, 2012, an innovation is
defined as a technical solution, a management solution, or
a technical solution. solutions, operational solutions or
solutions for application of technical advances, shall be
recognized if the following conditions are met: (i) novelty
within the establishment; 26 (ii) applied or tested at the
establishment and brings practical benefits; (iii) not subject
to exclusion, including subjects being protected by IP rights,
solutions where the publication and application are
contrary to public order or social ethics.
Unlike patents and utility solutions, innovations are
not necessarily technical solutions. The criteria for
recognition as an innovation and the conditions for an
innovation to be protected by law are much simpler than
that of a patent and utility solution. Innovation does not
require creativity. The requirement for novelty for
innovations is much lower than for patents and utility
solutions. As long as the patent is new within an agency or

26
The basic concept in the initiative's charter is explained in Article 2 as
follows: "A body or organization established under the law can independently
participate in civil legal relations on its own behalf". This content is explained
in detail in Circular No. 18/2013/TT-BKHCN dated August 1, 2013 guiding
the implementation of a number of provisions of the Innovations Charter.

71
organization, it can be recognized as an innovation.
Therefore, a solution may be recognized as an innovation
by this agency or organization, but not by another agency
or organization, depending on the technical level of that
agency or organization. The industrial applicability
standard is not set out with the innovation, but the law only
requires the innovation to bring practical benefits
including: (i) economic efficiency such as improving labor
productivity , reduce production costs, improve technical
efficiency; (ii) bring social benefits such as improving
working safety conditions, improving living and working
conditions, protecting the environment, human health27....
The law only stipulates the general conditions for a solution
to be recognized as an innovation and the procedure for
recognizing the innovation. Therefore, the criteria for
recognition of the innovation are applied to a specific
agency or organization, and whether an innovation meets
the accreditation standards depends on the conditions of
that agency or organization. Therefore, an innovation that
is registered and recognized in one organization does not

27
Article 4, Clause 2 of the Innovation Charter.

72
mean that it meets the standards to be recognized in another
agency or organization. In addition, the innovation
recognition procedure is also very simple, reviewed and
decided by a specific agency or organization. In Vietnam,
the conditions for recognition of the initiative, the
procedures for recognition, and the rights and obligations
of the creator of the innovation and the investor creating the
initiative are specified in the Initiative Charter promulgated
together with the Decree No. 13/2012/ND-CP dated
2/3/2012. Thus, according to Vietnamese law, initiatives
are not subject to protection under IP law.
3.1.4. The definition of patent protection and the
meaning of patent protection
Patent protection is the state's recognition of a patent
as the object of ownership of a certain subject (individual,
organization), marked by the granting of a patent to the
owner of that invention. 28 A patent protection system
includes many factors such as policies, economic
conditions, technology, legal environment, system of IPR
enforcement agencies...

28
Japan Patent Office – Asia-Pacific Industrial Property Center, ref (...), p.15.

73
 Patent protection has specific characteristics. First,
in order to be protected by law, a technical solution must be
granted a protection title by the state. In other words, the
patent registration procedure is a mandatory procedure to
establish the right to an invention. 29 The state is only
obliged to protect patents that have been granted protection
titles. In order to be granted a protection title, a technical
solution must satisfy at least two conditions: one on
protection standards (patent standards) and not in cases not
protected by law. Second, the owner of an patent can only
exercise his rights within the scope (territory scope, scope
of rights expressed in the claim, term of protection) defined
in the protection title. Beyond that scope, anyone in society
has the right to exploit the invention without the permission
of the patent owner. Third, in the cases provided for by law,
the state has the right to prohibit or restrict the patent holder
from exercising his or her rights or compel the patent holder
to transfer the right to use the invention to other bodies.30

29
This issue will be analyzed in Section 3.2 of this article.
30
This issue will be analyzed in Section 3.4 of this article.

74
 Patent protection brings great benefits to inventors
and to the development of society, reflected in the
following aspects:
First, patent protection encourages research and
development (R&D) of new products and processes, which
in turn fosters innovation. One of the characteristics of
intellectual property is the long research time, high cost and
high economic risk because the possibility of being copied
and used by third parties is very high. By patent protection,
the patent owner is granted and protected by law the rights
to the patent, including the right to use, permit others to use
the patent; the right to prohibit others from using the ipatent
and the right to dispose of the patent for a certain period
(usually 20 years). These rights are legally recognized as
exclusive rights and provide the patent owner the
opportunity to obtain economic benefits by commercially
exploiting the patent and exploiting the market advantages
gained from a patent. Numerous studies have shown that
the selling price of an exclusive product is much higher

75
than that of a competitive product.31 Besides, depending on
the capacity and will of the owner, on the value of the patent,
commercial exploitation of the patent can be carried out by
the inventor himself or/and by another bodies whose
ownership or right to use the invention is transferred by the
patent owner. Profits from patent exploitation will be partly
invested in research and implementation to find new
inventions, promote the creative cycle, and drive the
development of society. Therefore, patent protection is
really the driving force for creativity as Abraham Lincoln
once said: "The patent system adds interest fuel to the fire
of genius".32
Second, patent protection encourages the disclosure
of new technology and the transfer and dissemination of

31
There are many studies on this issue, notably the following works: Colleen
Chien (2003), “Cheap drug at what price to innovation: does the compulsory
licensing of pharmaceuticals hurt innovation?”, Berkeley Technology Law
Journal, Vol. . 18, No. 3; Swedish National Trade Commission, Impact of
WTO Agreements on Developing Countries; Reiko Aoki, John Small,
Compusory licensing of techonology & the essential Facilities doctrine; Ellen
F.M.'t Hoen, The global politics of pharmaceutical monopoly power, 2009,
PDF, William Jack & Jean O.Lanjouw, Financing Phamarcuetical
Innovation: How much should poor countries contribute?, Sea Flynn, Aidan
Hollis, & Mike Palmedo, An economic justification for open access to
essential medicine patents in developing countries, 2008.
32
Kamil Idris, note (180), p. 78.

76
technology. All legal systems stipulate that in order to be
granted a patent for an invention, the patent application
must fully and clearly disclose the nature of the invention
to the extent that based on it, any person who has the
average knowledge of the respective technical field can
implement that solution, and at the same time, it is
necessary to clarify the novelty, level of creativity, and
industrial applicability of the technical solution.
Applications for patent protection within a certain period
prescribed by the law of each country 33 will be publicly
published by the national patent office in its publications.
If the application is filed under the Patent Cooperation
Treaty (PCT), the patent application is published in a WIPO
publication. This reflects one of the very specific purposes
of the patent system: technology disclosure. And this is
really the trade-off principle in patent protection. In order
to be granted exclusive rights to a patent and to be protected
by the state, the patent owner must make his invention

33
According to the provisions of Article 110 of the Law on Intellectual
Property of Vietnam, an patent registration application is published in the
19th month from the filing date or priority date or at an earlier time at the
request of the applicant..

77
public. Publication of the technical nature and patent
information is of particular importance to society.
Third, strong patent protection will encourage
investment in industries, especially industries with high
gray matter content such as computer industry,
pharmaceutical industry... There are many factors; however,
in industries where the risk of copying is high, investors
will only invest boldly if the exploitation of patents for
maximum profit is guaranteed. And this also affects foreign
direct investment decisions.
However, patent protection always has two sides:
positive and negative. Besides positive effects, patent
protection also has certain negative impacts on the
development of society, especially for developing and
underdeveloped countries because:
First, granting patent owners exclusive rights, even
temporarily, increases the cost of products manufactured
under the patent or process and increases the owner's
monopoly position as well as the possibility of monopoly
abuse from the patent holder. This will have a negative
impact on society. During the patent term, the absence of a

78
competitive product creates a monopoly position for the
patent holder to make the most of his monopoly. There are
many factors that affect the price of a product of which
competition is an important factor. Many studies have
analyzed the impact of patent protection on product prices
and have shown that monopoly and no competitive
products are the main reasons for high product prices. 34
Besides, the costs are not small for patent protection (costs
for establishing the right to the patent, for maintaining the
patent, for the actual exercise of the right...) will be added
to the product price, contributing to increase the product
price. 35 An increase in the price of goods, especially for
“public” goods, which are intended to meet basic human
needs such as medicines and food, will reduce access to

34
See footnote 35.
35
For example in the pharmaceutical sector, the case study of India applying
for a patent under its TRIPS commitments, focusing on 20 drugs, estimates
the prices of the products in the country could go from 0 to 64% at a cost of
about $33 million, equivalent to 3% of drug sales in India. The WHO report
also points out that: “In the United States when a patent expires, the wholesale
price of a drug drops to about 60% when only one competitor produces a
generic drug, down to 29 % when there are ten competitors”. UNCTAD also
emphasizes: “Current studies estimate that pharmaceutical patent protection
in low- and middle-income developing countries will increase drug prices by
12% to 200%, which in turn will affect drug prices. affect access to health in
these countries”.

79
products in low- and middle-income countries. Besides,
without proper control, the patent owner can abuse his
patent to limit the quantity of products put on the market or
dump the products. This affects the general welfare of
society.
Second, the protection of patent in a manner
inconsistent with economic and social development can
bring about negative economic and social impacts,
contributing to the widening gap in the level of industrial
development. Reality proves that, even in developed
countries where patents have been protected for hundreds
of years and are now protected at a very high level, patent
protection is only really promoted when that suits their
36
conditions both economically and institutionally.

36
Reality proves that, even in developed countries where inventions have
been protected for hundreds of years and are now protected at a very high
level, patent protection is only really promoted when that suits their
conditions both economically and institutionally. The experience of countries
such as Korea, Japan, and Taiwan shows that copying and applying foreign
technology in the early stages of development plays an important role in
technology development in other countries. This. Even for the United States,
“as a relatively young and developing country, the United States refused to
protect international intellectual property rights on the grounds that the
United States had the freedom to use patents abroad to promote the economic
and social development of the United States itself” (Source: Nguyen Thanh
Tu (2010), Competition Law, Technology Transfer and Experience TRIPS
Agreement for Vietnam, National Political Publishing House. , p. 33).

80
Currently, developing and underdeveloped countries have
to protect patents in particular and IPR in general under the
very high protection standards of the TRIPS Agreement.
This is not really suitable with the economic and social
conditions in these countries. Therefore, strong protection
of IPRs, especially patents and copyrights, will have certain
negative impacts on socio-economic development in these
countries. Furthermore, the majority of important patents
today belong to developed countries. 37 This leads to the
result that rich countries with financial and technological
potential and conditions to invest in research and
development of new products and technologies will have
more opportunities to profit from patents, than in
developing and underdeveloped countries.38 In that context,

37
Only the profits from the international transfer of the right to use IP objects
in 2004, the United States, the EU and Japan accounted for more than 90%
of the approximately $110 billion (Source: Tu Thanh Nguyen (2010),
Competition in Technology Trasfer under the TRIPS Agreement –
Implication for Developing Countries, Edward Elgar, p.3).
38
“World Bank research in 29 developed and developing countries indicates
that short-term implementation of the TRIPS Agreement will lead to financial
flows from technology use in developing and emerging countries. middle-
income countries will move to developed countries to export patent-protected
technology. Specifically, the countries enjoying the net profit are the United
States (+41 billion USD), Germany (+7 billion USD), Japan (+6 billion USD).
The countries that lost the most are South Korea (-15 billion USD), Greece

81
developing countries, including Vietnam, will have to
overcome many challenges in order to receive great
benefits from the patent protection system in which
reasonable IP policies, Technological breakthroughs play
an important role.
Third, the costs for the construction and operation
of the patent system, including from the development and
renewal of the patent law, the establishment and operation
of patent registration offices, patent protection agencies,
building human resources in this field… is quite large.
Between the years 1850-1873, the patent system was
criticized as costly and inefficient and this was one of the
reasons for the opposition to patent protection during this
time. Currently, the cost of the patent system is still

(-8 billion USD), China (-5 billion USD)." The Swedish National Trade
Commission also affirmed that countries in the high-income group will
benefit the most from the strong effects of IP protection. Meanwhile, these
effects are not large, even in some cases negative effects for low-income
countries because these countries lose revenues and reduce growth in other
countries. industries that profit from copying (Source: Swedish National
Trade Commission, Impact of WTO Agreements on Developing Countries,
pp. 203-204).

82
considered quite large.39 This can place a financial burden
on middle- and low-income countries.
3.1.5. Conditions of patent protection
3.1.5.1. Novelty of the Patent
One of the prerequisites for patent protection is that
the claimed technical solution must be novel. “Novelty is a
fundamental requirement in any substantive examination
and is an undisputed condition for considering
patentability.” 40 Therefore, the requirement of novelty as
an important condition for patent protection is enshrined in
international treaties 41 and in the patent laws of all
countries around the world.
In Vietnam, a technical solution is considered novel
if it does not fall into one of the following cases:

39
For example, “Chile's one-time cost to modernize IP infrastructure
(including patent protection) is $718,000 and an additional annual cost of
$837,000. Research conducted by the World Bank in 2002 examining the
experience of developing countries in this field shows that the modernization
of the IP system, including training costs, ranges from $1.5 to $2 million.
40
WIPO, Handbook of Intellectual Property, noted, p. 18.
41
For example, Article 27(1) of the TRIPS Agreement provides: “… A patent
must be granted for any invention, whether product or process, in any field
of technology, with provided that the invention must be new, inventive and
capable of industrial application”.

83
 a) Be publicly disclosed in the form of use, written
description or any other form in the country or abroad
before the filing date of the patent application or prior to
the priority date 42 in the case of the patent application
enjoys the principle of priority;
b) Disclosed in another patent application with an
earlier filing date or priority date but published on or after
the filing date or priority date of that patent application.43
The state of the art is generally understood to be the
sum total of information disclosed by any means that
existed prior to the filing of the patent application or prior
to the priority date of the patent application if any. However,
what information sources are considered to be constitutive
elements of the known state of technology, the extent of
information disclosure and the manner in which it is
disclosed are not uniformly regulated in countries around
the world. Most countries in the world, including Vietnam,

42
Priority date is a specific definition in industrial property law. According
to Vietnamese law, priority date is the date of filing the first application for
patent registration in a member country of the Paris Convention or another
international treaty to which Vietnam is a contracting party if the priority
right is accepted by the NOIP.
43
Article 60 IP Law.

84
require that the novelty of a patent be determined based on
the worldwide technical status, which means that
considering the technical status of the invention not only in
within the territory of the claimed country but also in the
world. However, other national legislation may provide for
consideration of the technical status of the invention only
within the territory of the country.
In Vietnam, the minimum sources of information
that are searched to determine the novelty of a technical
solution include:
(i) All patent applications that have been received by
NOIP have the same classification index as that of the
claimed object, taking into account the classification index
(third class index), and has a publication date earlier than
the filing date or priority date of the application being
examined;
(ii) Patent applications or patent protection titles
published by other organizations or countries, within 25
years before the filing date or priority date of the patent
application (if the application is priority right) are kept in

85
the patent database available at the NOIP and other
information sources prescribed by the NOIP.
In addition, the search can be extended to scientific
reports, reports on results of programs, research topics and
other documents in the same technical field published and
kept in National Science and Technology Information
Center. The form of public disclosure of sources of patent
information can be in writing (paper documents are printed
or typed, regardless of the language of expression, the
number of circulations such as patent documents, books
and scientific and technical documents…); the form of
speech (form of presentation, demonstration) or form of use
(for example, the manufacture, use, import, exchange,
exhibition..., which causes the technical solution to be
revealed to the whole society).
In order to assess the novelty of a technical solution
claiming patent protection/utility solution, it is necessary to
compare the basic signs (features) of that technical solution
with those of the solution. reference techniques found
during information retrieval; in which: (i) The basic sign of
a technical solution may be a feature of an object's structure

86
(details, clusters, links...) or the structure of a substance
(composition (present area, scale), state of elements...)
together with other basic signs form a necessary and
sufficient set to determine the nature (content) of the object.
The above-mentioned basic technical signs may be
expressed in terms of the technical function of an element
in the structure or composition of the product (functional
sign), provided that this expression is sufficient for the
expert. The average in the field can easily understand the
technical means or the technical way to perform that
function under normal conditions without creativity. The
functions and uses of the object of protection are not basic
technical signs, but may be the purposes and results
achieved by that object; (ii) The basic signs of the technical
solution stated in the application and in the protection titles
are shown in the scope (claim) for protection of the
invention; (iii) The basic signs of a technical solution
mentioned in other documents are shown and detected
according to the descriptive document or the actual
representation of that technical solution.

87
 Corresponding to a point of the scope of protection
(claim), the technical solution stated in the application is
considered new compared to the technical level in the world
if: (i) a reference technical solution cannot be found in the
information retrieval process; or (ii) a reference technical
solution is found but the technical solution stated in the
application contains at least one basic sign that is not
present in the reference technical solution.
In addition to the provision on minimum sources of
documents to determine the technical status of an patent,
Vietnamese law stipulates that an patent is considered
undisclosed if only a limited number of people know about
it and is obliged to keep the patent secret.44 A patent shall
not be deemed to have lost its novelty if it is publicly
disclosed by a person entitled to registration as provided for
in Article 86 of the Intellectual Property Law or by a person
who obtains information about the invention directly or
indirectly from such person, provided that: Patent
applications are filed in Vietnam within twelve months
from the date of disclosure. This provision also applies to

44
Clause 2 Article 60 Vietnam IP Law

88
inventions disclosed in industrial property registration
applications or industrial property protection titles
published by the state management agency in charge of
industrial property in case the publication inconsistent with
the provisions of law or the application is filed by a person
who does not have the right to register.45
3.1.5.2. The inventiveness of the patent
The aim of patent protection is to encourage
technological innovation, so inventiveness is a mandatory
requirement for patents. In some countries the term "non-
obvious" is used with the same connotation as the term
"inventiveness".46 Therefore, in some international treaties,
such as the TRIPS Agreement, the term "non-obvious" has
been interpreted as synonymous with "inventiveness
progress".47
The term "inventive step" is defined in the patent law
with the connotation that the claimed invention must not
only differ from what was in the previous technical state

45
Article 60 IP Law
46
Most legal systems require creativity. However, in some legal systems such
as that of the United States, this standard is specified as non-obvious.
47
See footnotes to the TRIPS Agreement.

89
(novelty) but this difference must also have two
characteristics. First, this distinction must be "inventive", it
must be the result of a creative idea. Second, it must be a
new step higher than the current technical state. In order to
appreciate the nature of the differences that make up the
level of creativity, it is necessary to consider the entire
known state of the art. Thus, the minimal sources of
information used for the assessment of the novelty of the
invention are also used for the assessment of the
inventiveness of the patent. The assessment of
inventiveness is usually conducted on three aspects: (i) the
problem that the patent solves; (ii) the solution to the
problem; (iii) the advantages (if any) of the patent over the
known technical situation.48
In Vietnam, an patent is considered to have an
inventive step if it is based on the technical solutions that
have been publicly disclosed in the form of use, written
description or any other form in the country or abroad
before the filing date or prior to the priority date of the
patent application in the case of the patent application

48
WIPO, note (3), p. 20.

90
enjoying the right of priority, the invention is an inventive
step, cannot be made a easy way for people with average
knowledge of the respective technical field. A technical
solution that is an invention disclosed according to the
provisions of Clauses 3 and 4, Article 60 of the Intellectual
Property Law cannot be used as a basis for assessing the
inventive step of such invention.49
For a point in the scope (claim) of protection, a
technical solution is considered to have an inventive step if
the inclusion of distinct fundamental signs into the set of
fundamental signs of the technical solution is the result of
creative activity and not the obvious result of common
sense in the respective technical field.
In the following cases, for a point in the scope of
protection, a technical solution is considered to have no
level of inventiveness: (i) A set of distinctly obvious basic
signs (any person Anyone with average knowledge of the
respective technical field knows that in order to perform the
intended function or to achieve the intended purpose it is
necessary to use such a set of signs and vice versa when

49
Article 61 IP Law.

91
using a set of signs. such signs must necessarily achieve the
purpose or perform the corresponding function); (ii) A set
of distinct fundamental signs that have been revealed in an
identical or equivalent form in one/several known technical
solutions in the required minimum information source; (iii)
A technical solution is a simple combination of known
technical solutions with functionality, purpose and
efficiency as well as a simple combination of function,
purpose and effectiveness of each known technical solution.
3.1.5.3. Industrial applicability
A technical solution can only be granted a patent or
utility solution patent if it has practical applicability, not
merely theoretical. If the patent is a product or part of a
product, the product must be able to be manufactured. If the
patent is a process or part of a process, it must be possible
to implement the process or "use" the process in practice.50
In some countries the applicability of an patent is
understood to be equivalent to the definition of utility of an

50
WIPO, note (3), p. 18.

92
patent.51 When determining the applicability of the patent,
consideration should also be given to future applicability.
It is possible that a technical solution is not applicable in
the current technical conditions, but under the conditions
described in the application, such solution is likely to be
applicable in the future, it will be protected. In addition, it
is important to emphasize that the definition of "industry"
in the field of patent is understood in a very broad sense
when determining the industrial applicability of an patent,
including manufacturing industries, including processed
and natural products, and service industries.
According to Vietnamese law, an patent is
considered to have industrial applicability if it is possible
to realize the manufacture, mass production of products or
repeated application of the process that is the subject matter
of the invention and stable results are obtained. To evaluate
the feasibility of a technical solution, it is necessary to base
on the following factors: (i) Information on the nature of
the solution along with instructions on necessary technical

51
Most legal systems require industrial applicability of the patent. However,
in some legal systems such as the laws of the United States, this standard is
defined as useful.

93
conditions are presented in such a clear and complete
manner that it allows a person with average knowledge of
the respective technical field to create, produce or use,
exploit or implement the solution; (ii) The creation,
production, use, exploitation or implementation of the
above solution is repeated with the same result as stated in
the patent description.52
In the following cases, the technical solution is
considered to be not industrially applicable:
(i) The nature of the object or the instructions for
carrying out the object is contrary to the basic principles of
science. It is explained that products or processes that
operate contrary to the laws of nature and the basic
principles of science are obviously incapable of industrial
application;
(ii) Objects include elements and components that
have no technical relationship with each other or cannot be
related to each other;
(iii) The subject contains an internal contradiction;

52
Circular No. 01/2007/TT-BKHCN.

94
 (iv) Instructions on the subject can only be executed
for a limited number of times (cannot be repeated);
(v) To be able to implement the solution, the
implementer must have special skills and that skill cannot
be passed on or shown to others;
(vi) The results obtained from the executions are not
consistent with each other;
(vii) The results obtained are different from those
stated in the application;
(viii) Completely absent or missing the most
important instructions for implementing the solution.53
3.1.5.4. Subject matters not protected as patents
In addition to stipulating general conditions for
protected patent, international and national laws both
regulate objects that are not protected as patent. For
example, Article 27, clause 2, of the TRIPS Agreement
states: “Members may exclude from patentability
inventions that should be prohibited from commercial
exploitation in their territory in order to protect public
order or public morality, including to protect human and

53
Circular No. 01/2007/TT-BKHCN.

95
animal or plant life and health or to avoid serious harm to
the environment, provided such exceptions are made not
only because the sole reason is that the exploitation of the
respective patent is prohibited by the laws of that
country”. 54 In addition, Article 27, Clause 3 of this
Agreement lists a number of subjects for which member
states have the right not to grant patents, including: “(i)
diagnostic methods, methods internal medicine and
surgery for the treatment of human and animal diseases;
(ii) plants and animals that are not strains of
microorganisms, and processes for the production of plants
and animals, which are primarily biological and are not
abiotic or microbiological processes”.
In line with the provisions of the TRIPS Agreement,
considering Vietnam's actual conditions, Article 8 of the
Vietnam IP Law has affirmed that the Vietnamese
government's policy is "not to protect IP objects that are
contrary to social ethics, society, public order, harmful to
national defense and security". Besides, Article 59 of the

54
When citing the provisions of international treaties, the author will quote
verbatim according to the translation of NOIP in the publication
"International treaties on intellectual property".

96
Intellectual Property Law provides that the following
objects are not protected in the name of invention: (i)
Inventions, scientific theories, mathematical methods; (ii)
Diagrams, plans, rules and methods for performing mental
activities, training pets, playing games, doing business;
Computer Programs; (iii) The manner in which information
is presented; (iv) The solution is only aesthetic; (v) Plant
varieties, animal breeds; (vi) The production process of
plants and animals is mainly biological in nature and is not
a microbiological process; (vii) Methods of prevention,
diagnosis and treatment of diseases in humans and animals.
According to the above provisions of Vietnamese
law, objects that are not protected by patents in Vietnam
may be for the following reasons:
First, the protection of patents is contrary to social
ethics and public order, harmful to national defense and
security. Although in this case, the claimed patent fully
meets the general protection standards of novelty, inventive
step, and industrial applicability, if it is considered that the
protection of such invention affects If it affects public order,

97
is contrary to social ethics, is harmful to national defense
or security, the invention will be refused protection.
Second, the object of protection is not a technical
solution, such as a scientific invention, scientific theory, or
mathematical method; diagrams, plans, rules and methods
for carrying out mental activities, training pets, performing
games, doing business; Computer Programs; the manner in
which information is presented; The solution is only
aesthetic...
Third, the object is protected under other forms of IP
rights, for example plant varieties, industrial designs.
Fourth, the subject is not capable of industrial
application, for example, methods of prevention, diagnosis
and treatment of diseases for humans and animals.
In case an patent protection title has been granted, if
it is proved that the patent falls into the above cases, the
whole or part of the validity of that protection title will be
annulled according to the provisions of Article 96, Clause
2 IPL.
3.2. ESTABLISHMENT OF INDUSTRIAL
PROPERTY RIGHTS FOR PATIENTS

98
3.2.1. Bases for establishing industrial property rights
to patents
According to Article 6, Clause 3 of the Law on
Intellectual Property of Vietnam, industrial property rights
to patents can only be established on the basis of decisions
of competent state agencies when registering patents in
accordance with law on IP or recognize international
registration under international treaties to which the
Socialist Republic of Vietnam is a signatory. This principle
is reaffirmed in a number of documents guiding the
implementation of provisions of the IP Law, such as Decree
103/2006/ND-CP dated September 22, 2006,55 Circular No.
01/2007/TT-BKHCN.
3.2.2. Right to register, ways to file a patent application
Determining the right person to file a patent
application is important because the invention/utility
solution patent confirms the patent owner's ownership of
the invention. Therefore, if an application for a patent for

55
Article 6 (1) Decree 103/2006/ND-CP dated September 22, 2006 detailing
and guiding the implementation of a number of articles of the IP Law on
industrial property.

99
an invention/utility solution is filed by a person who is not
entitled to register, the competent authority is obliged to
refuse to grant a protection title.56 In case a protection title
is granted to a person who does not have the right to register
and cannot transfer the right to register, the protection title
will be annulled in whole or in part.57
Vietnamese law stipulates that the right to file an
application for protection of a patent belongs to the creator
of the invention with his own efforts and expenses. Patent
registration rights belong to organizations and individuals
that invest funds and material means for authors in the form
of job assignment or employment, and organizations and
individuals assigned to manage genetic resources to
provide genetic resources and traditional knowledge of
genetic resources under contracts for access to genetic
resources and benefit sharing, unless otherwise agreed by
the parties or in the case of a scientific and technological
task funded by the state budget. Where many organizations

56
In Vietnam, this content is specified in Article 117, Clause 1, Point b of the
IP Law.
57
In Vietnam, this content is specified in Article 96, Clause 2, Point a of the
IP Law.

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and individuals jointly create or invest to create an
invention, those organizations and individuals all have the
right to register and that right of registration can only be
exercised if all organizations and individuals having the
right to register agree. The right to register may be
transferred to another organization or individual in the form
of a written contract, to be inherited or inherited according
to the provisions of law, even if a registration application
has been filed.58
For patents that are the result of scientific and
technological tasks using the entire state budget, the right
to register a patent shall be automatically and not
reimbursed to the presiding organization, except for cases
in the field of defense and national security. For patents that
are the result of scientific and technological tasks, which
are invested with many capital sources, including a part of
the state budget, the part of the right to register an invention
corresponds to the proportion of the state budget allocated
to it assigned to the lead organization automatically and
without reimbursement, except in the field of national

58
Article 86 IP Law.

101
defense and security. The right to register patents as a result
of scientific and technological tasks in the field of national
defense and security shall be implemented as follows: (i) In
the case of scientific and technological tasks using the
entire budget the State, the right to register inventions,
industrial designs and layout designs belongs to the State;
(ii) In case scientific and technological tasks are invested
with many sources of capital, including part of the state
budget, the part of the right to register inventions is
proportional to the proportion of the state budget belonging
to the State. The State owner's representative shall exercise
the right of registration in the above cases.59
Vietnamese organizations and individuals, foreign
individuals permanently residing in Vietnam, foreign
organizations and individuals having production and
business establishments in Vietnam have the right to
directly file an patent registration application or to file an
application for a patent through a legal representative in
Vietnam. Foreign entities other than those mentioned above

59
Article 86a IP Law.

102
can only file patent applications through their legal
representatives in Vietnam.60 Such representative may be a
representative agency of foreign entities legally established
in Vietnam or an industrial property representation service
business organization lawfully operating in Vietnam.
It should also be noted that patents in technical fields
that have an impact on national defense and security, are
created in Vietnam and under the registration rights of
individuals who are Vietnamese citizens and permanently
resident in Vietnam or of Organizations established under
Vietnamese law may only file patent applications abroad if
they have already filed patent applications in Vietnam to
carry out security control procedures.61
3.2.3. Basic principles in establishing rights to patents
3.2.3.1. The first-to-file principle
The essence of patent protection is to recognize and
legally protect the exclusive rights of the owner of the
invention during the term of patent protection, the most
important of which is the exclusive right to prevent others

60
Article 89 IP Law.
61
Article 89a IP Law.

103
from exploiting it. invention without the permission of the
patent owner. Therefore, each technical solution can only
be granted one patent/utility solution. Meanwhile, an
invention is a technical solution that meets the protection
conditions prescribed by law. That means that in practice
there will be cases where two or more people find a
technical solution and file a patent application together. In
this case, the laws of different countries provide different
principles for establishing industrial property rights to
inventions. The law of Vietnam and the law of most
countries in the world apply the principle of "first to file".
Accordingly, in case there are many applications for
registration of identical or equivalent inventions, a
protection title will only be granted for the invention in a
valid application with the earliest priority or filing date
among those that respond. meet the conditions to be granted
a protection title. In case there are many registration
applications that satisfy the same conditions to be granted
a protection title and have the same priority or earliest filing
date, a protection title may only be granted to the object of
one application. only among such applications by

104
agreement of all applicants; if no agreement can be reached,
all applications will be refused to grant protection titles.
3.2.3.2. Principle of priority
As analyzed, one of the conditions for a patent to be
protected is novelty. The majority of countries in the world
require patents to be world novel. And most of the countries
apply the principle of first filing in the granting of patents
for patents/utility solutions. But if a technical solution has
been filed for a protection title in a country, it means that
the new technical solution has been revealed. Therefore, if
the technical solution is registered for protection in a
foreign country, it is no longer novel, and if it does not meet
this standard, it will not be protected in that foreign country.
It is extremely difficult and economically uneconomical for
the patent owner to register at the same time for patent
protection in many countries because (i) the geographical
distance does not allow the applicant to apply for the same
period of time. points can file patent applications in
different countries; (ii) Normally when creating an
invention, the applicant needs to quickly file a request for a
protection title to ensure the novelty of the invention, so the

105
applicant cannot immediately identify the potential markets
with commercial exploitation of the invention. In order to
create favorable conditions for applicants to register for
protection of inventions in particular and industrial
property objects in general in foreign markets, the Paris
Convention for the Protection of Industrial Property of
1883 has been adopted noting the principle of priority in
Article 4 of the Covenant. Accordingly, when applicants
want to gain protection in the member countries of the Paris
Convention, they do not have to file applications in all
countries at the same time, but have up to 6 months (for
industrial designs, trademarks, etc.). ) or 12 months (for
inventions/utility models) to decide in which countries a
claim should be filed and to proceed with the filing process
in selected countries. 62 This principle was then further
affirmed in the Treaty of International Cooperation on
Patents 63 , in the Madrid Agreement on the International
Registration of Trademarks64. The essence of the principle

62
See Le Thi Nam Giang (2016), International Justice, National University
Publisher, p. 359-365.
63
See Le Thi Nam Giang (2016), note (223), p. 373-376.
64
See Le Thi Nam Giang (2016), note (223), p. 365-369.

106
of priority is not to lose the novelty of the later applications
compared with the previous applications for the same
industrial property object if the application is filed within
the priority period because of the technical status of the
patent will be calculated from the priority date.
In accordance with international treaties to which
Vietnam is a contracting party, Vietnamese law recognizes
the principle of priority. Accordingly, patent applicants in
particular and other industrial property objects in general
have the right to claim priority rights on the basis of the first
application to register for protection of the same object if
the following conditions are satisfied. the following: (i) The
first application has been filed in Vietnam or in a country
that is a party to an international treaty with provisions on
priority rights to which Vietnam is also a contracting party
or has agreed to apply such provision with Vietnam; (ii)
The applicant is a Vietnamese citizen, a citizen of another
country specified above, residing or having a production or
business establishment in Vietnam or in a treaty member
country to which Vietnam is also a contracting party.
tablets; (iii) The application clearly states the request for

107
priority right and submits a copy of the first application
certified by the agency that received the first application;
(iv) The application is filed within the time limit specified
in an international treaty to which Vietnam is a contracting
party.
In a patent application, the applicant has the right to
claim priority on the basis of multiple earlier applications,
provided that the correspondence between the earlier
applications must be shown to the content in the patent
application.
3.2.4. Requirements for patent applications
Vietnamese law specifies requirements on content as
well as on form for patent registration applications. The
general condition for an patent registration application is to
have the minimum documents as prescribed in Article 100
of the Intellectual Property Law, including: (i) Registration
declaration according to the prescribed form; (ii)
Documents, specimens and information showing the
industrial property object registered for protection.
Specifically, for an invention registration application is the
description of the invention; (iii) Power of Attorney, if the

108
application is filed through a representative; (iv) Document
proving the right to register, if the applicant enjoys that
right of another person; (v) Document proving priority right,
if priority right is claimed; (vi) Proof of payment of fees
and charges; (vii) A document explaining the origin of
genetic resources or traditional knowledge of genetic
resources in the patent application, for patents directly
created based on genetic resources or traditional knowledge
about genetic resources.
The application must ensure the consistency as
prescribed in Article 101 of the IP Law. Accordingly, each
patent application is only required to grant one protection
title to a single object. However, an application may request
the grant of a patent or a utility solution patent to a group
of technically closely related patents in order to realize a
common inventive intent.
In addition to the general requirements, Article 102
of the IP Law provides some specific requirements for a
patent registration application. Specifically, the document
identifying the patent to be protected includes the patent
description and the patent summary. The patent description

109
includes a description of the patent and its scope of
protection. A description of the patent must satisfy the
following conditions: (i) fully and clearly disclose the
nature of the patent to the extent that it is based on which a
person with average knowledge of the relevant technical
field can make present the patent; (ii) a brief explanation of
the accompanying drawing, if it is necessary to further
clarify the nature of the patent; (iii) clarify the novelty,
inventive step and industrial applicability of the patent. The
scope of patent protection must be expressed in terms of a
set of technical features necessary and sufficient to define
the scope of rights to the invention and must be consistent
with the description of the invention and the drawings. The
abstract of the patent must disclose the main contents of the
nature of the invention, fully showing information about
the applicant, the author and the object to be protected.65
The requirements for patent registration applications are
detailed in Circular 01/2007/TT-BKHCN.
In addition, Vietnamese law has additional
provisions for patent applications related to biotechnology,

65
Article 226 IP Law.

110
pharmaceutical inventions and patent applications related
to genetic resources or traditional knowledge.66

3.2.5. Dividing an application, converting an application,

assigning an application, amending an application,
withdrawing a patent application
During the application process, before the NOIP
issues a decision to refuse to accept the application, the
decision to grant or refuse to grant a protection title, the
applicant can either actively or at the request of the NOIP
separate the application, which means separate one or
several technical solutions in a patent application into one
or more new applications. The split application carries a
new application number and has the filing date of the
original application or the priority date(s) of the original
application (if any) and is processed as a normal application.
The original application (after being split) continues to be
processed according to the application modification
procedure and the applicant must pay the application
amendment and supplement fee.

66
Section 23 of Circular 01/2007/TT-BKHCN.

111
 Before the NOIP issues a decision to refuse to accept
an application, to grant or to refuse to grant a protection
title, an patent applicant may convert a patent request into
a utility solution application or vice versa, provided that the
application conversion fee is paid. After receiving a valid
request for conversion of an application, the NOIP shall
continue to carry out the procedures for processing the
converted application according to relevant regulations, but
shall not re-implement the procedures already carried out
for the application prior to the request.
The applicant can also request the NOIP to record
the assignment of the application to another person before
the NOIP issues one of the decisions to refuse to accept a
valid application, to refuse to grant a protection title or to
decide to grant a patent. In the request for recognition of
the transfer of the application, there must be documents
proving that the transferee meets the requirements for the
right to register. In addition, the applicant may request
NOIP to record the change of application owner on the
basis of inheritance, inheritance or decision of a competent
authority.

112
 In addition, before the NOIP issues a decision to
refuse to accept an application, a decision to refuse to grant
a protection title or a decision to grant a protection title, the
applicant may either actively or at the request of the NOIP
amend it, supplement the document. The amendment and
supplementation of the application must not expand the
scope (volume) of protection disclosed in the description
for an patent registration application and must not change
the nature of the object stated in the application. If an
amendment that expands the scope (volume) of protection
or changes the nature of the subject matter is not accepted,
the applicant must file a new application and all procedures
are restarted from the beginning. The applicant may request
correction of errors in the name, address of the applicant,
name and nationality of the inventor. All requests for
amendments and supplements must be made in writing
using form 01-SĐĐ specified in Appendix B of Circular
01/2007/TT-BKHCN.
The applicant also has the right to declare the
withdrawal of an patent registration application in
particular, an industrial property registration application in

113
general. The withdrawal of an application must be made
before the NOIP decides to grant or refuse to grant a
protection title. From the moment the applicant declares to
withdraw the application, all subsequent proceedings
related to that application are terminated.
3.2.6. Procedures for processing applications and
granting protection titles
Patent applications will only be accepted by NOIP if
the minimum documents required by law are met and NOIP
will confirm the filing date. The filing date is the date the
application is received by the NOIP or the international
filing date for an application filed under an international
treaty. The filing date confirmation is important in
determining the novelty and inventiveness of the invention
because the known technical status of the invention is taken
into account at the time of filing the patent application.
(a) Formal examination of patent registration
application
After receiving the application, NOIP will conduct
formal examination of the application. This is a mandatory
procedure. The purpose of formality examination is to

114
assess the validity of an application by checking whether
the application complies with the regulations on formality.
If the application is valid, it will be reviewed, and if the
application is invalid, it will not be considered. An
application will be considered valid if it meets the
provisions of Point 7 of Circular 01/2007/TT-BKHCN and
does not fall into one of the cases specified at Point 13.2 of
this Circular, including: (i) The application does not meet
the formality requirements; (ii) The object stated in the
application is not protected; (iii) The applicant does not
have the right to register; (iv) The application is filed
contrary to the regulations on how to apply; (v) The
applicant fails to pay fees and charges. 67 In case the
application is valid, NOIP will issue a notice of acceptance
of the valid application.
In case the application is invalid, the NOIP shall
notify the intended refusal to accept the valid application,
clearly stating the reason and setting a time limit for the
applicant to correct errors or make objections against the
intended denied-application.

67
Circular 01/2007/TT-BKHCN.

115
 The time limit for formal examination is 01 month
from the date of application submission. However, if during
the formality examination of the application, the applicant
actively or at the request of the NOIP to correct and
supplement documents, the time limit for formality
examination shall be extended by a period of time for
editing and supplementing documents.
(b) Publication of patent registration application
Patent applications are published within the 19th
month from the filing date or from the priority date for
applications enjoying priority or at an earlier time at the
request of the applicant. For an invention registration
application under the Patent Cooperation Treaty (PCT
application) published within 02 months from the date of
acceptance of the valid application after the application has
entered the national stage.68 The requirement to disclose the
technical nature of the patent in the patent application and
the public disclosure of the technical nature and patent
information is particularly important for the following

68
Article 11 of Decree 103/ND-CP; Point 27 Circular No. 01 dated
27/01/2007.

116
reasons: (i) contributes to enrich the knowledge treasure of
mankind; (ii) create opportunities for free exploitation of
inventions for individuals and organizations in need in
society after the end of the patent protection term because
the invention is only protected for a certain period of time,
so when it expires, any third party has the right to exploit
the invention; (iii) avoid waste in research to create new
inventions because when researching, researchers already
know the current technical level of the research field, avoid
repeating the research of technical solutions knew about or
helped develop the protected product. This also facilitates
the creation of new inventions on the basis of existing
inventions. There are currently over 45 million published
patents and this number continues to grow at a rate of more
than one new invention per minute.69 In 2006, the number
of patent applications was 1.76 million and 727,000 patents
were granted worldwide. 70 With the huge number of
patents published, the patent information is considered to

69
Patent protection, patent information and trade secrets, documents
published under the EC-Vietnam project on IP, Hanoi, 2000, p. 8.
70
WIPO (2008), World Patent Report – A staticstical review, 2008, p. 18 and
24. Last accessed at http://www.wipo.int, accessed date: 2/7/2010.

117
be the largest source of technical and business information
in the world of immense value.
(c) Substantive examination
Substantive examination of the application is not a
mandatory procedure but is conducted only at the request
of the applicant or any third person. The purpose of
substantive examination of an application is to assess the
protection ability of the object stated in the application
under the protection conditions, and to determine the
corresponding scope (volume) of protection.
The time limit for substantive examination of an
patent registration application is 18 months from the date
of publication of the application if the request for
substantive examination is filed before the date of
publication of the application, or from the date of receipt of
the request for substantive examination if such request is
submitted after the date of publication.
Substantive examination of an application includes:
(i) Assessing the suitability of the object stated in the
application with the type of protection title requested to be
granted; (ii) Evaluation of the object according to each

118
protection condition. For an patent registration application,
the evaluation is carried out in turn according to each point
stated in the scope (claim) of protection; (iii) Check the
first-to-file principles.
No later than the end of the time limit for substantive
examination of the application, NOIP shall send the
applicant one of the following notices:
(i) If the object stated in the application does not
satisfy the protection conditions, the NOIP shall issue a
notice of its intention to refuse the grant of a protection title,
clearly stating the reasons for the refusal, possibly guiding
the modification of the scope (volume) of protection and
setting a time limit of 03 months from the date of
notification for the applicant to give opinions and satisfy
the requirements;
(ii) If the object stated in the application satisfies the
protection conditions but the application still contains
errors, the NOIP shall issue a notice of its intention to
refuse to grant a protection title, clearly stating the error of
the application and setting a time limit for the application

119
within 03 months from the date of notification for the
applicant to give explanations or correct errors.
(iii) If the object stated in the application satisfies the
protection conditions or the applicant has corrected the
errors satisfactorily or has provided a reasonable
explanation within the prescribed time limit, the NOIP shall
issue a notice of intention to grant the protection title and
fix a time limit of 03 months from the date of notification
for the applicant to pay the fee for the grant of the protection
title, the fee for announcing the decision on granting the
protection title, the registration fee and the maintenance fee
for first year validity for the patent.
Any third party has the right to have an opinion on
whether or not to grant a protection title. The third party
also has the right to object to the grant of a protection title
within the time limit specified in Article 112a of the IP Law.
(d) Refusal to grant protection title
NOIP will refuse to grant a patent for an
invention/utility solution if: (i) There are bases to assert
that the object stated in the application does not fully satisfy
the protection conditions; (ii) There are bases to assert that

120
the applicant does not have the right to register the
patent/utility solution; (iii) An application that meets the
conditions for a protection title but is not an application
with the earliest priority or filing date in the case specified
in Clause 1, Article 90 of the IP Law; (iv) The application
falls into the case specified in Clause 3, Article 90 of the IP
Law without the agreement of all applicants; (v) The
amendment and supplementation of the application widens
the scope of the subjects disclosed or stated in the
application or changes the nature of the objects requested
for registration stated in the application; (vi) The claimed
invention exceeds the extent of disclosure in the original
description of the patent application; (vii) The patent is not
disclosed sufficiently and clearly in the patent description
to the extent that it is possible for a person with average
knowledge of the relevant technical area to make it; (viii)
For patents that are directly created based on genetic
resources or traditional knowledge of genetic resources, the
patent application does not disclose or incorrectly disclose
the origin of genetic resources or traditional knowledge. on
genetic resources; (ix) An patent registration application is

121
filed contrary to the provisions on security control for
patents specified in Article 89a of the IP Law.
(đ) Issuance of a title of protection
If an industrial property registration application is
not subject to a refusal to grant a protection title, within 15
days from the date on which the applicant fully and timely
submits all fees and charges, the NOIP shall carry out
procedures for granting a protection title and recorded in
the National Register of Industrial Property. Patent
protection includes patents and utility solution patents, in
which the patent is valid from the date of grant and lasts
until the end of twenty years from the filing date. The utility
solution patent is valid from the date of grant and lasts until
the end of ten years from the filing date. The protection title
is valid throughout the territory of Vietnam. The title of
protection recognizes the owner of the invention; inventor,
subject matter, scope and term of protection.
After being granted a protection title, if the
protection title holder finds errors, he or she has the right to
request the NOIP to correct the protection title in
accordance with law.

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 (e) Processing of PCT registration applications
"PCT application" means an patent registration
application filed under the PCT Treaty,71 including: (i) An
application for protection in Vietnam, filed in any member
country of the PCT Treaty, including Vietnam (PCT
application designating or selecting Vietnam); (ii) The
application is filed in Vietnam, in which there is a claim for
protection in any member country of the PCT Treaty,
including Vietnam (the PCT application originates in
Vietnam).
The agency competent to receive international
patent applications in Vietnam is the NOIP. NOIP
considers a PCT application with selection or designation
of Vietnam when all the following conditions are satisfied:
(i) The applicant carries out the procedures for patent
registration at the NOIP in accordance with the provisions

71
The PCT Treaty was signed on June 19, 1970 and entered into force in
1978. This is a special international treaty signed within the framework of the
Paris Convention 1883 with the aim of simplifying and saving time. time and
human resources for the registration of inventions in need of protection in
many countries. Since its signing until now, the PCT Treaty has been revised
on October 2, 1979 and February 1984. Currently, there are 135 member
countries, and Vietnam became an official member on March 10, 1993. See
also: Le Thi Nam Giang, note (223), pp. 373-376.

123
of the PCT Treaty within thirty one months from the date
of filing the international application or from the date of
priority (if the application has a claim for priority); (ii) The
applicant has paid industrial property fees and charges as
prescribed by law.
PCT applications originating in Vietnam must be
made in English or Russian and must meet the requirements
on form and content specified in the PCT Treaty. The
applicant may file an application with the state
management agency in charge of industrial property or with
the International Office of the World Intellectual Property
Organization (WIPO).
The NOIP's responsibilities in receiving and
processing international applications are regulated by
Vietnamese law, including: (i) Receiving international
applications of Vietnamese origin; (ii) Collecting fees for
international filing and notifying the required fees for the
applicant to transfer to the International Bureau and the
International Searching Authority in accordance with the
provisions of the PCT Treaty; (iii) Check that fees are paid
on time; (iv) To examine and process international

124
applications of Vietnamese origin in accordance with the
provisions of the Treaty; (v) Determination of the object of
protection: if the subject matter of the application is
classified as a state secret, no further work shall be carried
out and the fees will be refunded to the applicant. , minus
the fee for sending and copying the international
application; (vi) Send a copy (documentation) of the
international application of Vietnamese origin to the
International Bureau and a copy (search copy) to the
international search agency; (vii) Send and receive letters
from applicants and from international agencies.
If the international application specifies Vietnam, in
order to enter the National Stage,72 within 31 months from
the date of priority, the applicant must submit to the NOIP
the documents detailed in Point 27.4 of this Circular.
01/2007/TT-BKHCN and fully pay national fees and
charges. If Vietnam is selected in the international
application and the selection of Vietnam is made within 22
months from the date of priority or 03 months from the date

72
The PCT application processing procedure consists of two stages: the
international stage and the national stase. see: Le Thi Nam Giang, note (223),
p. 373-376.

125
the international search report is delivered to the applicant
or the publishing is performed, whichever ends later. In
order to enter the national stage, within 31 months from the
date of filing the international application or from the date
of priority, the applicant must submit to the NOIP the
documents detailed in Point 27.5 of Circular 01/ 2007/TT-
BKHCN with national fees and charges.
The applicant has the right to claim priority. In order
to enjoy the right of priority, the applicant must confirm it
in the declaration, pay the fee to apply for the right of
priority and, at the request of the NOIP, must submit the
Vietnamese translation of the submitted documents to the
International Bureau Office required under Rule 17.1(a) of
the Regulations for the Implementation of the Treaty.
The time to start processing international
applications designating Vietnam or selecting Vietnam at
the national stage is the first day of the thirty-second month
from the priority date, if the applicant does not make a
written request into the national phase earlier than the
above-mentioned deadlines. After entering the national
stage, the international application is examined for form

126
and substantive according to the procedures prescribed for
ordinary patent applications.
3.3. CONTENTS OF INDUSTRIAL PROPERTY
RIGHTS FOR INDUSTRIAL PROPERTY
3.3.1. Rights of patent authors
An author is a person who directly creates a patent
with his or her own intellectual labor. In case two or more
people jointly create an invention directly, they are co-
authors of that patent.
Authors have moral and property rights. The moral
rights of the author include: (i) the right to be named as the
author in the patent, utility solution; (ii) is named as the
author in the publication or introduction of the patent. The
moral rights of the inventor are protected indefinitely.73
If the author is not the owner of the patent and if
there is no other agreement between the author and the
owner of the patent, the author has the following property
rights: (i) the right to receive the maximum remuneration at
least 10% of the pre-tax profit the owner derives from the
use of the patent; (ii) 15% of the total amount received by

73
Article 112 IP Law.

127
the owner in each payment due to the licensing of the patent
before paying tax as prescribed.
In the case of patents with co-authors, the
remuneration stated above is for all co-authors. The co-
authors themselves agree on the distribution of the
remuneration paid by the owner. The author's property
rights last for the duration of the patent's term.74
For patents that are the result of scientific and
technological tasks using the state budget, the owner shall
pay remuneration to the author at the rate of: (i) Minimum
10% and maximum 15% profit before tax obtained by the
owner from the use of the patent; (ii) A minimum of 15%
and a maximum of 20% of the total amount received by the
owner in each payment due to the licensing of an patent
before paying tax as prescribed.
The above regulation aims to ensure a balance of
interests between authors and those who invest in financial
and material means for creative activities towards the
common goal of promoting creative activities.

74
Article 122 and Article 135 IP Law.

128
3.3.2. Rights of the patent owner
Patent owner means an organization or individual
that is granted a patent for invention by a competent
authority. Vietnamese law stipulates that patent owners in
particular, and owners of industrial property objects in
general, have the following property rights: (i) Use or
permit others to use public property objects; (ii) Preventing
others from using industrial property objects; (iii) Disposal
of industrial property objects in accordance with the
provisions of Chapter X of the Intellectual Property Law.
In addition, the law stipulates the content of the owner's
rights to each industrial property object to suit the specific
characteristics of these objects. Specifically, according to
Vietnamese law, the owner of an patent has the following
property rights:
3.3.2.1. Rights to use patents
Use of a patent means the performance of the
following acts: (i) Manufacture of the protected product;
(ii) Apply the protected process; (iii) Exploit the use of a
protected product or a product manufactured by a protected
process; (iv) Circulating, advertising, offering, storing for

129
circulation of products; (v) Import of protected products or
manufactured under a protected process.
3.3.2.2. Right to prevent others from using patents except
in exceptional cases
The patent owner has the right to prevent others from
using the patent. However, the patent owner has no right to
prevent others from performing acts in the following cases:
(i) Use the patent for personal use or non-
commercial purposes, or for evaluation, analysis, research,
teaching, testing, trial production or information gathering
purposes for applying for a license to manufacture, import
and circulate products;
(ii) Using the patent solely for the purpose of
maintaining the operation of foreign means of transport in
transit or temporarily located in the Vietnamese territory;
(iii) Using patents made by the previous right holder
in accordance with the law;
(iv) Using an patent granted by a person authorized
by a competent state agency under a decision on
compulsory licensing of an invention;

130
 (v) Legally circulating, importing, exploiting the
uses of products put on the market, including foreign
markets, except for products that are not made by the
trademark owner or his/her licensee to foreign markets.

3.3.2.3. Right to dispose patents

Patent disposition includes the rights of the patent
owner to decide whether to exploit the patent himself
or/and to transfer the right to use or own the patent to
another subject.
3.3.2.4. Provisional rights to patents
In cases where the patent applicant knows that the
patent is being used by another person for commercial
purposes and that he or she does not have the right to use it
first, the applicant has the right to notify the user in writing
about the fact that he has filed a patent application for that
person to terminate or continue to use. In case the notified
person continues to use the patent after being notified,
when the protection title is granted, the owner has the right
to demand that the person who used the patent pay a
compensation amount equivalent to the price of licensing

131
the right to use the patent within the respective scope and
term of use.
3.3.3. Obligations of the patent owner
In addition to rights, the patent owner must perform
the following obligations: (i) the obligation to pay the
author's remuneration; (ii) the obligation to use the patent.
Using a patent is regulated by the laws of the country as
both a right and an obligation of the patent owner. The Paris
Convention also makes the patent owner's obligation to use
the invention mandatory and allows a State Party to
compulsorily license the patent in case the owner does not
use the patent. This regulation is intended to force patent
owners to use their patents for the purpose of developing
national industries, disseminating technology as well as
serving social interests. In Vietnam, Article 136 of the
Intellectual Property Law stipulates that the owner of a
patent is obliged to manufacture the protected product or
apply the protected process to meet the needs of national
defense, security, disease prevention and treatment,
nutrition for the people or other urgent needs of society.
When having the needs specified in this Clause and the

132
patent owner fails to fulfill such obligation, the competent
state agency may transfer the right to use the patent to
another person without the owner's permission under the
provisions of the Intellectual Property Law.
In addition, the law also stipulates that the patent
owner is obliged to permit the use of the basic patent in
order to use the dependent invention. A dependent patent is
a patent that is created on the basis of another patent (the
basic patent) and is usable only on the condition that the
underlying patentis used. The laws of many countries
around the world provide for the obligation of the patent
owner to transfer the right to use his patent to another
person if the dependent patent is proven to have made an
important technical advance compared to the basic patent
and has great economic significance. The transfer in this
case is agreed upon by the parties at a reasonable
commercial price and terms. In case the owner of the basic
patent fails to satisfy the requirements of the dependent
patent owner without plausible reasons, the competent state
agency may transfer the right to use that patentto the owner
of the dependent patent. Ownership of the dependent patent

133
is subject to mandatory discretion without the consent of
the owner of the underlying patent.
In addition, the owner of an patent has an obligation
to respect the rights of previous users to the patent.
Accordingly, in the case that, before the date of publication
of an patent application, someone has used or prepared
necessary conditions for using the patent that is identical
with the patent in the application but is created
independently, then when a patent is granted, that person
has the right to continue to use the patent to the extent and
volume already used or prepared for use without having to
obtain permission or pay compensation to the owner of the
patent. Exercising the user's rights before the invention is
not considered an infringement of the rights of the patent
owner. The holder of the right to pre-use a patent is not
allowed to transfer that right to another person, unless such
right is transferred together with the transfer of a business
or production establishment where the patent is used or is
about to be used. The holder of the prior use right may not
extend the scope or volume of use without the permission
of the patent owner.

134
3.4. TRANSFER OF INDUSTRIAL PROPERTY
RIGHTS FOR PATENTS
3.4.1. Assignment of patents
Patent assignment means the transfer of ownership
rights to a patent by a patent owner to another organization
or individual. The assignment of patent must be done in the
form of a written contract (hereinafter referred to as the
patent assignment contract). An patent assignment contract,
according to Article 140 of the Intellectual Property Law,
must contain the following principal details: (i) Full name
and address of the assignor and assignee; (ii) Bases for
transfer; (iii) Transfer price; (iv) Rights and obligations of
the assignor and assignee.
According to Article 148 of the Intellectual Property
Law, an patent assignment contract must be registered at
the state management agency in charge of industrial
property rights. It means that registration of a patent
assignment contract is a condition for the validity of this
contract.

135
3.4.2. Licensing of patents
Licensing of the right to use an patents means that
the owner of a patent allows another organization or
individual to use the patent within the scope of his right to
use. The transfer of the right to use an patent must be done
in the form of a written contract. However, unlike a patent
assignment contract, Vietnamese law does not require an
patent licensing contract to be registered at a competent
state agency in order for contract's validity. According to
Article 148 of the Intellectual Property Law, an invention
licensing contract is valid as agreed between the parties, but
only valid for a third party when it has been registered at a
state management agency in charge of patents. In addition,
Vietnamese law also stipulates that an patent licensing
contract is automatically terminated if the industrial
property right to the licensor's patent is terminated.
A patent licensing contract includes the following
basic forms:
First, an exclusive contract is a contract under which,
within the scope and term of the assignment, the licensee
has the exclusive right to use the patent, and the licensor

136
may not enter into a contract to use the patent with any
other third party and may use the patent only with the
permission of the licensor.
Second, a non-exclusive contract is a contract under
which, within the scope and term of licensing, the licensor
still has the right to use the patent, the right to enter into a
non-exclusive patent use contract with others.
Third, a contract for using a secondary patent is a
contract whereby the licensor is the person who is assigned
the right to use that patent under another contract.
Deriving from the nature of an patent licensing
contract, it is only a contract to transfer one of the rights of
the patent owner: the right to use, not to transfer the entire
ownership, so the law of Vietnam like the laws of many
countries, on the one hand, it stipulates the necessary
contents of this contract, and on the other hand, stipulates
the terms that the parties are not allowed to include in the
contract. According to Article 144 of the Intellectual
Property Law, the content of a contract for the use of an
industrial property object in general, and a contract for

137
licensing of an patent in particular, must contain the
following principal contents:
a) Full name and address of the licensor and the
licensee;
b) Grounds for transfer of the right to use;
c) Type of contract;
d) Scope of the transfer, including limitation of use
right, and limitation of territory;
d) Contract term;
e) Price for licensing the right to use;
g) Rights and obligations of the licensor and the
licensee.
In addition, Clause 2, Article 144 of the IP Law lists
provisions that are deemed to unreasonably restrict the
rights of the licensee, especially those that do not derive
from the licensor's rights that the contract uses. Industrial
property objects, including patents, are not allowed, if any,
these provisions are automatically invalidated. Accordingly,
the terms that are not allowed to be included in the
industrial property right licensing contract include:

138
 (i) Prohibit the licensee from improving the
industrial property object, except for trademarks; oblige the
licensee to transfer to the licensor free of charge the
industrial property object improvements created by the
licensee or the right to register industrial property or
industrial property rights for such improvements ;
(ii) Directly or indirectly restricting the licensee
from exporting goods or services produced or supplied
under the contract for the use of the industrial property
object to territories other than where the licensor is located.
the right to hold the respective industrial property rights or
to have the exclusive right to import such goods;
(iii) Forcing the licensee to purchase all or a certain
percentage of the materials, components or equipment from
the licensor or a third party designated by the licensor
without the purpose of ensuring the quality of the product.
quantity of goods and services produced or supplied by the
licensee;
(iv) Prohibit the licensor from claiming the validity
of the industrial property right or the licensor's right of
assignment.

139
3.4.3. Transfer of the right to use the patent under the
decision of a competent state agency (Compulsory
license)
Transfer of the right to use a patent under a decision
of a competent state agency (mandatory licensing of a
patent) is a permission from a competent state agency,
allowing organizations and individuals to must be the
holder of the exclusive right to use the patent under the
conditions prescribed by law without the permission of the
patent owner.
In the legal science of many countries around the
world, compulsory licensing of inventions (non-voluntary
licensing or compulsory lisencing) is not a new issue. The
birth of this definition is considered to have originated from
the obligation to use the patent of the patent owner
enshrined in English Statute of Mônpolies in 1623.75 Later,

75
Carlos M., Correa (1999), Intellectual Property Rights and the use of
compulsory licenses: Options for developing countries, Working Paper South
Centre, p. 3; Or visit: English Statute of Monopolies of 1623, 21 Jac. 1 C. 3,
(§ 6 (b) excludes bar to non obstante letters patent to “grants of privilege for
the term of fourteen years or under, hereafter to be made, of the sole working
or making of any manner of new manufactures within this realm” ).

140
in the United States Senate from 1790, in the British Senate
in 1851 and in Germany in 185376, policymakers argued for
compulsory patent licensing as a means of promoting the
benefits of the patent system while reducing the risks of this
system. The International Conference on Patents in Vienna
in 1873 strongly supported compulsory licensing of
inventions and the Paris Convention of 188377 was the first
international treaty to provide for compulsory licensing of
inventions. in Article 5A. The above provisions of the Paris
Convention have strongly influenced the laws of member
states. Until now, most countries in the world have
regulations on compulsory licensing of inventions. In the
beginning, compulsory patent licensing appeared as a tool
to limit the abuse of monopoly by patent owners, but today,
the reason for compulsory licensing has been expanded.
Although the laws of different countries have different
provisions on the reasons for compulsory licensing of
patents, the following reasons are widely recognized in

76
Colleen Chien (2003), Cheap drug at what price to innovation: does the
compulsory licensing of pharmaceuticals hurt innovation? Berkeley
Technology Law Journal, Vol. 18, No. 3, p.6.
77
Article 5A, Paris Convention on Industrial Property was signed on
20/3/1883 (amended in Stockholm, 14/7/1967).

141
legal systems: (i) There is monopoly abuse the rights of the
holder of the exclusive right (not to use the patent or to use
the patent inadequately, to refuse to sign a voluntary
transfer contract, etc.); (ii) For the public interest (including
use of patents in the name of the state) to meet public needs
such as disease prevention and treatment for the people,
security, national defense..., including arresting forcing the
transfer of the right to use patents for the manufacture and
export of pharmaceutical products to WTO member
countries with public health problems in accordance with
Decision 30/8/2003 and the Protocol amending the TRIPS
Agreement; (iii) Sanctions against anti-competitive acts;
(iv) To use the dependent patent.
Currently, compulsory patent licensing (CPL) is
regulated in international and national laws. From the
perspective of international law, (CPL) is regulated in the
Paris Convention, the TRIPS Agreement, the Declaration
of the Council of Ministers at DOHA on the TRIPS
Agreement and public health. In the field of
pharmaceuticals, in addition to the above provisions, CPL
is also governed by the Decision dated 30/8/2003

142
implementing clause 06 of the DOHA Declaration (to be
replaced by Article 31bis and the Annex of the TRIPS
Agreement when the Decree No. Protocol to amend the
TRIPS Agreement comes into force). In addition, CPL is
also governed by regional and bilateral agreements.
In Vietnam, Article 7 of the Law on Intellectual
Property stipulates: "2. The exercise of intellectual
property rights must neither be prejudicial to the State's
interests, public interests. legitimate rights and interests of
other organization and individuals, nor violate other
relevant provisions of law.\
3. In the circumstances where the achievement of
defense, security, people's life-related objectives and other
interests of the State and society specified in this Law
should be guaranteed, the State may prohibit or restrict the
exercise of intellectual property rights by the holders or
compel the licensing by the holders of one or several of
their rights to other organizations or individuals with
appropriate terms." On the basis of the provisions of
Article 7 of the Intellectual Property Law, compulsory
licensing of patents is specified in Articles 132, 145, 146,

143
147 of the Intellectual Property Law; Articles 23 and 24 of
Decree 103/2006/ND-CP and in Section 2 Chapter 2 of
Circular 01/2007/TT-BKHCN.
Bases for compulsory licensing of patents
According to Article 145(1) of the Intellectual
Property Law, there are four bases that any individual or
organization that meets the conditions prescribed by law
can also apply to a competent authority to apply for a
license to use as patent, including:
Firstly, the use of the patent is for public, non-
commercial purposes, serving national defense and security,
disease prevention, treatment, nutrition for the people or
meeting urgent needs of society. However, in this case, the
decision on compulsory licensing of the patent will only be
granted if the two conditions specified in Circular No.
01/2007/TT-BKHCN are satisfied, including: (i), the
person Requests for grant of CPL must provide documents
proving that at the time of application, there is actually a
need to use the patent for public, non-commercial purposes,
in service of national defense and security, or for disease
prevention and treatment. , nutrition for the people or to

144
meet other urgent needs of society; (ii), the patent holder
has not used the patent, and the failure to use the patent
affects the achievement of the above purposes. With the
above provisions, the competent authority of Vietnam
cannot grant compulsory licensing of patents if the patent
holder proves that he has been using the patent even if such
use fail to meet the needs of security, national defense,
disease prevention and treatment for the people or other
urgent needs of the society.
In addition, Article 133 of the Law on Intellectual
Property of Vietnam provides for the right to use patents in
the name of the State, according to which, ministries and
ministerial-level agencies have the right to use on behalf of
the State or permit other organizations and individuals to
use them under their management for public, non-
commercial purposes, serving national defense and security,
disease prevention, treatment, nutrition for the people and
meeting other urgent needs of the society without the
consent of the patent owner or the holder of the exclusive
right to use the patents as prescribed in Articles 145 and
146 of the Intellectual Property Law.

145
 Second, the holder of the exclusive right to use the
patent does not fulfill the obligation to use the patent after
the end of four years from the date of filing the patent
application and the end of three years from the date of
granting the patent.
Like other countries' laws, Vietnamese law
stipulates that the use of patents is both a right and an
obligation of the owner of the patent and the holder of the
exclusive right. However, not all cases of patent disuse are
grounds for compulsory patent licensing. In fact, when a
new technical solution or process is found, a patent
application is usually filed with the competent authority as
soon as possible, in order to gain priority. When a patent is
granted, there are many patents that are not exploited in
practice. There are many reasons for not using the patent
such as the patent is not practical for use, the use of the
patent does not bring economic efficiency... In these cases,
it does not make sense to force the patent owner to use the
patent. Therefore, Vietnamese law stipulates that not using
the patetnt of the patent holder in the case of causing
damage to the interests of society or a third party is

146
considered as a reason for compulsory transfer of patent
rights to use. However, unlike some countries, especially
developing countries such as Brazil, India, etc., Vietnam
does not require patents to be used in the territory of
Vietnam in the form of production organization or
application. Using a protection process, the importation of
products into Vietnam is also considered to be the use of
patents in Vietnam.
Third, the person wishing to use the patents fails to
reach an agreement with the exclusive holder on entering
into a contract to use the patent even though within a
reasonable time has tried to negotiate the price and terms of
satisfactory commercial litigation of the patent.
In this case, in order to decide on compulsory
licensing of the granted patent, the requesting party must
prove that it has not reached an agreement with the holder
of the exclusive right to use the patent on the conclusion of
a patent use contract, must clearly state the need to use the
patent, the time it took to negotiate, the price, and the
specific commercial conditions proposed by the person
wishing to use the patent. However, there is no provision in

147
Vietnamese law that indicates how long the negotiation
period is considered "reasonable" and what price and
commercial conditions are considered satisfactory. This
issue will be considered on a case-by-case basis by the
agency competent to consider the application for a decision
on compulsory licensing of a patent.
In principle, the right of an patent owner to say or
not to allow a third party to use his patent is recognized by
law as a right of the patent owner. Therefore, the laws of
some countries, such as the United States and the laws of
some countries in the Organization for Economic Co-
operation and Development (OECD), do not accept the
refusal of the patent owner to sign a licensing agreement.
Voluntary patent rights on reasonable commercial terms
are a reason for forced patent licensing.78 In these countries,
the law does not consider licensing the patent as a
mandatory obligation of the patent holder. In Europe, the
European Court of Justice has repeatedly affirmed the view
that the patent holder is not obliged to transfer the right to

78
Makan Delrahim (2004), Forcing firms to share the sandbox: Compulsory
licensing of intellectual property rights and antitrust, Department of Justice,
p. 5.

148
use the patent to a third party. However, the European
Court of Justice also makes exceptions where a refusal to
license a patent is considered an abuse of a patent and is a
reason for compulsory licensing. It is a case that meets three
criteria under the “Essential facilities doctrine”, including:
(i) a refusal to license a patent prevents the emergence of a
product new or new service that potential customers need;
(ii) there is no good cause to justify the refusal to license
the right to use the patent; (iii) that refusal has removed
competitors from the secondary market.79
On the other hand, the laws of Vietnam and some
other countries provide that refused to sign a voluntary
patent licensing contract when the requesting party has
reasonable commercial conditions as a basis for
compulsory licensing of patents. The reason for allow CPL
in case the patent holder refuses to transfer the right on the
basis of a voluntary contract may be: (i) the patent holder's
refusal to transfer the right to use the patent to another
person in demand even though he or she has offered
reasonable commercial terms that can increase a monopoly

79
Makan Delrahim, note (239), tr.5.

149
position and market dominance thereby limiting the
quantity of product put on the market and increasing the
price of the product. The monopolies obtained from patents
often influence the price fixing of products. But if the
protected patent is transferred the right to use it to one or
other subjects wishing to use it, there will be competitive
products in the market and so the product price in the
market must be competitive, thus can reduce the price in
the market and increase the quantity of products supplied
to the market. In this case, giving CPL to people in need
has increased competition in the market, limiting the
monopoly abuse of patent owners; (ii) the patent system
will really fail to achieve the purpose of disseminating
knowledge for society and serving the interests of society
if a third person who wants to use the patent cannot use it
despite offering a reasonable price and terms of trade.
Fourth, the holder of the exclusive right to use the
patent is considered to have engaged in anti-competitive
behavior prohibited by the provisions of the law on
competition.

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 This is the first time Vietnamese law stipulates that
the holder of an exclusive right to use a patent commits
anti-competitive behavior prohibited under competition
law as a reason for compulsory patent licensing,
demonstrating the close relationship between the
Competition Law and the IP Law in the protection of IP
rights. But unfortunately in reality at present in Vietnam, it
is difficult to force the licensing of patents for anti-
competitive acts prohibited under the Competition Law
because of the lack of legal basis for determining any
specific anti-competitive behavior may be subject to
compulsory licensing of an patent. The Law on Intellectual
Property of Vietnam has provisions on the application of
competition law in the field of IP in two main contents: (i)
provisions on unfair competition acts related to industrial
property rights; (ii) provide for the compulsory application
of patent licensing as a remedy for anti-competitive
practices prohibited under the Competition Law. However,
the anti-competitive practices prohibited under competition
law are very broad, including prohibited anti-competitive
agreements, provisions on prohibited abuses of a dominant

151
market position, regulations on abuses of monopoly
position are prohibited, cases of economic concentration
are prohibited. For these acts, various sanctions can be
applied of which CPL is just one of them. Furthermore, it
is not possible to force patent licensing for all of the above
anti-competitive practices. Therefore, in order to be able to
enforce competition law related to IP in practice, it is
necessary to have a guiding document on this issue, in
which, regarding the compulsory licensing of patents, It is
necessary to clearly and specifically define anti-
competitive practices prohibited by competition law that
may result in forced licensing of patents, concepts such as
"monopoly abuse", "unreasonably high prices", etc.
reasonable”, “below producer price”, “relevant market”,
patent pool, principles of determining secondary market,
related market, technology market, market In the patent
market, abuse of the dominant position in the market in the
field of IP... it is also necessary to clearly stipulate in the
law to create a basis for consideration and decision on

152
compulsory licensing of patents because The field of patent
is a very special field.80
Fifth, the use of patents to meet the needs of drugs
for disease prevention and treatment of other countries are
eligible for import under international treaties to which the
Socialist Republic of Vietnam is a contracting party.
Conditions to be complied with in CPL
With CPL, the licensing of use rights is decided by
a competent state agency without depending on the will of
the patent holder, but the state needs to protect the
legitimate rights and interests of the patent holder ensuring
the harmony between the interests of the patent owner and
the interests of society.81 Therefore, although it is for the
law of member countries to regulate most of the issues of
compulsory licensing of patents, the TRIPS Agreement
requires these countries to comply with the conditions
established in Article 31 of the Agreement. Prior to that, the
Paris Convention 1883 also set out a number of conditions

80
See Le Thi Nam Giang (2013), Compulsory licensing of inventions and
public health protection issues, HCMC National University Publisher.
81
See Le Thi Nam Giang (2009), "The principle of balancing the interests of
intellectual property owners and the interests of society in compulsory
licensing of inventions", Journal of Legal Science, No. 06, p. 42-50.

153
that members must comply with in compulsory licensing of
patents. As a member of the Paris Convention 1883 and the
TRIPS Agreement, Vietnamese law has stipulated the
mandatory conditions to be complied with in the
compulsory licensing of patents in accordance with the
requirements of these international treaties.
In Vietnam, according to the provisions of Clause 1,
Article 146 of the Intellectual Property Law, the CPL is
required to comply with the following conditions:
First, the license is non-exclusive. This is also the
condition specified in Article 5, Section A, Point 4 of the
Paris Convention, Article 31, Point d of the TRIPS
Agreement.
Second, the licensed use right is limited to the scope
and duration sufficient to satisfy the transfer target, except
for the case specified at point d, clause 1, Article 145 of the
IP Law. These conditions are set forth in Article 5, Section
A, Point 4, Paris Convention, Article 31, Point c of the
TRIPS Agreement. For patents in the field of
semiconductor technology, the licensing of use rights is
only for public, non-commercial purposes or to deal with

154
anti-competitive behavior in accordance with competition
law.
Third, the licensee of the use right may not assign
that right to another person, except for the case of the
transfer together with his business establishment and may
not transfer the secondary use right to another person. This
condition is specified in Article 5, Section A, Point 4 of the
Paris Convention, Article 31, Point e of the TRIPS
Agreement.
Fourth, the licensee must pay the holder of the
exclusive right to use the patent the agreed-upon
compensation. In case no agreement is reached, the
Government's regulations shall apply, unless the right use
the patent transferred under a compulsory decision to
import pharmaceutical products under the mechanism of an
international treaty to which the Socialist Republic of
Vietnam is a contracting party and the compensation for the
use of the transferred invention under the decision required
to have been paid in the exporting country.
According to Article 24 of Decree 103/2006/ND-CP
dated September 22, 2006, detailing and guiding the

155
implementation of a number of articles of the Intellectual
Property Law on industrial property, the compensation
price for the right to use patents by compulsory decision is
determined according to the economic value of the
transferred use right, taking into account the following
factors:
- The price of licensing the right to use the patent
under the contract;
- Funds for investment to create inventions, which
must take into account the funding supported from the state
budget (if any);
- Profits from the use of the patent;
- The remaining validity period of the protection
title;
- The degree of necessity of licensing the patent;
- Other factors that directly determine the economic
value of the transferred use right.
However, the compensation price bracket is not to
exceed 5% of the net selling price of the product
manufactured under the patent, provided that the principles

156
specified in Clause 1, Article 24 of Decree No.
103/2006/ND-CP are observed.
Fifth, the right to use is transferred mainly to supply
to the domestic market, except for the cases specified at
Points d and đ, Clause 1, Article 145 of the IP Law.
Sixth, additional conditions for compulsory
licensing of patents in order to use dependent patents.
In case the patent use right is transferred in order to
use the dependent patent, the compulsory licensing of the
patent must also satisfy the following conditions:
- The holder of the exclusive right to use the basic
patent may also license the right to use the dependent patent
under reasonable conditions;
- The licensee of the right to use the basic patentmay
not assign such right, except in the case of assignment
together with the entire right to the dependent patent.
Competent agencies issue decisions on compulsory
licensing of patents
Agencies competent to issue decisions on
compulsory licensing of patents in Vietnam include:

157
 - The Ministry of Science and Technology shall
issue a decision on licensing of a patent on the basis of
consideration of the request for license of the use right, for
the cases specified at Points b, c and d, Clause 1, Article
145 of the IP Law.
- Ministries and ministerial-level agencies shall
issue decisions on licensing of patents under their state
management when the cases specified at Points a and dd,
Clause 1, Article 145 of the Intellectual Property Law occur,
on the basis of consult the Ministry of Science and
Technology.82
Thus, according to Vietnamese law, the authority to
consider and issue decisions on CPL is regulated based on
two groups of grounds for compulsory licensing of patents
for the benefit of the country or the public interest and from
violations of obligations or violations of the law of the
patent holder. However, the coordination mechanism
between functional agencies in compulsory licensing of
patents has not been specified by law.

82
Clause 1 Article 147 IP Law.

158
 Unlike many countries in the world, in Vietnam, the
competition authorities and courts do not have the authority
to grant compulsory licensing of patents for anti-
competitive practices prohibited by competition law, of
which authority belongs to the Ministry of Science and
Technology of Vietnam.
Procedures for granting decisions on compulsory
licensing of patents
Any organization or individual who has the ability,
duty or need to use the patent as prescribed at Points a, b
and c, Article 145, Clause 1 of the IP Law or is hindered
from competition specified at Points d Clause 1, Article 145
of the Intellectual Property Law, all have the right to
request the competent authority to issue a decision on
compulsory licensing of their patent.
A dossier of request for a decision on compulsory
licensing of an patent must meet the provisions of Section
2 Chapter 2 of Circular 01 dated February 14, 2007.
Accordingly, a dossier of request for a decision on
compulsory licensing of a patent licensing of inventions
must include the following documents: (i) 02 copies of the

159
request form CPL; (ii) Documents proving that the request
to issue a decision to force the transfer of the right to use
the patent has a valid basis in accordance with the
provisions of law; (iii) Power of attorney (if applying
through a representative); (iv) Fee payment documents.
In addition to that general requirement, depending
on the reason for requesting the issuance of a decision on
compulsory licensing of an patent, Vietnamese law requires
corresponding documents in accordance with the
provisions of Circular 01/2007/TT-BKHCN.
Procedures for handling dossiers of request for
decision on CPL are specified in Chapter II, Section 2 of
Circular 01/2007/TT-BKHCN. Accordingly, the
procedures for handling dossiers of request for decision on
CPL are regulated according to two groups of reasons for
requesting CPL: (i) for the reasons specified at Point a,
Clause 2, Article 145 of the Intellectual Property Law; (ii)
for the reasons specified at Points b, c, d, Clause 2, Article
145 of the Intellectual Property Law.

160
 CHAPTER 4: INDUSTRIAL DESIGN
4.1. DEFINITION AND NEED FOR PROTECTION
OF INDUSTRIAL DESIGN RIGHTS
4.1.1. Definition
A product or goods, when put on the market, usually
meets the standards of quality (internal) and design
(external). Consumers often choose to use a product on the
market based on its technical, technological, quality or
design standards. If the patent is a technical solution to
improve the quality of the product, or improve the
technology of the product; trademark is a product
identification solution to distinguish branded products from
similar products on the market; Industrial design is an
artistic solution that helps to enhance, separate and
characterize products, create new functions through
appearance, and help distinguish that product from other
products. the same type based on the product's appearance.
Because industrial design is an aesthetic solution, it can be
seen that industrial design is the intersection between
aesthetic and functional characteristics of a product.
Product designers often design products whose appearance

161
matches the aesthetic tastes of consumers as well as the
product's functions.83
For a completely new product on the market,
consumers often tend to choose based on the product's
external design (color, style) of the product, the
combination of color elements, materials as well as other
product characteristics. 84 The external appearance of the
product can exist under the product's three-dimensional
properties (product design) or two-dimensional product
features such as the product's decoration, pattern, color, or
a combination of all of them. 85 Products bearing an
industrial design are understood as objects, tools,
equipment, vehicles, or parts used to assemble or combine
such products, which are produced by industrial or manual

83
WIPO's Secretariat (2002), Standing committee on the law of trademarks,
industrial designs and geographical indications, SCT/9/6, Industrial design
and their relation with works of applied art and three-dimensional marks,
appendix, p. 3.
84
See Janneke Blijlevens, Marielle E.H.Creusen and Jan P.L. Schoormans
(2009), “How consumers perceive Product Apperance: The Identification of
three product appearance attributes”, International Journal of Design, 3(3),
p. 27-35.
85
WIPO (2006), Looking Good: An introduction to Industrial Designs for
Small and Medium-sized Enterprises, WIPO Publisher, No. 498, p. 3.

162
methods, has a clear structure and function, circulates
independently.86
Although the internal and external characteristics of
the product exist side by side, from the very beginning, for
a product that consumers have never known or never used
before, the external factors of the product will determine
the choice of the consumer. Through the use process,
consumers base on the quality of the product to decide
whether to continue buying that product or not. In other
words, the appearance of the product is the message that the
manufacturer wants to send to the consumer through the
combination of style, color, shape, line shown on the
product or on the packaging. package of the product. For
many consumer products, the product's external design is a
fundamental determinant of consumer choice and
satisfaction.87

86
Point 33.2.b, Consolidation document No. 07/VBHN-BKHCN dated
December 29, 2017 consolidating circulars guiding the implementation of
Decree No. 103/2006/ September 22, 2006 of the Government detailing and
guiding the implementation of a number of articles of the IP Law on industrial
property (Consolidated Document No. 07/VBHN-BKHCN).
87
Allan J. Kimmel (2015), People and Products: consumer behavior and
product design, Routledge Publisher, p. 234.

163
 Because of the importance of the product's
appearance to its consumption in the market, the creation
of designs with uniqueness and difference from similar
products existing in the market. The market is the way the
product is shaped in the mind of the consumer. For example,
fresh milk products and fruit juices are contained in bottles
designed to help consumers associate a slim, balanced and
healthy body; products that are children's learning tools are
designed with funny designs and cheerful colors to help
create excitement and motivation for children to study;
Sports products are designed with minimalism, giving
consumers a feeling of dynamism and health when
choosing to buy products. Or, with the adjustment of
product design, a business can direct its products to
different groups of customers depending on different ages,
interests, genders and needs. Footwear produced by Biti's
company has many types to serve many groups of
customers with different needs and interests such as sports,
jogging, cross-country running, walking, summer shoes,
beach shoes... for children, young men, women, the elderly,
amateur athletes, professional athletes… When a business

164
creates many attractive and attractive new designs and
models to attract customers, the business itself That creates
a new potential market. This is very helpful in positioning
the product in the hearts of consumers. At the end of 2016,
Biti's company launched Biti's Hunter product line, which
was strongly supported by young people and students in
Vietnam. When Biti's shoe designs are chosen by a large
number of young Vietnamese, the Biti's brand is more
advanced in the minds of Vietnamese consumers.
In fact, disputes related to the external design of
products are very common both in the world as well as in
Vietnam. Typically, there is a dispute between Apple and
Samsung over the design of the iPhone 3GS and Galaxy S
i9000 products. Accordingly, Apple believes that Samsung
has violated the design of its iPhone 3GS product and asks
Samsung to compensate for damages. In 2012, a US court
ruled that Samsung must pay Apple a sum of up to $ 1
billion. The lawsuit between Apple and Samsung related to
the design that took place in the United States was the
opening for a series of lawsuits in other countries and
territories such as Korea, Europe ... later.

165
 Thus, it can be seen that industrial design is one of
the important objects of IP rights. In a product circulated on
the market can contain many objects of IP rights. For
example, in an iPhone, many objects of IP rights are
protected, such as copyrights, patents, industrial designs,
semiconductor integrated circuit layout designs and
trademarks.
Regarding the definition of industrial design, it can
be seen that the TRIPS Agreement does not stipulate what
is an industrial design, instead, the TRIPS Agreement only
sets forth protection requirements (Article 25) and
protection (Article 26). Before the TRIPS Agreement, the
Paris Convention on Industrial Property did not define what
an industrial design was. Instead, Article 5quinquies of the
Paris Convention emphasizes that "industrial designs must
be protected in all member states of the Union". Thus, it
can be seen that neither the Paris Convention nor the TRIPS
Agreement sets forth the definition of an industrial design.
This means that WTO member countries have the right to
define their own industrial design in a way that harmonizes
international law and national law to the maximum extent.

166
 The definition of an industrial design was first
recorded in the Ordinance on Protection of Industrial
Property. 88 In clause 3, Article 4 of the Ordinance on
Protection of Industrial Property stipulates that "an
industrial design is the external appearance of a product
represented by lines, shapes, colors, or a combination of
those elements, with novelty to the world and used as a
model for manufacturing industrial or handicraft
products”. This definition of industrial design is still
maintained in Article 784 when the Civil Code of 1995
replaced the Ordinance on Protection of Industrial Property.
In the definition of an industrial design in Article 784 of the
Civil Code 1995, it can be seen that this is not purely a
definition explaining what a design is, but also includes
conditions for a design to be protected reflected in the
paragraph “new to the world and used as a model for
manufacturing industrial or handicraft products”
In 2005, when the IP Law was promulgated, the
definition of industrial design was built in a more concise

88
Ordinance on protection of industrial property of the State Council No. 13-
LCT/HDNN8 dated 28/1/ 1989 (Ordinance on protection of industrial
property).

167
direction. Specifically, Clause 13, Article 4 of the previous
IP Law stipulates that "industrial design is the external
appearance of a product expressed by shapes, lines, colors
or a combination of these elements". Other factors that are
conditional on protection mentioned in the Civil Code in
1995 as "new to the world and used as a model for
manufacturing industrial or handicraft products" are
separated into a new law. The definition of industrial design
in Article 4, Clause 13 of the IP Law is shorter and more
concise than the previous definitions. In particular, the
omitted parts of Article 784 of the 1995 Civil Code are
incorporated into the provisions on conditions for
protection of industrial designs in Article 64. However, the
above-mentioned concept of industrial design reveals some
disadvantages when (i) focus only on the product's external
appearance and not on the product's parts. A product can in
fact be assembled with many different parts to assemble
into a composite product. In principle, if the product or
complex product meets the statutory conditions, it will be
protected; (ii) disregarding the characteristic of an
industrial design that is visible in the process of exploiting

168
the use of that product or complex product. Because of the
above disadvantages, when the IP Law was revised in 2022,
the concept of industrial design was revised and
supplemented to overcome the two disadvantages
mentioned above. Specifically, Article 13 of the
Intellectual Property Law stipulates that “an industrial
design is the external appearance of a product or part to be
assembled into a complex product, represented by shapes,
lines, colors or combinations. combination of these factors
and is visible in the process of exploiting the use of the
product or the complex product”.
4.1.2. The need to protect industrial design rights
Currently, with 3D printing technology developing
more and more popular, besides the benefits brought by this
technology, it is easier to infringe intellectual property
rights both in terms of time and space. time. Objects of IP
rights such as patents, industrial designs, copyrights... can
all be infringed by 3D printing technology.89 3D printing

89
Katja Lindroos, Hang Nguyen HB (2018), Review on 3D printing,
Intellectual Property and Innovation- Insight from Law and Technology
(editor) Rosa Maria Ballardini, Liikejuridiikka Digitalisaation, tietosuojan ja
yhteisöoikeuden kehitys ja haasteet, Kauppakamari, No. 1/2018, p. 165.

169
technology will help reduce production costs as well as
shorten the time of infringement for IP objects in general
and industrial designs in particular.90 An end-user can rely
on computer aided design (CAD) files to print 3D products
from a 3D printer. In fact, CAD files are often provided and
disseminated by intermediary organizations
(intermediaries) usually websites, these websites often
provide and share to Internet users who are members
participating in those websites. If an individual only uses
the above CAD file and prints 3D products for personal use
(non-commercial use), it is not considered an infringement
of industrial design rights. However, when the
aforementioned intermediary organizations use CAD files
to provide users with commercial purposes, the rights and
interests of the right holder are infringed. For example, a
person can create a large number of products for the
purpose of trading and exchanging on the market.
Especially, when this behavior takes place on the Internet,
it is difficult to predict the economic damage that a right

90
Lucas S. Osborn (2019), 3D Printing and Intellectual Property, Nxb.
Cambridge, p. 22.

170
holder may suffer. Protection of intellectual property rights
in general, and rights to industrial designs in particular,
need to be thoroughly implemented in order to protect the
results of creative activities, especially when technology is
increasingly developed and the law does not include all the
possibilities of future technology.
According to a statistic made in the European Union
in 2002, the reason for industrial design protection is
mainly to avoid copying product designs. This is a very
important reason because this reason accounts for 70% of
91
the above statistics. To create a new, strange,
extraordinary, unique, different or breakthrough design for
a product is a process of thinking, creative brain work of
individuals, organizations as well as individuals. is the
financial investment to create that style. Design or product
design is a factor that directly affects the choice of products
for consumers when there are many products of the same
type in the market or consumers have never used the
product before. In terms of time, creating a design for a
product can take many years, however, a few months after

91
IPO, note (3), p. 5.

171
the product is put on the market, it is possible to see
products with similar designs and patterns on display, sold
on the market. The fact that products are copied has become
common for many types of products used in people's daily
life such as motorcycles, cars, phones and phone
accessories, rice cookers. electricity, watches, smart
watches, handbags, shoes, furniture, toys... The protection
of industrial design rights is also the recognition of the state
agencies' values of creativity activities brings.
In some cases, the design of the product is the factor
that brings surplus value to the product. The design of the
product makes the product attractive and attracts the
consumer's attention,92 even in some cases distinguishing
products of the same type. For that reason, the protection of
industrial design rights is one of the essential business
development strategies that any business entity focuses on
to ensure the position of its products in consumer mind.
The protection of the rights to industrial designs
helps business entities increase their ability to compete
equally in production and business activities, against acts

92
IPO, note (3), p. 4.

172
of infringing upon rights to designs such as imitation,
reproduction, copy product design, causing confusion
among consumers. When the state protects the right to a
design, it means that the owner of the right has the
exclusive right to exploit and use his product during the
protection period. This gives the right holder a return on the
investment spent in creating that style. Besides, the design
of the product is the property of the business. Therefore,
when the design is protected, it will increase the value of
the product itself as well as the value of the business.
Because, the more successful the design, the higher the
value of the company that owns the design, the company
can exploit the design by itself or transfer or transfer that
design to other subjects.93 In short, the protection of designs
has many meanings at different levels from the government,
consumers and business entities.
4.2. RELATIONSHIP BETWEEN INDUSTRIAL
DESIGNS AND OTHER IPR RIGHTS
Industrial design is a special object among industrial
property rights when the industrial design itself has

93
IPO, note (3), p. 5.

173
interference with other objects of IP rights. This
interference in some cases creates complex legal issues for
international law as well as national law.
4.2.1. With copyright
In some cases, an object may be protected by
copyright in the form of a work of fine art or applied art
according to the provisions of Article 14, Clause 1, point g
of the Intellectual Property Law. According to the
provisions of Decree 22/2018/ND-CP:
- A work of applied art is a work represented by lines,
colors, shapes and layouts with useful features, which can
be attached to a useful object, produced manually or
industrially. such as: Graphic design (expression of logos,
identity systems and product packaging), fashion design,
product styling, interior design, decoration.94
From the definition of a work of applied art, it can
be seen that these definitions have a lot of similarities with
the definition of industrial design when all these definitions
protect objects that are shapes, lines, color… A product
packaging can be protected as a work of applied art, but can

94
Clause 2, Article 13 of Decree 22/2018/ND-CP.

174
also be protected as an industrial design. Therefore, there
has been a case where a product is protected as an industrial
design and a similar product is protected as a copyright (for
applied art works) for product packaging. In such cases, in
order to resolve disputes, besides the provisions of law,
competent state agencies must also consider other factors
such as the goodwill of the subject in creating or registering
object, whether the subjects know or do not know about the
existence of the other design in the production and business
process, whether there is an element of unfair competition
or not to serve as a basis for dispute settlement.
In principle, the packaging design of a product can
be protected by copyright law and industrial property law.
In that case, the owner of the right object can consider the
following issues to be able to choose a plan to protect his
IP rights, in order to protect his legitimate rights and
interests in an optimal way:
- First, the procedure for establishing rights.
Copyright arises since the work is created and expressed in
a certain material form, regardless of content, quality, form,
medium, language, has been published or unpublished,

175
registered or unregistered. 95 Although the law does not
require a work to be registered for copyright to be protected,
registration offers certain advantages to the copyright
owner in waiving the burden of proof in the event of a
dispute. 96 In other words, copyright registration is not a
mandatory procedure. Meanwhile, the right to an industrial
design is established on the basis of a decision on granting
a protection title by a competent state agency according to
the registration procedures prescribed in the IP Law.97 In
fact, the procedure for registration of copyright protection
is much shorter than that of an industrial design (due to the
determination of protection conditions). The copyright
registry is the Copyright Office, while the industrial design
registry is the National Office of Intellectual Property.
- Second, the term of protection. One of the issues
that need to be taken into account when considering
registration for protection is the term of protection. The
term of copyright protection for works of applied art is fifty

95
Clause 1 Article 6 IP Law.
96
Clause 3 Article 49 IP Law.
97
Point a clause 3 Article 6 IP Law.

176
years from the time the work is first published.98 For visual
works, the term of protection is for the life of the author and
for fifty years following the year of the author's death or the
99
last co-authors died. Meanwhile, the total term of
protection of industrial design rights can be up to 15 years
(if extended) from the date of filing the design registration
application with the competent state agency. Thus, the term
of copyright protection is much longer than the term of
industrial design.
4.2.2. With trademarks
A trademark, as defined in Clause 1, Article 72 of
the Intellectual Property Law is “a visible sign in the form
of letters, words, drawings, images, holograms or a
combination of such elements, represented by one or more
colors or sound marks represented graphically”. Industrial
designs that protect the external appearance of products or
parts for assembly into complex products are represented
by shapes, lines, colors or a combination of these
100
elements... Industrial design can be composed of

98
Point a clause 2 Article 27 IP Law.
99
Point b clause 2 Article 27 IP Law.
100
Clause 13 Article 4 IP Law.

177
elements that make up 2 dimensions (colors, lines) or 3D
(three dimensions - shapes). Thus, from the above
provisions, it can be seen that the existence of interference
between industrial designs and trademarks exists.
Especially for the external design of the product, when
these designs achieve distinctiveness (helping consumers to
distinguish that product and similar products in the market),
then the design of products can be transformed into brands,
the case of Coca-Cola soft drink bottle is a typical example.
When an object can be protected as an industrial design or
as a trademark, the owner also needs to consider how to
protect it in accordance with the business strategy,
including the protection period. For trademarks, the term of
protection is ten years from the date of grant to the end of
ten years from the date of filing the application, which can
be renewed for several consecutive times, each ten years.
Thus, the term of protection for a trademark is longer than
that of a industrial design.
4.3. CONDITIONS FOR PROTECTION OF
INDUSTRIAL DESIGNS

178
 Because of the exclusive rights that the law grants to
the owner of the title during the term of protection, an
industrial design must meet certain conditions in order to
be protected. The question of conditions for protection of
designs is generally provided for in the TRIPS Agreement
as follows: Members must protect independently created
new or original industrial designs. Members may provide
that an industrial design shall not be considered new or
original if it does not differ substantially from known
designs or from combinations of design features of known
designs. Members may provide that such protection does
not apply to designs whose form is determined primarily by
technical and functional characteristics...101
Novelty, also known as originality, is imposed on
the law on industrial designs, according to which, a design
to be protected must be novel or original. The novelty of
the design is the fundamental reason for granting
exclusivity to the holder of the degree, who has created the
design through his or her own creative work. Although the
laws of all countries require novelty, the requirements for

101
Article 25 of the TRIPS Agreement.

179
novelty are not the same from country to country. Most
countries claim absolute novelty and have not been
revealed anywhere by any means worldwide. Conversely,
in some cases, countries set standards for novelty. Novelty
in this case is calculated for a certain period of time, space
and territory.102
Previously, according to the provisions of Article
784 of the Civil Code of 1995, the novelty of an industrial
design must be "new to the world". However, the current
regulations no longer use the above phrase. It is necessary
to set the condition of novelty because the owner of the
right to the design will have the right to the design protected
by the competent authorities for the duration of the
effective protection period. The protection of designs is to
ensure the creativity of the subjects, contributing to the
development of society. Because the protection of an
industrial design requires the participation of many
competent state agencies, the design itself must be novel in
order to contribute to the general artistic values. If it does

102
WIPO (2004), WIPO Intellectual Property handbook: Policy, Law and
Use, p. 115.

180
not meet the novelty, the protection of the industrial design
will become meaningless.
According to the guidance in the Consolidated
Document No. 07/VBHN-BKHCN, in order to evaluate the
novelty of the industrial design stated in the application, the
examiners must compare the set of basic design features of
the industrial design with a set of basic design features of
each reference industrial design found in the information
103
search process. Two industrial designs are not
considered to be significantly different from each other if
they are only different in design features that are not easily
recognizable, memorable and cannot be used to distinguish
the two industrial designs as a whole.104
On the basis of the above assessment, the examiners
can conclude about the novelty of the industrial design.
Specifically as follows: an industrial design is considered
new if the examiner does not find the reference industrial
design in the required minimum information source during
the examination; or although the examiner finds the

103
Point a, Section 35.7, Consolidated Document No. 07/VBHN-BKHCN.
104
Clause 2 Article 65 IP Law.

181
reference industrial design in the mandatory minimum
information source, the industrial design stated in the
application is considered different from the reference
industrial design; or the reference industrial design is the
industrial design stated in the published application in the
cases specified in Clauses 3 and 4, Article 65 of the
Intellectual Property Law.
According to the provisions of Clause 4, Article 67
of the Intellectual Property Law, a design shall not be
deemed to have lost its novelty if it is published in the
following cases, provided that the industrial design
registration application is filed within six months from the
date of publication:
- The industrial design is announced by others
without permission of the person having the right to register
the industrial design;
- The industrial design is published by the person
having the right to registration in the form of a scientific
report;
- The industrial design is displayed by the holder of
the right of registration at a national exhibition of Vietnam

182
or at an official international exhibition or is recognized as
official.
In addition, according to the provisions of Clause 3,
Article 67 of the Intellectual Property Law, an industrial
design is considered to have not been publicly disclosed
(leading to loss of novelty) if only a limited number of
people know it and are obliged to keep it secret. With this
regulation, it can be understood that the people who know
the industrial design are usually those who have an
employment relationship with the owner of the industrial
design. In fact, companies often enter into confidentiality
agreements with employees to ensure that employees will
not disclose trade secrets (generally) or disclose related
information publicly. Therefore, if only a limited number
of people know and are obliged to keep it secret, the design
is still not considered to have been disclosed, leading to a
loss of novelty. Conversely, the design will lose its novelty
if the secret about the design is revealed publicly. However,
the current law still does not clarify what is meant by “only
a limited number of people” or in other words, the number
of people who know the industrial design in this case is a

183
qualitative number. Or quantitative? The IP law needs to
have clearer guidance on this issue to avoid disputes that
may arise in the future.
4.3.2. Creativity
The previous requirement for creativity as stipulated
in Article 784 of the Civil Code of 1995 was not set.
However, for an industrial design to be protected, it must
first be the result of a creative intellectual process.
Therefore, it is absolutely necessary that the Intellectual
Property Law sets the conditions on creativity. An
industrial design is considered to be creative if it is based
on industrial designs that have been publicly disclosed in
the form of use, written description or any other form in the
country or abroad other than before the filing date or prior
to the priority date of the industrial design registration
application in the case of a priority right, the industrial
design cannot be easily created by the average person on
the respective field.105 A person with average knowledge of
the respective field is understood to be a person who has

105
Article 66 IP Law.

184
the usual technical practical skills and is well aware of the
general knowledge in the respective technical field.106
However, to assess the creativity of an industrial
design, the examiner must compare the set of basic design
features of that industrial design with the set of basic design
features of the reference industrial designs found during
information search. On the basis of the assessment, the
examiner can conclude whether the creativity of the design
meets the creativity or not. Specifically, a design is
considered non-creative if the design is merely a
combination of known poses (changing position, increasing
or decreasing the number of posing features);
copying/imitating part or all of the inherent natural shapes
of trees, fruits, animals…, geometric shapes (circle, ellipse,
triangle…) that are widely known; simply copy the shape
of works products that are famous or widely known in
Vietnam or in the world; industrial design simulation in
other fields (cars, motorbikes simulation toys...). If a design

106
Point 23.6.a, Consolidated Document 07/VBHN-BKHCN.

185
does not fall into the above cases, then that industrial design
is considered to be creative.107

4.3.3. Susceptibility of industrial application of

industrial designs
Regulations on industrial applicability of designs
were previously recorded in Article 784 of the Civil Code
of 1995. The Intellectual Property Law recorded this
provision, whereby “industrial designs are considered to be
capable of industrial application. industrial design if it can
be used as a model for mass production of products with
the appearance of such industrial design by industrial or
handicraft methods"108. The purpose of the regulation on
the industrial applicability of industrial designs is to
promote the production and business activities of business
entities, to ensure that the protected products have the same
appearance as together.
A design is considered to be industrially applicable
if, based on the information on the industrial design

107
Point 35.8, Consolidated Document 07/VBHN-BKHCN.
108
Article 67 IP Law.

186
presented in the application, a person with average
knowledge in the respective field can use that industrial
design to serve as samples for manufacturing by industrial
or manual methods of products whose appearance
coincides with that industrial design.109
An industrial design will be considered unapplicable
if:
- The design stated in the registration application is
the shape of the product whose state of existence is not
fixed (products in the gas or liquid form);
- A product with the same shape as the design stated
in the application can only be created through special skills
or it is impossible to repeatedly produce a product with the
same shape as the object stated in the application.110

4.4. SUBJECT MATTERS NOT PROTECTED WITH

INDUSTRIAL DESIGN
The objective of industrial design protection is to
encourage creativity and protect the results of creative

109
Point 35.6.a, Consolidated Document 07/VBHN-BKHCN.
110
Point 35.6.b, Consolidated Document 07/VBHN-BKHCN.

187
intellectual labor activities of individuals and organizations.
Specifically, only the object that is the external appearance
of the product (which is the shape features such as shapes,
lines, colors, or a combination of those elements) is visible
during use, exploitation and use. the use of the product in
the usual manner, to be performed by any user, excluding
maintenance, servicing or repair of the new covered
product. 111 Protecting a certain design creates exclusive
rights for the owner of the title and restricts public access
to that design for the duration of the protection. Therefore,
in some cases, some objects are not protected in the name
of industrial designs. According to the provisions of Article
64 of the Intellectual Property Law, a number of objects are
not protected in the name of industrial designs.
4.4.1. Appearance of a product, which is dictated by the
technical features of the product
Industrial design focuses on protecting the external
appearance of a product when that shape has certain distinct
aesthetic characteristics. In the case of the product's
external appearance, if it has required technical

111
Point 35.3.a, Consolidated Document 07/VBHN-BKHCN.

188
characteristics, that shape of the product is not protected.
For example, for the shape of a soft drink can, a beer can
must be a circular cylinder to evenly spread the water
pressure on the can (the same technical problem explains
the shape of water pipes, liquid tankers...). In other words,
if the shape of the product bears the required technical
characteristics of the product, that shape must be the
property of the community and can be accessed by any
individual or organization without restrictions from any
individual or organization. Assuming an individual or
organization is protected for a product with a required
shape due to the product's technical characteristics, it will
create chaos in the production and business of the whole
society. Because, in that case, the holder of the title may,
by his exclusive right, impose a condition that allows or
prohibits an individual or organization from producing a
product with a design similar to the design. protected form.
As a result, production and business activities in the society
in general will be affected, the economy cannot progress,
or the cost of products is inflated, because business entities
have to pay the owners of the documents. equal. More

189
seriously, the legitimate rights and interests of the
community are violated in this case. Therefore, for products
whose designs are required by the product's specifications,
such designs are not protected to ensure public access.
In addition, it can be seen that for the external
shapes of the product due to the mandatory technical
characteristics of the product, it is difficult to meet the
requirements for novelty or creativity of that design. On
that basis, products with the above appearance will not be
protected.
4.4.2. Appearance of a civil or an industrial
construction work
According to the provisions of Clause 10, Article 3
of the Law on Construction 2014, “a construction work is a
product made up of human labor, construction materials,
and equipment installed in the work, linked and located at
the site of the building. with land, which may include below
ground, above ground, below water and above water, built
according to design. Construction works include civil
works, industrial works, traffic works, agriculture and rural

190
development works, technical infrastructure works and
other works.”
According to the provisions of the National
Technical Regulation Principles of classification and
classification of civil, industrial works and urban technical
infrastructure promulgated by the Minister of Construction
together with Circular 12/2012/TT-BXD112 then:
- Civil works are construction works including
houses, houses and public works.
- Industrial works are places in which industrial
production and production service processes take place,
located in factories, enterprises, industrial parks, including
production houses (workshops); production operator;
works for production (medical, dining, daily life, rest,
entertainment, learning, culture, services, warehouses,
traffic...) and technical works (electricity, water supply -
drainage, ventilation, waste treatment, fire prevention...).

112
Circular 12/2012/TT-BXD on national technical regulations on principles
of classification and decentralization of civil, industrial and urban technical
infrastructures issued by the Minister of Construction on 28/12/ 2012.

191
 For these construction works, the construction is
carried out on the basis of design drawings according to
regulations of competent state agencies. Drawings of
construction works are protected as architectural works113
under the provisions of copyright. The fact that an
individual or organization uses a design drawing owned by
another entity to create a construction work according to
such design drawing is considered an infringement of
copyright without the consent of an individual or
organization. intention of the copyright owner or author.
However, the construction work itself is not the object of
protection in the form of industrial property rights for the
external appearance of such construction. This means that
one subject can simulate and reconstruct the works of other
subjects without being considered as a violation of the
design rights. In other words, a house, a bridge cannot be
protected as an industrial design, only the design drawings
of these works are protected under copyright.
It should be noted that according to the provisions of
Clause 2, Article 64 of the IP Law, the external appearance

113
Point i clause 1 Article 14 IP Law.

192
of civil or industrial construction works is not protected in
the name of industrial designs. However, this provision
does not apply to “the outward appearance of modules or
separate units that can be used independently or assembled
together to form a building such as shops, buildings,
automobile, caravan, or similar product”.114
4.4.3. Shape of a product, which is invisible during the
use of the product
The nature of the protection of industrial designs is
to ensure that creations related to the appearance and
external design of products avoid infringing acts of
competitors. Therefore, if a product's shape is not visible
during use, it cannot be protected as an industrial design.
Logically, if the appearance of a product is not visible
during normal use, the product is to be performed by any
user (excluding maintenance, servicing or repair work of
the product), then the protection of the design for that
product has absolutely no legal meaning. Claiming
protection in these cases will cause waste of time, effort as
well as costs (of both the competent state agency as well as

114
Point 35.3.b.(ii), Consolidated Document 07/VBHN-BKHCN.

193
the design owner), while, the possibility of being violated
by the invisible shape is almost zero. If there is a product
detail that, although not visible during the use of the
product, plays a technically important role in the operation
and use of that product, the owner can may consider
applying for protection of such product details as an
invention or utility solution.

4.4.4. Appearance of the product is contrary to social

ethics and public order
Although Article 65 of the Intellectual Property Law
does not include the above provision, however, according
to the provisions of Clause 1, Article 8 of this law, it states
that “…not to protect IP objects that are contrary to social
ethics, public order, harmful to national defense and
security”. The provisions of Clause 1, Article 8 also apply
to objects being industrial designs. An innovative toy
product for children with a unique and novel design... can
be considered for a protection title. However, if the design
of the children's toy is violent (gun, sword, knife,
weapon...), then the design of the children's toy will not be

194
protected in Vietnam. In general, the outer appearance of
any product that wants to be protected in Vietnam, in
addition to meeting the protection conditions in Article 63
of the Intellectual Property Law, the outer appearance of
that product must not be contrary to the law. social ethics,
fine customs and traditions, public order, must not be
harmful to national defense and security.

4.5. BASES AND PROCEDURES FOR

ESTABLISHMENT OF RIGHTS TO INDUSTRIAL
DESIGNS
4.5.1. Bases for establishing rights
Industrial property rights to industrial designs are
established on the basis of decisions on grant of protection
titles by competent state agencies according to procedures
specified in the IP Law or on recognition of international
registrations under treaties to which the Socialist Republic
of Vietnam is a member.115
For industrial designs, Vietnam applies the principle
of first-to-file. According to this principle, in case there are

115
Point a clause 3 Article 6 IP Law.

195
many applications for registration of industrial designs
which are identical or not significantly different from each
other, a protection title shall only be granted for the
industrial design in a valid application with a priority date
or date of registration or filing the earliest application
among those that meet the conditions for granting a
protection title.116 The principle of priority is understood
when an applicant for registration of an industrial design
has the right to claim priority on the basis of the first
application for protection of the same object under the Paris
Convention if met the following conditions defined in
Article 91 of the IP Law as follows:
- The first application has been filed in Vietnam or
in a country that is a party to the Paris Convention and the
application contains the part corresponding to the claim for
enjoyment of the industrial design registration application;
- The applicant is a Vietnamese citizen, a citizen of
a Party to the Paris Convention or resides, has a production
or business establishment in Vietnam or in that Contracting
country;

116
Clause 1 Article 90 IP Law.

196
 - The application clearly states the request for
priority right and submits a copy of the first application
certified by the agency that received the first application;
- The application is filed within a fixed time limit of
6 months according to the provisions of the Paris
Convention on Industrial Property for industrial design
registration applications.117
- Application for full payment of the request for
priority right.118
It should be noted that, in an industrial design
application, the applicant has the right to claim priority on
the basis of many earlier applications, provided that the
correspondence between the applications must be indicated
earlier than the content in the application. An industrial
property registration application entitled to priority has the
priority date of the filing date of the first application.119 The
provisions on the first filing are recorded in the IP Law and

117
Point C (1) Article 4 of the Paris Convention on Industrial Property.
118
Point đ, Clause 1, Article 10 of Decree 103/2006/ND-CP dated September
22, 2006 of the Government detailing and guiding the implementation of a
number of articles of the IP Law on industrial property (Decree
103/2006/ND-CP).
119
Clause 2, 3 Article 91 IP Law.

197
Decree 103/2006/ND-CP to guide the conditions for the
priority right under the provisions of the Paris Convention.
In addition, in case an industrial design registration
applicant wants to enjoy priority rights under another
international treaty, the claim for priority right will be
accepted if the priority right conditions are satisfied.120 This
regulation is open-ended to create favorable conditions for
diploma holders. Because, up to the present time, the Paris
Convention is still an international treaty that mainly
regulates issues related to the priority rights of industrial
property objects, but this does not completely exclude the
possibility that a new Convention may be formed in the
future concerning industrial property. This open regulation
can be said to be necessary, creating a certain flexibility for
subjects in the future industrial design registration process.
4.5.2. Procedure for establishing rights
- Filing: An industrial design registration application
may be filed at the NOIP or at other application-receiving
locations established by the NOIP. Applications may also
be mailed to the above-mentioned application-receiving

120
Clause 2, Article 10 of Decree 103/2006/ND-CP.

198
locations. A design registration application shall only be
received by a state agency with industrial property rights if
it contains at least the following information and
documents: (a) a registration declaration; (b) a description,
including a set of photographs, drawings, descriptions; (c)
proof of payment of fees and charges.121
- Formal examination: After the application is
received, NOIP conducts formal examination of the
application. The purpose of the formality examination of
the application is to check the compliance with the
regulations on the formality of the application, thereby
drawing a conclusion whether the application is considered
valid or not (evaluating the validity of the application). The
application is invalid in the following cases (a) do not meet
the requirements on form; (b) the subject matter stated in
the application is not protected; (c) the applicant does not
have the right to register; (d) the application is filed
contrary to the regulations on the manner in which the

121
Clause 1 Article 108 IP Law.

199
application is filed; (d) the applicant fails to fully pay the
prescribed fees and charges.122
The filing date is determined to be the date the
application is received by the NOIP. If the application
contains a claim for priority right (under the provisions of
the Paris Convention), the priority date is the date stated in
the above request and approved by NOIP. The time limit
for formal examination of the application is 1 month from
the date of application.123 In case the application contains
errors, the NOIP will notify the applicant to proceed with
the application within the statutory time limit.
- Publication of application. Information related to a
design registration application that has been accepted as
valid shall be published by the NOIP in the Industrial
Property Official Gazette within two months from the date
of acceptance of the valid application. An industrial design
application may be published at a later date at the request
of the applicant at the time of filing but not later than seven
months from the filing date.124 Before the time an industrial

122
Clause 2 Article 109 IP Law.
123
Clause 1 Article 119 IP Law.
124
Clause 3 Article 110 IP Law.

200
design registration application is published in the Industrial
Property Official Gazette, the state management agency in
charge of industrial property rights is responsible for
keeping the information contained in the application
confidential. Civil servants of the state management agency
in charge of industrial property rights who disclose
confidential information in industrial design registration
applications shall be disciplined; if the disclosure of
confidential information causes damage to the applicant, he
must compensate for the damage in accordance with law.125
From the date an industrial property registration
application is published in the Industrial Property Official
Gazette to the date of the decision to grant a protection title,
any third person has the right to give opinions to the state
management agencies on industrial property rights on
granting/not granting a defense title for that application.
Opinions must be made in writing, accompanied by
documents or cited information sources to support. The
written opinion of a third party is considered as a reference

125
Article 111 IP Law.

201
source of information for the processing of industrial
property applications.126 In addition to the right to express
opinions of a third person, four months from the date of
publication of an industrial design registration application,
before the date of issuance of a decision on granting a
protection title, any third party has the right to object the
grant of protection titles. Objections must be made in
writing, accompanied by documents or cited sources of
information for proof, and must pay fees and charges as
prescribed. When someone opposes an industrial property
registration application, the state management agency in
charge of industrial property rights shall handle such
objection according to the order and procedures prescribed
by the Minister of Science and Technology.127
- Substantive examination of an application: To
assess the protection ability of the object stated in the
application under the protection conditions, determine the
scope and corresponding protection volume and publish the
industrial design registration application. After that, NOIP

126
Article 112 IP Law.
127
Article 112a IP Law.

202
conducts substantive examination of the application. At this
stage, the conditions of novelty, inventiveness and
industrial applicability of the registered design will be
reviewed and appraised by examiners. An industrial design
registration application shall be subject to substantive
examination within 7 months from the date of publication
of the application.128
- Granting/refusal the grant of a title: After
substantive examination, the NOIP will issue a decision to
grant an industrial design protection title if the registered
design meets the protection conditions. Conversely, if the
registered design does not meet the protection conditions,
the NOIP will issue a decision to refuse to grant a protection
title. An application is refused to grant a protection title
when (a) there are grounds to assert that the object stated in
the application does not fully satisfy the protection
conditions; (b) there are grounds to assert that the applicant
does not have the right to register an industrial property
object; (c) an application that meets the conditions for a
protection title but is not an application with the earliest

128
Point c clause 2 Article 119 IP Law.

203
priority or filing date; (d) the application is not unified by
all applicants; (đ) the modification and supplementation of
the application widens the scope of the subjects disclosed
or stated in the application and changes the nature of the
objects of registration request stated in the application.129
- National register of industrial property, publication
of decision on grant of protection title: The industrial
design registration application is not subject to the case of
refusal to grant a protection title or the applicant has a valid
objection. Regarding the intention to refuse, the NOIP will:
(a) notify the intended grant of a protection title and set a
time limit for the applicant to pay the fee or charge or make
an objection to the intended grant of a protection title.
household; (b) decide to grant a protection title and record
it in the National Register of Industrial Property if the
applicant pays fees and charges. 130 This is a reasonable
addition to the IP Law because rights holders are
responsible for their applications. The National Register of
Industrial Property is an official and public database of the

129
Clause 1 Article 117 IP Law.
130
Clause 1 Article 118 IP Law.

204
state, which fully presents information on the legal status
of the rights to an established industrial design. All
decisions on granting protection titles shall be published by
the NOIP in the Industrial Property Official Gazette within
2 months from the date of issuance of the decision to grant
protection titles.
4.6. CONTENT RIGHTS TO INDUSTRIAL DESIGN
4.6.1. Rights and obligations of the owner
Industrial design owner means an organization or
individual that has been granted an industrial design
protection title by a competent authority or has an
internationally registered industrial design recognized by a
competent state agency. 131 The owner of the industrial
design is entitled to the rights to the industrial design within
the protection scope stated in the protection title and within
the validity period of the protection title. When there is a
dispute related to a protected industrial design, the owner
of the industrial design has the right to use the protection
title as a basis to prove his rights without any other evidence.

131
Clause 1 Article 121 IP Law.

205
 The title holder, during the term of protection, has
the following property rights:
- Use, allow others to use their industrial design. Use
of an industrial design means the performance of acts of
production, circulation, advertisement, offering or storage
for circulation or importation of products whose external
appearance is a protected industrial design.132
- Prevent others from using their industrial design.
However, the owner of an industrial design has no right to
prohibit others from using his design if the use of the
industrial design is for personal use or for non-commercial
purposes or for evaluation purposes, analyzing, researching,
teaching, testing, trial production or collecting information
to carry out procedures for applying for a license to
manufacture, import or circulate products;133 or not prevent
others from using the industrial design solely for the
purpose of maintaining the operation of foreign means of
transport that are in transit or temporarily located in the
Vietnamese territory.134

132
Article 124 IP Law.
133
Point a clause 2 Article 125 IP Law.
134
Point a clause 2 Article 125 IP Law.

206
 - To dispose of their industrial design through the
transfer of the industrial design to another subject. It should
be noted that the contract for assignment of the right to an
industrial design is only valid when it has been registered
at a competent state agency in charge of industrial property.
For an industrial design use contract, the contract takes
effect according to the agreement between the parties.
However, this contract is only legally valid for a third party
when it is registered at the state management agency in
charge of industrial property rights.135
The title owner is obliged to pay remuneration to the
author of the industrial design in case the title owner and
the author of the industrial design are not the same.
4.6.2. Rights of authors
The author is the person who directly creates the
industrial design with his intellectual labor. A design can
be created by an individual or a group. In the case of an
industrial design created by an individual, the individual is
the author of the design. However, in some cases where two
or more people directly co-create the design, these people

135
Article 148 IP Law.

207
are considered co-authors of the created design. Industrial
design authors have property rights and moral rights in
accordance with the provisions of IP law, specifically as
follows:
- Moral rights:
Authors are entitled to the following moral rights:
(i) Be listed as the author in the Industrial Design
Patent;
(ii) Being named as the author in published and
introduced documents on industrial designs.136
- Property rights: The author is entitled to
remuneration according to the agreement if the parties have
agreed on the level of remuneration. If the parties do not
agree, the minimum remuneration calculated for the author
of the industrial design is:
(a) 10% of the pre-tax profit earned by the owner
from the use of the industrial design;

136
Clause 1 Article 122 IP Law.

208
 (b) 15% of the total amount received by the owner
in each payment due to the licensing of the industrial design
right before paying the prescribed tax.137
For an industrial design that is the result of a
scientific and technological task funded by the state budget,
the owner shall pay remuneration to the author according
to the following provisions:
(a) A minimum of 10% and a maximum of 15% of
the pre-tax profit earned by the owner from the use of a
patent, industrial design or layout design;
(b) A minimum of 15% and a maximum of 20% of
the total amount received by the owner in each payment due
to the licensing of a patent, industrial design, or layout
design before tax payment according to the law.
The above remuneration is the rate for all co-authors
in case the industrial design is created by more than one
author. In this case, the co-authors themselves agree on the
division of the remuneration paid by the owner. At the same
time, the obligation to pay remuneration to the author of the

137
Clause 1 Article 135 IP Law.

209
industrial design exists throughout the term of protection of
the industrial design.138
In addition, the IP Law adds the obligations of the
lead organization for industrial designs that are the result of
scientific and technological tasks using the state budget as
follows:
(1). Notify the representative of the state owner
within thirty days from the date on which the industrial
design as a result of scientific and technological tasks using
the state budget is created.
(2). File an application for establishment of an
industrial design right as a result of a scientific and
technological task funded by the state budget in Vietnam
within six months from the date of sending the notice to the
owner's representative.
(3). Compensation for industrial design authors
(4). For scientific and technological tasks that the
State supports up to 30% of the total capital, after-tax
profits are obtained from the use, transfer of the right to use,
transfer of rights, and capital contribution with the

138
Clause 2, 3 and 4 Article 135 IP Law.

210
industrial design. corresponding to the State's capital
contribution rate after paying the author's remuneration,
which is used according to the financial management
regulations of the lead organization.
(5). For scientific and technological tasks that the
State supports over 30% of the total capital, the distribution
of after-tax profits obtained from the use, transfer of use
rights, transfer of rights, and capital contribution in the
form of designs. Industry that is the result of scientific and
technological tasks funded by the state budget after paying
remunerations to authors shall comply with the following
provisions:
(a) Pay the broker (if any) under the brokerage
contract but not more than 10%;
(b) Where science and technology tasks use the
entire state budget, at least 50% of the remaining profits
shall be used to invest in scientific and technological
activities; the remaining profits shall be used according to
the financial management regulations of the host
organization;

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 (c) Where a science and technology task is invested
with multiple capital sources, the remaining profit shall be
divided among the parties in proportion to the proportion
of capital already contributed to that science and
technology task. The portion of profits corresponding to the
State's capital contribution ratio shall be used by the
presiding organization according to the provisions of Point
b of this Clause.
(6). The lead organization that is granted a
protection title for an industrial design registered in
accordance with this Law is obliged to exercise the
industrial property rights as prescribed, implement
protection measures, and submit a report. annually to
management agencies with scientific and technological
tasks on the exercise of rights, protection measures and the
distribution of profits.139
4.7. DURATION OF PROTECTION
Because the nature of an industrial design is that the
external appearance of the product is reflected in the
aesthetic properties of the product, the design of the product

139
Article 136a IP Law.

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is influenced by factors such as consumer trends, aesthetic
trends, fashion trends… of consumers around the world.
These factors are easy to change in a short time. Therefore,
the term of protection of industrial designs is not long
compared to other objects of industrial property rights.
According to the provisions of the TRIPS Agreement, the
term of protection of an industrial design is ten (10)
years. 140 The provisions of the TRIPS Agreement are
minimal, so WTO member countries have the right to
impose a higher level of protection in the process of
internalizing the provisions of the TRIPS Agreement into
their national legislation.
According to the provisions of the IP Law, an
industrial design patent is valid from the date of grant and
lasts until the end of five years from the date of filing the
application.141 It can be renewed twice in a row, for five
years each time. The provision on the term of protection for
industrial designs in the IP Law is the successor to the
provisions at point a, clause 2, Article 9 of Decree 63 of

140
Clause 3 Article 26 TRIPS Agreement.
141
Clause 4 Article 93 IP Law.

213
1996.142 This can be said to be a considerable flexibility in
the regulation of industrial designs on the term of protection
for industrial designs of Vietnamese law compared with the
provisions on the term of protection of industrial designs in
the TRIPS Agreement.
Specifically, the total time an industrial design can
be protected under Vietnamese IP law is fifteen (15) years
from the filing date, which is higher than the minimum
level of the TRIPS Agreement. However, a period of five
(5) years from the date of application is a reasonable period
for the life of a product after it is placed on the market. The
title holder may base on the consumption trend as well as
the circulation level of the product bearing the design on
the market to consider and consider extending the
protection term of his industrial design after the expiry date
for the first (5 years), second (10 years) or not. This can
help the title holder avoid unnecessary costs in maintaining
the validity of the protection title. Therefore, in case the

142
Decree No. 63 of the Government dated October 24, 1996 detailing
industrial property. This Decree details industrial property in order to guide
the implementation of the provisions of Chapter II, Part 6 of the 1995 Civil
Code.

214
design of the product is not well received by the market or
the consumer trend towards the product design changes…
the title holder will not extend the term of protection. Thus,
the owner of an industrial design title only protects that
design for a period of five (5) years. With the provision on
the possibility of extending the protection term in
Vietnam's IP law, it helps the title holder to have more
options for the term of industrial design protection based on
the actual situation of the product but still ensure that the
provisions of IP law do not violate the minimum protection
standards of the TRIPS Agreement.
The term of protection of an industrial design
(design patent) under US regulations is 14 or 15 years,
depending on the time of filing the application.
Accordingly, if the application is filed after May 13, 2015,
the term of protection is 15 years from the date of grant,
before this time, the term of protection is 14 years from the
date of grant.143 Meanwhile, for industrial designs in the
European Union, the term of protection for community
designs is 5 years from the filing date, which can be

143
35 U.S.C. 173 Term of design patent.

215
extended up to a total term of 25 years from the date of
filing. Thus, it can be seen that, in general, countries have
different regulations on the duration of protection of
industrial design rights. This period may be calculated
differently, depending on national legislation. For example,
Vietnam and the European Union, the time limit is
calculated from the date of filing, while the United States
is counted from the date of grant.
4.8. ACT OF INFRINGEMENT OF INDUSTRIAL
DESIGN RIGHTS AND EXCEPTIONS
4.8.1. Act of infringement of industrial design rights
During the term of protection of the right to an
industrial design, the owner has the exclusive right to
exploit and use the design, prevent or allow individuals and
organizations to use his protected design. The following
acts are considered to infringe upon the rights of industrial
design owners:
- Using a protected industrial design or an industrial
design that is not significantly different from such design
during the validity period of the protection title without
permission of the owner.

216
 - Using the industrial design without paying
compensation according to the provisions on provisional
rights specified in Article 131 of the Intellectual Property
Law.144
In fact, industrial design-related disputes are not as
common as other objects of IPR such as copyright, or
trademark rights. However, as Vietnam's economy widens,
there are more and more disputes related to industrial
designs. In the first case,145 the plaintiff is T pharmaceutical
company limited, is the owner of the industrial design
patent No. 8523, issued on September 8, 2005 protecting
the industrial design "medicated plaster box". The
industrial design patent No. 8523 mentioned above is
currently valid throughout the territory of Vietnam. Since
September 2017, in Vietnam, Company P (defendant) has
used the product packaging "cold pack" with a design that
is not significantly different from the industrial design
"medicated plaster box" protected under Industrial Design
Patent No. 8523 of Company T. In addition, the defendant

144
Article 126 IP Law.
145
Judgment No. 60/2020/KDTM-PT, dated September 10, 2020 of the High
People's Court in Ho Chi Minh City.

217
also used signs similar to the plaintiff's protected trademark
to affix on product packaging, transaction documents in
business activities, on advertising media, means of business
and on other documents relating to the importation, trading,
storage for sale of "cold packs" products. The product
packaging of the "cold pack" that Company P uses has basic
styling features in terms of layout, color, and decorative
lines that are completely identical to the industrial design
of the current " medicated plaster box". protected by
Company T to the extent that the difference is
indistinguishable. The product packaging of the "cold
pack" that Company P uses has a collection of styling
features that form a whole which is a copy of the protected
industrial design of Company T. The use of the product
packaging "cold pack" with a design that is not different
from the above industrial design "medicated plaster box" of
Company P has been concluded by the Institute of
Intellectual Property Science in the Conclusion assessment
No. KD109-17YC/KLGD dated November 13, 2017 is
"contains infringing elements of the rights to the industrial
design "medicated plaster box" which is being protected by

218
the Company's Patent No. 8523 of T Pharmaceutical
Limited Company". The act of infringing upon the rights to
the industrial design of the industrial design "medicated
plaster box" and forging the AIKIDO trademark of
Company P has caused particularly serious consequences,
causing great economic and reputational damage to the
Company T on the Vietnamese market.
The first instance court accepted part of company T's
request, according to which, related to industrial designs,
company P must stop infringing on IP rights of industrial
designs of company T.
The appellate court also upheld the decision of the
first-instance commercial judgment against this claim from
the plaintiff.
In the second case, 146 the dispute between the
Plaintiff is Piaggio company and the Defendent is Joint
Stock Company E. Accordingly, the Plaintiff was
established in 1884, registered and operated under Italian

146
Judgment No. 01/2018/KDTM-ST dated October 29, 2018 of the People's
Court of Hung Yen province.

219
law and is now the world's leading manufacturer of two-
wheeled vehicles.
In the Vietnamese market, the "P2" scooter of the
Plaintiff has a design protected by the industrial design
patent No. 20652. This industrial design was filed by the
Plaintiff on August 23, 2013 and The National Office of
Intellectual Property officially granted industrial design
patents under Decision No. 11839/QD-SHTT dated
February 27, 2015.
Defendant manufactured and distributed electric
vehicle products on the market, Defendant performed the
act of advertising that electric vehicle product on the
Internet. The Plaintiff finds that the design of the
Respondent's electric vehicle is not significantly different
from the design protected in the Industrial Design Patent
No. 20652 of the Plaintiff. The difference shows:
(i) no difference in general: In general, the
defendant's electric vehicle design is considered to be a
copy of the design protected in industrial design patent No.
20652 with a raised front end, round shape protruding
forward, the bib is flattened and extended evenly to the

220
sides, the legroom is wide and low, the tail is large and
tapering to the back...
(ii) not significantly different in basic styling
features: front part (steering wheel, lights, bib, front fender),
middle part (lock position, front storage compartment
size) ; the rear part (saddle, cover, taillights ...)
The trial panel found that: The plaintiff's motorcycle
industrial design was protected; The Defendant's use of the
industrial design is not protected and the Defendant cannot
prove that his use of the industrial design is not infringing.
Meanwhile, in the conclusion of industrial property
assessment No: KD 113-16YC/KLGD dated January 13,
2017 of the Institute of Intellectual Property, concluded:
Electric motorcycle products are manufactured and stored
by the Defendant corresponds to most of the design features
of the protected industrial design. The product only differs
from the industrial design in the features that the floor is
flat without a back, the top of the wheel has two thin ribs
diagonally in the middle, the front fender is curved but not
straight; the rear turn signal light is arrowhead shape, not
an inverted trapezoid), the above distinctive features are

221
just a simple change and do not change the styling
characteristics of the bib as well as the car. The set of basic
design features of the electric motorcycle product
manufactured by the Defendant is not different from the
protected industrial design, which is a copy of the Protected
Industrial Design of the Plaintiff.
Pursuant to Clause 1, Article 126 of the Intellectual
Property Law, the design of the Defendant's electric
motorcycle shown in the assessment document is an
infringing element of the right to the motorcycle industrial
design which is protected under the ptrotected Industrial
Design No. 20652 of Plaintiff.
The defendant could not prove that he used the
electric motorcycle design as the assessment model before
February 27, 2013 (priority date corresponds to the
Industrial Design Patent No. 20652). The Defendant's use
of the electric motorcycle industrial design protected by the
Plaintiff under the Industrial Design Patent No. 20652 ... is
an infringing factor of the right to the industrial design
under Article 10 of Decree No. 105/ 2006/ND-CP, as
amended by Decree 119/2010/ND-CP dated December 31,

222
2010 on IP. On the basis of the foregoing, the court issued
a decision to force the Defendant to terminate the use of the
Plaintiff's industrial design, forcing the Defendant to
compensate the Plaintiff...
Thus, from the above examples, it can be seen that,
in principle, when a design has been granted a protection
title, the use of that design without the consent of the
industrial design title holder or the person authorized by the
owner of the industrial design title will be considered an
infringement of the right to the industrial design (except for
exceptions). In case the user wants to prove that his use of
an industrial design is not infringing with the protected
industrial design, the user must prove one of the following
issues: (i) there is a significant difference between designs;
(ii) the user can prove that his usage started before the
priority date. In case it can be proved, this person is
considered to have the right to use the industrial design first
(Article 134 of the Intellectual Property Law). 147 On the
contrary, if the user cannot prove any of the above two
points, the use of the industrial design will be considered

147
See more in section 4.8.2 Exceptions.

223
an infringement of the rights to the industrial design of
another subject.
4.8.2. Exceptions
In principle, during the term of protection of the
right to a design, any individual or organization that wants
to use the design must obtain the consent of the owner of
the design. Acts of using the design without the consent of
the holder of the title are considered an infringement of the
rights to the industrial design. However, in certain cases,
industrial property rights may be restricted by other factors,
and these factors prevent the use of the industrial design
from being considered an infringement.
For example, the provisions on the right to use prior
to industrial designs are specified in Article 134 of the
Intellectual Property Law. Accordingly, in the case that
before the filing date or priority date (if any) of the
industrial design registration application, someone has used
or prepared necessary conditions for using the industrial
design identical with the industrial design in the registration
application but is created independently (referred to as the
person having the right to use first), after the protection title

224
is granted, that person has the right to continue using the
industrial design within the scope of the application and
volume used or prepared for use without obtaining
permission or paying compensation to the owner of the
protected industrial design. The exercise of the rights of
users before the industrial design shall not be considered an
infringement of the rights of the owner of the industrial
design. The holder of the right to use the industrial design
in advance is not allowed to transfer that right to another
person, unless such right is transferred together with the
transfer of the business or production establishment where
the design is used or is about to be used. industry. The
holder of the prior use right may not extend the scope or
volume of use without the permission of the industrial
design owner.
From the above provisions, it can be seen that the
right to pre-use an industrial design is applied when the
following conditions are met:
- There must be actual use by the person having the
right to use it. This means that the holders of the prior use
right have researched, developed, exploited, or are

225
preparing to exploit the industrial design that they have
created through the construction, lease, or lease. factories,
workers, ordering goods and materials to create designs,
hiring workers, experts, setting up websites, printing...
- The use or preparation for use of the industrial
design by the prior-use right holder must take place before
the filing date or priority date of the application for
protection.
- An industrial design that a prior-use right holder is
about to put into use must be identically created
independently of the design being registered for protection.
In this case, the prior-use right holder and the title holder
do not know and the law does not force the parties to know
about the existence of the other's identical design.
The provisions of Article 134 of the Intellectual
Property Law are meaningful in protecting the rights and
interests of the person having the right to use the prior right
in case he has prepared all necessary conditions to use the
independently created design. However, since it is
registered, the holder of the title has more power than the
previous holder in the use of the protected design. This is

226
reflected in the restriction to transfer the prior right to use
the design, unless such right is transferred together with the
transfer of the business or production establishment where
the public design is used or is about to be used. At the same
time, the person with the right of prior use may not expand
the scope and volume of use of the industrial design without
the permission of the owner of the design. This shows that,
in all cases, the registration of industrial design protection
is necessary to ensure maximum legal rights and interests
of the industrial design owner.
However, it should be noted the difference between
the rights of prior users as provided for in Article 134 and
the provisional rights to industrial designs as provided for
in Article 131 of the IP Law. The provisional right to an
industrial design applies when the applicant for registration
of an industrial design knows that the industrial design is
being used by another person for commercial purposes and
that person does not have the right to use it in prior, then
the applicant has the right to notify the user in writing that
he has filed a registration application, specifying the filing
date and the date of publication of the application in the

227
Industrial Property Official so that he can terminate the use
or continue to use the said industrial design. In case the
notified person continues to use the design after being
notified, when the industrial design patent is granted, the
industrial design owner has the right to request the person
who used the industrial design must pay a compensation
equivalent to the transfer price of the right to use the
industrial design within the respective scope and term of
use.
The provisions of Article 131 above stem from the
facts arising in the process of registration for protection of
industrial design rights. Usually, the process of applying for
protection goes through many different stages, and the time
can be lengthy. Some individuals and organizations take
advantage of that time loophole to commercially exploit
industrial design objects that are in the registration stage. It
is necessary to distinguish the user of the industrial design
in this case without the consent of the person who is filing
a claim for protection of the industrial design and the
person who has the prior use right to the industrial design.
The prior user creates a design that is identical but

228
independent of the owner of the design. Meanwhile, the
user of the design in Article 131 is the user of the design
without the consent of the holder of the title. For that reason,
allowing the owner of the title to have the right to demand
that the user of that design pay a compensation amount is a
reasonable regulation, ensuring the legitimate rights and
interests of the IP title holder.
4.9. HAGUE AGREEMENT ON INTERNATIONAL
REGISTRATION OF INDUSTRIAL DESIGNS
On September 30, 2019, Vietnam submitted an
instrument of accession to the Hague Agreement (Hague
System) on international registration of industrial designs.
The Hague Agreement will officially enter into force for
Vietnam three months after the date of submission of the
instrument. This means that foreign individuals and
organizations can apply for international registration of
industrial design protection through the Hague system in
Vietnam from December 30, 2019. The accession to the
Hague Agreement facilitates favoured conditions in
helping design owners in Vietnam registering their designs

229
in countries that are parties to the convention easily and
vice versa.
The Hague Agreement was established to facilitate
the international registration of industrial designs in many
countries through a single international application. This
means that when a person wants to apply for international
registration in many countries for his industrial design, he
does not need to file separate applications to each country
he wants to protect as before. The applicant only needs to
submit a single application through the international office
of WIPO in a single language (applications can be in
English or French) and pay a fee in a single currency (franc
Switzerland). With a single application, an applicant can
register up to 100 designs. The simplification of the
procedure for international registration of an industrial
design makes it easier for the applicant to carry out the
procedures related to the application for protection of the
industrial design, easier to extend the validity of the
industrial design. as well as to facilitate the transfer of
ownership rights and other procedures related to industrial
designs. The Hague Agreement helps to reduce

230
complicated procedures, saving time, effort and costs for
applicants significantly. Joining the Hague Agreement is
very important for Vietnam. The role of IP objects cannot
be denied in the context of Vietnam's economic integration
with the world economy. Accession to the Hague
Agreement facilitates the registration of industrial design
rights for domestic and foreign applicants. At the same time,
joining the Hague Agreement helps Vietnam ensure the
implementation of its commitments in important new-
generation trade agreements that Vietnam has recently
joined such as EVFTA and CPTPP.

231
 CHAPTER 5: TRADEMARKS
5.1. TRADEMARKS OVERVIEW
5.1.1. Definition
Trademark is a widely used and popular concept in
social life. However, in each different specialized
perspective, this definition has different connotations.
Mentioned in the entrepreneur's manual sponsored by the
Japanese patent office, a trademark is described as "a sign
that an enterprise uses with respect to its goods to
distinguish goods of the same type of other businesses”.148
In this sense, a trademark is a tool to distinguish the
places/manufacturers of certain products from each other.
This is the most common interpretation in its simplest form
when it comes to the distinctiveness of the trademark.
At a higher level, trademarks do not just stop at the
distinguishing function as mentioned above. Because
studies have shown that, in addition to the physical value
that a particular product provides to the target customer, the
label that is attached to the product to put it in circulation

148
Japan Patent Office (2000), Trademark Protection - Entrepreneur's
Handbook, Asia-Pasific Industrial Property Center, Chapter III, pp. 5.

232
will contribute to the product. A product of a psychological
value includes three components: brand awareness, brand
perceived quality and brand associations.149
Along with the strong development of industrial
production and global trade, trademarks have gradually
become a valuable intangible asset, protected at both
national and international levels. The definition of
trademark is therefore also mentioned in relevant
international legal documents. In each country, depending
on the specific situation, the definition of trademark has
also been introduced in specialized legal documents.
According to Clause 16, Article 4 of the Intellectual
Property Law, "A trademark is a sign used to distinguish
goods and services of different organizations and
individuals". Thus, in order to be protected as a trademark,
such sign must satisfy the following conditions:
Must be visible signs in the form of letters, words,
drawings, images, holograms, or a combination thereof,

149
Angga Primanda Kusuma, N. B., & Miartana, I. P, (2018), “Brand
Awareness, Brand Loyalty, Perceived Quality, Brand Association Brand
Preference dan Purchase Intention”, Jurnal Manajemen Bisnis, 15(2), p. 100-
119.

233
represented by one or more colors or audible signs
representing be in graphical form;
Such mark must be affixed to the product, goods,
service or its packaging;
Such sign must be capable of distinguishing such
goods or services from goods and services of the same type
of other subjects, in order to inform consumers to recognize
and distinguish such goods and services from those of other
same types of goods and services.
Through the above protected signs, consumers will
visualize, associate and recognize the quality of products
and services, the reputation of the manufacturer, the
business, the price of the product and the characteristics of
the product. superiority of goods or services, but choose to
use that product or products of the same type of other
manufacturers and traders.
Historically, the concept of a trademark was used in
England in 1777 and then spread to many European
countries. 150 In the face of the strong development of

150
Lionel Bently (2008), “From communication to thing: historical aspects
of the conceptualisation of trade marks as property”, Trademark Law and
Theory – A Handbook of Contemporary Research, Edward Elgar, p. 8.

234
science and technology and the deepening of international
relations, as well as the risk of IPR infringement, countries
around the world see that it is necessary to have a common
regulation to protect industrial property in general and
trademarks in particular. Therefore, in 1883 a diplomatic
conference was held in Paris and adopted the Convention
on the Protection of Industrial Property Rights including
Trademarks. On March 8, 1949, Vietnam became a party to
this convention. Article 6 of the Convention provides for
marks, registration and independence of protection of a
mark in different countries as follows:
“(i) The conditions for filing and registering a
trademark shall be provided for in the national laws of
every member country of the Union.
(ii) However, an application for registration of a
trademark by a national of a member state of the Union,
filed in any country of the Union, may not be refused nor
may a trademark registration be denied, with the reasones
that the application, registration, or renewal in the country
of origin has no effect.

235
 (iii) A trademark duly registered in a member
country of the Union shall be deemed to be independent of
marks registered in other member countries of the Union,
including the country of origin."151
From the foregoing, we see that the Paris
Convention does not introduce the defintion of a trademark
nor does it stipulate the conditions for filing a trademark
application, leaving this to the laws of the member states.
However, in Article 6 quinquies point b of the convention,
it is stated that the registration of a mark can be refused,
specifically as follows:
"1. When such trademarks infringe the rights of third
parties in the country where protection is claimed.
2. When such trademarks do not contain any
distinguishing signs, or consist solely of signs or
indications used in commerce to indicate the type, quality,
quantity, or intended use. , value, country of origin, or time
of manufacture, or has become commonplace in the current
language or in sound and well-established commercial
practice in the country in which protection is claimed.

151
Article 6 of the Paris Convention.

236
 3. When such trademarks are contrary to morality or
public order, especially in their nature they may cause
confusion to the public. It is understood that a trademark
cannot be considered as an infringement of public order for
the sole reason that the mark does not conform to a certain
provision of the law on trademarks, except when that
decision concerns public order”.152
Thus, if a trademark infringes on the registered
rights of a third party, a trademark that is indistinguishable,
a trademark contrary to public morality or order, or a
trademark capable of deceiving the public, will not be
protection. From this, we can infer that all other signs that
are distinguishable can be used as trademarks.
According to the TRIPS Agreement, “Any sign or
combination of signs capable of distinguishing the goods or
services of enterprises can be used as a trademark. Such
signs as words, including proper names, letters, numerals,
graphic elements and combinations of colors and any
combination of such signs, must be capable of being
registered as trademarks. Where signs are not capable of

152
Article 6 quinquies of the Paris Convention 1883.

237
distinguishing the respective goods or services by
themselves, Member States may provide that registration
depends on the distinctiveness achieved through use.
Member States may stipulate that a condition for
registration is that signs must be visible.153
According to the Vietnam-US Trade Agreement, “A
trademark is constituted by any sign or any combination of
signs capable of distinguishing one person's goods or
services from those of another. others, including words,
names, shapes, letters, numbers, combinations of colors,
figurative elements or shapes of goods or the shape of their
packaging. Trademarks include service marks, collective
marks, and certification marks."154
According to WIPO, “A trademark is any sign
capable of distinguishing the goods of one undertaking
from those of competitors”.155 With the above definition,
all distinctive signs can be used as trademarks, depending

153
Clause 1, Article 15 of the TRIPS Agreement.
154
Clause 1, Article 6, Chapter II of the Vietnam-US Trade Agreement dated
July 13, 2000 (Translated by WINCO law firm).
155
World Intellectual Property Organization (2005), Intellectual Property
Handbook (Translation of the National Office of Intellectual Property), p. 66.

238
on the actual situation, countries stipulate that exclusionary
signs cannot be used as trademarks.
In addition, according to the book Protection of
Trademarks - an Entrepreneur's Manual sponsored by the
Japanese Patent Office, "A trademark is a sign that an
enterprise uses for its goods to distinguish distinguish
goods of the same type of other enterprises”.156
Thus, compared with international conventions as
well as the definitions of some organizations on IP, the
definition of a trademark specified in the Vietnam IP Law
also has similarities, the signs used as trademarks must be
capable of distinguishing them from goods and services of
other production, business or service entities of the same
type.
In addition, we need to distinguish the defintion of
trademark from the definition of brand. Trademark is a
legal concept that refers to signs that are protected as an
object of industrial property. In order to be protected, a
trademark must be registered at a competent state agency,

156
Kapan Patent Office (2000), Trademark Protection - Entrepreneur's
Handbook, Asia-Pasific Industrial Property Center, Chapter III, p. 5.

239
except for famous trademarks. Brand is an economic
definition that refers to signs of commercial value. Brand is
not an object of industrial property, but rather a term used
in advertising and marketing, referring to signs used in
commerce as an important tool to create a brand image and
reputation of the business in the eyes of consumers. 157
When it comes to brand, it refers to the image of goods and
services in the minds of consumers such as those goods that
are durable, beautiful, good, luxurious, noble...., brands can
be trademarks, trade names, logo, image, symbol, design,
slogan... According to WIPO, a brand "is a distinctive
tangible and intangible sign to identify a certain product or
service, provided by a individuals or organizations”. In
short, these are two different concepts, with different
natures but with similarities.
Another definition that is also easily confused with
the definition of a trademark is "Good label". “Good
label” 158 (also known as label) written, printed, drawing,
photocopies of words, drawings, images affixed, printed,

157
Le Dinh Nghi and Vu Thi Hai Yen, note (31) p. 99.
158
Clause 1, Article 3 of Decree No. 43/2017/ND-CP dated April 14, 2017.

240
attached, molded, carved, engraved directly on goods,
including the commercial packaging of the goods or on
other materials affixed to the goods, the commercial
packaging of the goods.159
Goods labels are used to show basic and necessary
contents of goods for consumers to recognize and use as a
basis for selection, consumption and use; for manufacturers
and traders to promote their goods and for the authorities to
carry out inspection and control.160 Therefore, on the label
of goods must be written the necessary information, mainly
about the goods such as the name of the goods; the name
and address of the organization or individual responsible
for the goods; origin of goods; Other contents according to
the nature of each type of goods.161 And we can notice that
on the goods label also shows the mark of the brand of that
product.

159
“Commercial packaging of goods” means the packaging containing the
goods and circulating with the goods; Commercial packaging of goods
includes two types: direct packaging and outer packaging (Clause 5, Article
3 of Decree 43/2017/ND-CP dated April 14, 2017).
160
Clause 2, Article 3 of Decree 43/2017/ND-CP dated April 14, 2017.
161
Article 10, Appendix I to Decree 43/2017 dated April 14, 2017

241
 Thus, good labels are not objects of industrial
property, not protected, not registered but only announced.
However, good labels are always attached to products and
goods and are an object that can be counterfeited or violate
regulations on goods labeling.
In general, the basic difference between good labels
and trademarks is in their functions. The main function of
the goods label is to show consumers the basix and essential
information of the goods bearing the label. While a
trademark is a sign whose main function is to help
consumers distinguish the products and services of this
organization or individual from those of the other
organization or individual.
5.1.2. History of formation and development of the
definition of trademarks
The definition of trademark has been widely used in
Vietnam as well as in the international area, but when did
trademarks come about and when did the law on trademarks
come into being is still an issue that scientists, study, review
and have different opinions.

242
 It is suggested that the English term "brand" is
derived from the word "burning" (meaning to burn).162 This
is a common word and from a business perspective means
to burn on the skin or fur of pets, furniture, cast metal or
other goods in order to have a distinctive mark on it to
distinguish the family livestock, goods of ranchers, owners
of goods and products.
By the nineteenth century, according to the Oxford
dictionary, this word had come to mean a sign of a
trademark. By the mid-twentieth century, the word "brand"
had expanded to include images of a product in the minds
of potential consumers or, more specifically, the
conception of a certain person or commodity.
Today, "brand" is understood as the sum total of all
information about a product, service or company that is
communicated to consumers by name or other identifying
signs, such as logos or images. ... Trademarks are intended
to convey to the target consumers a message or attribute of
a product, goods or service. The attributes of a mark exist

162
W. H.Browne (1898), A Treatise on the Law of Trade-Maths and
Analogous Subjects, p. 11.

243
in the eyes of the owner and reflect the cumulative,
communication messages received by the target audience
regarding the product, service or company and the
experiences that the target audience has received a certain
consumer has used that product or service.
According to the research of archaeologists, about
5000 years ago, primitive people knew how to use their
own symbols and symbols to mark the bodies of domestic
animals to confirm its ownership. Thus, right from ancient
times, people knew how to use different shapes and
symbols to express their ownership over property.
According to WIPO documents, “There is evidence
that as far back as 4000 years ago, craftsmen in China, India
and Persia used signatures or symbols attached to products
to distinguish their own products with the products of
others. Roman potters used more than 100 different marks
to distinguish their work, the most famous being the brand
Fortis, which many counterfeit products have imitated".163
According to the IP Handbook, “2,300 trademarks
have existed since ancient times, even from the time when

163
Kamil Idris, note (180), tr. 149.

244
people were more self-sufficient in what they needed for
themselves than buying them, from craftsmen. At that time,
there were creative merchants who knew how to sell goods
outside of their home region and sometimes even to
faraway areas. 3000 years ago, Indian craftsmen used to
carve their signatures on works of art before sending them
to Iran. Chinese manufacturers have been selling their
branded goods in the Mediterranean since 2000 years ago
and in the same time thousands of different brands of
Roman ceramics have been used, including the FORTIS
brand which later became so famous that it was copied and
faked. Thanks to the prosperous business of the Middle
Ages, the use of signs to distinguish goods by merchants
and manufacturers was quite developed".164
A trademark under Vietnamese and international
law is a sign in words, pictures or a combination, with high
characteristics and used to distinguish goods of the same
type from different establishments.
However, when did the law on trademark protection
come into being? There is an opinion that “The trademark

164
World Intellectual Property Organization, note (317), p. 65.

245
law originates from the law against unfair competition acts,
because reputable business entities complain that their
products are counterfeit. To avoid this situation, the UK
was the first country to enact a law on trademark protection.
The first protected trademark for the BASS beer label with
an orange equilateral triangle was in 1777.165
5.1.3. Functions of trademarks
The basic and most important function of a
trademark is to distinguish goods and services of the same
type. Because, through signs such as words, images or
combinations of such signs, having unique and distinctive
characteristics will help consumers easily identify and
distinguish goods and services of the same type, by that,
choose the goods and services suitable to their needs and
preferences. In fact, in today's market economy, many
individuals and organizations take advantage of the
reputation of popular goods and services in the market to
produce counterfeit and similar goods (fake goods) to
exploit the market or unfair competition. Therefore,

165
Nguyen Xuan Quang, Le Net and Nguyen Ho Bich Hang, note (327), p.
197.

246
consumers are always faced with the problem of choosing
between similar products on the market, the similarity in
appearance, markings, and colors of the product can mask
the difference. in terms of quality, characteristics, price...
Therefore, trademarks help consumers to recognize and
distinguish products, goods and services of the same type.
Trademarks have the function of providing
information about the origin of products, goods and
services. Not only are the signs to distinguish goods and
services, but through the mark hidden in it are the quality
information, the origin of the product, the features of the
product, the reputation of the manufacturer. business. A
product that has existed for a long time in the market, sold
in many places in a country or in the world with large
quantity, high turnover, it is certain that the product must
have good quality, reasonable price, prestige. The
credibility of the manufacturer and business is high... so
consumers will have the opportunity to choose suitable
products and services from manufacturers and service
providers with their wishes and economic capabilities.

247
 Trademarks contain messages about the quality of
products and services to consumers. Most consumers do
not want to be a tester for a new brand while they have had
a satisfactory experience with another brand used for the
same goods or services. Moreover, a brand that has built a
reputation and is trusted by consumers will be the
motivation for the brand owner to constantly improve and
develop products and services to better satisfy the needs of
consumers. consumption. Therefore, a trademark is the
guarantee of the quality of products and services so that
consumers can be assured of the product's origin and
identify the subject of legal responsibility when a dispute
occurs.
In addition, trademarks have an economic function.
Besides participating in the production, distribution and
circulation of goods and services, through the brand,
consumers can visualize the quality of products and
services and they will decide to buy or sell products. do not
buy that product or service. Therefore, in order for their
products, goods and services to reach more consumers, the
trademark owner must constantly innovate and invest in

248
technology, machines, people, processes... to improve their
performance, productivity, quality, cost reduction...
thereby creating competition among actors in the process
of production and business, which creates favorable
conditions for consumers to benefit and society to develop.
5.1.4. Brand classification
5.1.4.1. Based on protected signs
With this basis, we can divide trademarks into the
following categories:
A word trademark is a set of letters, possibly
numbers, that can be pronounced with or without meaning.
For example, the KODAK trademark for photographic film
products, the SONY trademark for electronic products or
the CAMRY trademark for automobile products.
Visual trademarks are visual signs, drawings, and
visual marks that have the power to attract consumers
visually. For example, a drawing of a Dutch girl carrying a
bucket of milk registers for milk and dairy products of the
Dutch Lady brand, or an image of two interlocking Cs of
the Chanel brand for high-end fashion goods such as
perfumes, bags…

249
 Sound mark: A sound mark is a mark created from
sound signs, recognizable by hearing, which can be
composed of a combination of monophonic sounds or
scales, used to distinguish the trademark origin of a product
or service. The sound mark includes two types: music,
including words and no words, and the second type is non-
musical sounds such as animal cries, sounds of machinery
and equipment during operation; man-made sounds or
other natural noises.
A lion roaring: Metro-Goldwyn-Mayer Corporation
registers the sound as a trademark for motion pictures and
pre-recorded videotape with a description of the sign
including a roaring lion.
Sound trademark is a new type of trademark
recognized in the amended and supplemented IP law, when
Vietnam fulfills its commitments in the Comprehensive
and Progressive Agreement for Trans-Pacific Partnership
(CPTPP).
A combined trademark is a trademark that includes
both words and images. This type of brand is popular today
because it both entices consumers by hearing and by sight.

250
For example, the Coca Cola brand is a combination of the
word Coca-Cola and a water bottle, the KFC brand
combines the word KFC and a smiling old man.
5.1.4.2. Based on the history of formation and
development of the brand
Traditional trademarks: traditional trademarks are
signs or basic labels recognizable by sight such as words,
colors... affixed to goods or services, these are trademarks
considered at the beginning stage of the formation and
development of the brand.
New types of marks or non-traditional trademarks:
are new trademarks that appear with the development of
science and technology; these marks are recognized
through hearing, smell; tactile… sound brand is one of the
non-traditional brands. The Law on Intellectual Property
Amended and Supplemented in 2022 of Vietnam has added
the sound trademark to become a sign that can be registered
for protection in the name of a trademark. This sound
trademark must be represented graphically. In addition,
some countries in the world such as the United States, the
European Union, Australia, Malaysia ... have protected

251
other non-traditional trademarks such as scent marks
(olfactory marks or scent marks), flavor marks, and labels.
position marks, hologram marks, gesture marks...
Some examples of some non-traditional brands
- “MINTY” PAIN-RELIEF PATCHES: Hisamitsu
Pharmaceutical Co., a Japanese company, has trademarked
the “mint” scent of their pain-relieving patches, an odor
created by “mixtures” of concentrated methyl salicylate
(10%) and menthol (3%)”.
- Location trademarks of Leupold & Stevens, Inc.

5.1.4.3. Based on trademark products

According to this criterion, we can divide
trademarks into two groups, trademarks for goods and
trademarks for services:
Goods trademark is a mark affixed to products and
product packages to distinguish products of the same type
from different manufacturers.

252
 For example: Van Anh Trading - Production Co.,
Ltd. has been granted a license by the NOIP No. 36978 in
2001 for the Bach Dang Ice Cream brand for ice cream
products.
Service trademark is a mark affixed to a service
vehicle to distinguish services of the same type from
different business or service establishments.
For example: Saigon Tourism Corporation was
granted a license by the NOIP No. 36943 for the trademark
Saigontourist in 2001 for advertising, marketing, duty-free
sales, labor export, equipment and supplies trading,
consumer goods, commerce, hotel management services,
restaurants, travel establishments, resorts, travel and tourist
transportation.
Today, when the economy is developing, people's
lives are also improved and enhanced, the types of services
are also becoming more and more abundant and diverse.
For example, the introduction of many types of services
that are playing an important role in life such as accounting,
auditing, legal services, communication and audiovisual,
financial services, insurance, travel... Therefore, service

253
marks in business and the liberalization of trade in services
should be equally concerned with the various types of
trademarks available in the market.
5.1.4.4. Based on the function of the trademark
According to this criterion, we have the concepts of
collective trademarks, affiliate trademarks and certification
trademarks.
A collective trademark is "a mark used to distinguish
the goods and services of members of an organization that
is the owner of the trademark from those of other
individuals or organizations that are not members of that
organization”.166
A collective trademark is a trademark of a collective
of manufacturers (usually an association, cooperative,
corporation...), in which the collective organization
develops a common regulation on the use of the collective
trademark (such as common criteria of quality, origin,
production method; trademark owner; conditions for use of
the mark; criteria for becoming a member of the
organization that is the owner of the mark collective;

166
Clause 17 Article 4 IP Law.

254
sanctions applied for violations of the provisions of the
regulations...) 167 and members have the right to use the
mark if their goods and services meet those standards.
Collective trademarks can be seen as an effective form of
association in marketing the products and services of a
group of businesses.168
Thus, a collective trademark has two basic
characteristics: First, the function of a collective trademark
is to show the relationship between goods and services
bearing the collective trademark and the association that is
the owner of that trademark. Second, the association itself
does not use this trademark, but only its members. The
function of the collective trademark is to inform the public
about the distinctive features of the products using the
collective trademark, individuals and organizations have
the right to use the respective collective mark. It should be

167
The rules for the use of the collective mark are usually included in the
application for the registration of the collective mark, and any amendments
to the regulations must be notified to the Trademark Office. In some countries
(such as the Federal Republic of Germany, Finland, Norway, Sweden and
Switzerland), the registration of a trademark may be canceled if the mark is
used contrary to the provisions of the law or in a manner that deceives the
public.
168
Le Dinh Nghi and Vu Thi Hai Yen, note (31), p. 94.

255
noted that an enterprise is entitled to use a collective
trademark in addition to its own trademark. The
characteristic of a collective trademark is that many
subjects have the right to use it together, so it should be
noted that when a collective uses the trademark on behalf
of a collective, which not considered a collective trademark
but would just be a normal trademark because the
trademark is used by only one person.
For example, a collective trademark is granted to
Hoa Loc mangoes, or a collective trademark is granted to
Cho Gao dragon fruit.
Regulations on the use of collective trademarks must
contain the following principal contents:
- Name, address, basis of establishment and
operation of the collective organization being the
trademark owner;
- Criteria for becoming a member of a collective
organization;
- List of organizations and individuals permitted to
use the mark;
- The conditions for using the mark;

256
 - Measures to handle violations of regulations on
trademark use.
Regulations on collective trademark use must be
included in the collective trademark registration application
and any changes in content must be notified to the state
management agency in charge of IP in general and
trademarks in particular.
In Article 7 Bis of the Paris Convention on collective
trademarks, it is stated that:
“(i) The Member States of the Union have the
responsibility to accept applications for registration and
protection of collective trademarks belonging to classes
whose existence is not contrary to the law of the country of
origin, even if such collectives do not own industrial and
commercial premises.
(ii) Each country must determine for itself the
specific conditions under which a collectivetrade mark will
be protected and may refuse protection if the mark is
contrary to the public interest.
(iii) However, in cases where the existence of such a
class is not contrary to the law of the country of origin,

257
protection of such trademarks cannot be denied on the
grounds that such a class has not been established. in the
country claimed or not established under the law of that
country”.
Under this provision, the Convention ensures that
collective trademarks are accepted for registration and
protection in countries and not only in the country where
the association owning the collective trademark is
established. However, the Convention also provides that
member states have the right to set standards of protection
in accordance with their interests.
In general, the collective trademark registration has
much more advantages than the individual trademark
registration in promoting and marketing products to
consumers.
* Certification trademark is “a trademark that the
owner of the mark allows another organization or
individual to use on the goods and services of that
organization or individual to certify the characteristics of
origin and raw materials, materials, the way in which the
goods are manufactured, the manner in which the service is

258
provided, the quality, accuracy, safety or other
characteristics of the goods or services bearing the
mark”.169
Certification trademarks are trademarks registered
by organizations with the function of controlling and
certifying the quality and characteristics of goods and
services, after which this organization has the right to
license any use. any production or business entity if their
goods or services meet the standards set by the owner of the
certification trademark. Certification trademarks have two
basic characteristics:
First, the function of a certification trademark is to
provide an assurance that the product or service bearing the
label meets a certain standard or has a particular quality.
Second, the owner of the certification trademark
does not use that trademark for his product, but only
licenses it to other individuals and businesses and ensures
that the product bearing the certification mark has a certain
certified quanlity. Therefore, the function of a certification
trademark is to provide an assurance that the product or

169
Clause 18 Article 4 IP Law.

259
service bearing the trademark meets a certain standard or
has a certain quality170. The certification trademark does
not distinguish the commercial origin of the goods or
services bearing the mark.
The difference between a collective trademark and a
certification trademark is that a collective trademark is used
for an organization, an enterprise and only members of that
organization or enterprise can use it (closed within
organization members). For certification trademarks can
be used by anyone if they fully comply with the predefined
standards of the trademark and are agreed by the owner of
the mark.171
For example, a high-quality Vietnamese trademark
voted by consumers is a certified trademark registered by
Saigon Newspaper in 2007.

170
Le Hoai Duong (2003), "Protection of trademarks in Vietnam", People's
Court Journal, No. 10, p. 5.
171
Dinh Van Thanh and Dinh Thi Hang (2004), Trademarks in civil law,
People's Police Publisher, Hanoi, p. 48.

260
5.1.4.5. Based on the fame and reputation of the brand
According to this criterion, we have the concept of
well-known trademark and common trademark.
A well-known trademark is "The mark that is widely
known by the relevant public in the whole territory of
Vietnam".172
The criteria for evaluation of a well-known mark are
specified in Article 75 of the IP Law, including the
following criteria, according to which the consideration and
assessment of a trademark as well-known is selected from
some or all of the criteria:
(i) The number of relevant consumers who know the
trademark through the purchase, sale, use of goods or
services bearing the trademark or through advertising.
A well-known trademark is known by many people
for its characteristics, quality of the product affixed with the
trademark, and the manufacturer of that product; At the
same time, many people also recognize its prestige and
popularity. That is to say: a well-known mark must have a
reputation among a certain segment of the public. “Section

172
Clause 20 Article 5 IP Law.

261
of the public” is understood as people related to that type
of trademark, potential customers.
For example, when it comes to HONDA
motorcycles, many people with only average knowledge
know that it is a Japanese motorcycle, good quality, very
durable, beautiful design.
(ii) Scope of the territory in which goods and
services bearing the trademark have been circulated: This
is the criterion to determine the spatial element in which the
trademark is used. Well-known trademarks are not only
used in the country where protection is registered for the
first time, but also widely used in the region and around the
world. On the other hand, such trademark must be used for
a long time from the time of first registration for protection
or used for the first time. Two factors of space and time are
proportional to the popularity of a trademark. It is the wide
range of uses and the long-term existence and development
of the trademark that create the prestige and reputation of
the trademark; On the contrary, the more well-knownthe
trademark, the more people know, use, and recognize it.

262
 (iii) Sales from the sale of goods or provision of
services bearing the trademark, or the quantity of goods
sold, how many products or services have been provided.
(iv) Period of continuous use of the mark; well-
known trademarkwith continuous shelf life for many years,
well known by many consumers. For example, the Coca
Cola trademark for carbonated beverages has existed for
hundreds of years.
(v) The widespread reputation of goods and services
bearing the trademark, through criteria such as quality, taste,
price, etc., many people know about such goods and trust
not only in the country of registration. trademarks, but also
regionally or internationally.
(vi) Number of countries protecting the mark. For
example, the famous trademark Honda (Japan) is protected
by over 100 countries; trademark Valentino (Italy) is
protected in nearly 130 countries; Pierre Cardin (France) is
protected by nearly 100 countries.
(vii) Number of countries recognizing the mark as
well-known;

263
 (viii) The transfer price, the license price of the right
to use, and the value of capital contribution of the
trademark.
In simple terms, a trademark is considered well-
known if it is continuously used for reputable products or
services that make that trademark widely known.173 When
recognized, considered well-known, that trrademark has its
own power - is the crystallization of the business efforts of
the enterprise both intellectually and physically, so it is an
asset of great value. Article 6bis of the Paris Convention for
the Protection of Industrial Property provides: “...the States
Parties to the Convention have the responsibility, according
to a regulatory function, if their national law permits it, or
at the request of the Parties to the Convention. related party,
refuse or cancel registration, prohibit the use of a trademark
that is a copy, imitation, transformation and is likely to
cause confusion with trademarks already registered by the
competent authority. the jurisdiction of the country of
registration or of the user to consider a trademark well-
known in that country as a mark belonging to the

173
Le Net, note (88), p. 108.

264
Beneficiary of the Convention and to use it on identical or
similar goods. These provisions also apply in cases where
the essential element of the trademark is a reproduction of
any well-known mark or an imitation which is likely to
cause confusion with an earlier trademark…”.
Thus, well-known trademarks are protected under a
very special mechanism. Unlike normal trademarks, when
a trademark is evaluated and considered as a well-known
trademark, the rights to the well-known mark are protected
and belong to the owner of that mark without registration
procedures. At the same time, any goods or services are
protected, including goods and services that are not
identical, not similar and not related to goods and services
on the list of goods and services bearing famous trademarks,
if the use is likely to cause confusion as to the origin of the
goods or to give a false impression of the relationship
between the user of the sign and the owner of the well-
known mark. For well-known trademarks, the scope of
protection includes all types of products and services on the

265
market.174 For example, the well-known trademark Coca-
Cola in the field of beverage, other subjects do not have the
right to use this trademark for beverage products as well as
other groups of goods and services that may cause
confusion for customers.
For example, some well-known trademark in
Vietnam such as Coca Cola, Pepsi; Honda's mortobike;
Bitis shoes; Tuong An cooking oil; Vinamilk; Nokia phone;
Pho 24; Dong Tam bricks; Bank for Agriculture and Rural
Development of Vietnam - Agribank...
* An common trademark is a trademark that does not
meet the above criteria, only the basic function is to
distinguish goods and services of the same or similar type.
5.2. ESTABLISHMENT OF RIGHTS OF
TRADEMARKS
According to current regulations, industrial property
rights to trademarks are basically established on the basis
of decisions on granting protection titles of competent state
agencies (NOIP) according to registration procedures

174
Nguyen Xuan Quang, Le Net and Nguyen Ho Bich Hang, note (327), p.
185.

266
prescribed by the IP Law. In addition, for internationally
registered trademarks (trademarks of foreign subjects
registered for protection in Vietnam, but not filing directly
with Vietnamese competent authorities, but filing through
the International Trademark Association). WIPO
organization under the provisions of the Madrid Agreement
or the Madrid Protocol on the international registration of
marks), the industrial property right to the trademark is
established on the basis of a decision to accept protection
or a certificate of the trademark. An international
registration is protected in Vietnam by the NOIP at the
request of the trademark owner. The above decisions and
certificates are valid as protection titles granted to
trademark registrants in Vietnam.
According to Clause 8, Article 93 of the Intellectual
Property Law, international registration of trademarks
under the Madrid Protocol and Agreement on international
registration of trademarks with the designation of Vietnam
takes effect from the date the state management agency in
charge of property rights takes effect, the industry shall
issue a decision to accept protection for the mark in that

267
international registration or from the day following the end
of the twelve-month period counting from the date on
which the International Bureau issues the notice of the
international registration of that trademark designated
Vietnam, whichever is earlier. The validity period of an
international registration of a trademark is calculated
according to the provisions of the Madrid Protocol and
Agreement.
According to point a, clause 3, Article 6 of the
Intellectual Property Law, industrial property rights to
well-known trademarks are established on the basis of use
and are independent of registration procedures. Also
according to Clause 2, Article 6 of Decree 103/2006/ND-
CP: “Industrial property rights to well-known marks are
established on the basis of practice of widely using such
trademarks as prescribed in Article 75 of this Decree. of
the Intellectual Property Law without the need to carry out
registration procedures”.175

175
This content is guided in Circular 01/2007/TT-BKHCN as amended by
clause 35, Article 1 of Circular 16/2016/TT-BKHCN effective from January
15, 2018.

268
 Thus, if industrial property rights to common
trademarks are established on the basis of registration,
industrial property rights over well-known trademarks are
established on the basis of practice of widely using that
trademark. A trademark is considered well-known, even
though it is not registered, the owner still has the right to
prevent others from performing acts that are considered
infringing rights. Instead of proving that a trademark is
protected in Vietnam by submitting to the Court a
certificate of trademark registration or a decision to
recognize a protected trademark in Vietnam or other
evidence, the trademark owner will provide proof that its
trademark is well-known.
5.2.1. Right to registration of a trademark
Article 87 of the IP Law stipulates that the following
entities have the right to register trademarks:
- Individuals and organizations conducting
production and business have the right to register
trademarks for goods and services they produce or provide
services.

269
 - Organizations and individuals have the right to
register trademarks for goods they manufacture or services
they provide. Vietnamese law stipulates that organizations
and individuals have the right to freely produce and trade
in any product or industry that is not prohibited by law and
when conducting legal production and business,
individuals and organizations have the right to file a
trademark application to protect their legitimate interests in
the goods they produce or the services they provide. For
example, A registers the establishment of an enterprise
operating in the field of bottled water production, then A
has the right to register a trademark for the above bottled
water product to distinguish it from other bottled water
products. already circulating on the market.
- Organizations and individuals conducting lawful
commercial activities have the right to register trademarks
for products and goods that they put on the market but are
produced by others, provided that the producer does not use
the mark. for the product and do not object to such
registration. Unlike the above case, in this case, the subject
does not directly produce products or provide services, but

270
they only bring products (sale, lease...) produced by others
to the trademarket and the producer did not object.
For example, if A registers to trade in products in the
field of food and drinks, goes to get spring rolls from other
individuals and households to produce and resell to
consumers, then A has the right to register a trademark for
spring rolls to this market if the production individuals and
organizations do not object to this registration.
- A legally established collective organization has
the right to register a collective trademark for use by its
members in accordance with the regulations on use of the
collective trademark. For signs indicating the geographical
origin of goods or services, the organization that has the
right to register is a collective trademark of organizations
and individuals conducting production and business in that
locality. For other signs indicating the geographical origin
of local specialties of Vietnam, the registration must be
permitted by a competent state agency.
- Organizations with the function of controlling and
certifying the quality, origin or other criteria related to
goods and services have the right to sign a certification

271
mark provided that they do not conduct production or
business of goods, that service. For places and other signs
indicating the geographical origin of specialties of Vietnam,
the registration must be permitted by a competent state
agency.
Two or more organizations and individuals have the
right to jointly register a trademark to become co-owners
with the following conditions:
- The use of such trademark must be on behalf of all
co-owners or for goods and services in which all co-owners
are involved in the production and business process.
- The use of such trademark does not cause
confusion to consumers about the origin of goods or
services.
The person with the above registration right may
transfer the registration right to another organization or
individual in the form of a written contract, to inherit or
inherit in accordance with law, provided that such
organization or individual must meet the conditions for the
respective registration holder.

272
 For a trademark protected in a country that is a party
to an international treaty that prohibits the representative or
agent of the trademark owner from registering such
trademark, which the Socialist Republic of Vietnam also If
you are a member, such representative or agent may not
register a trademark without the consent of the owner,
unless there is a legitimate reason.
5.2.2. Conditions for trademark protection
According to the provisions of Article 72 of the
Intellectual Property Law, a trademark is protected if it
meets the following conditions:
(i) A visible sign in the form of letters, words,
drawings, images, holograms or a combination thereof,
represented by one or more colors or audible signs.
displayed graphically.
(ii) Being able to distinguish the goods and services
of the mark owner from those of other subjects.
5.2.2.1 Trademarks are signs
Signs used for making trademarks are those that can
be seen, recognizable by sight or are audible. Currently, in
the world "there is no statutory definition to explain the

273
 176
meaning of the term "sign", the amended and
supplemented IP Law of 2022 has added the definition of
signs in Clause 6, Article 72. , which is "the inherent shape
of the goods or the required technical characteristics of the
goods". Most countries list a list of "types of signs" that can
be protected as trademarks, and Vietnam also regulates this
way. Visible signs that can be registered as trademarks
include:
- Words include the name of the company, business,
full name of an individual, geographical name, slogan or
any word, phrase does not need to have a meaning, just has
the ability to pronounce.
- Letters and numbers. It is an arrangement of one or
more letters, one or more numbers, or a combination of
both letters and numbers.
- Graphics can be realistic depictions, drawings,
symbols and even two-dimensional representations of
goods or packages.
- A sign is a color that is a combination of colors or
the color itself combined with words and images.

176
Lionel Bently và Brad Sherman, note (77), p. 806.

274
 - Three-dimensional sign. An example of three-
dimensional signs is the shape of the goods or their
packaging. Some countries permit the registration of a
three-dimensional mark, requiring the applicant to submit
either a two-dimensional representation of the three-
dimensional sign (drawing, photograph or any printable
representation) or a description of the three-dimensional
mark (or both). It should be noted that some countries
exclude the registration of a three-dimensional sign that is
the natural shape of the good or the function of the good
whereby the shape of the good creates an important value
for the good.
Sound signs (not visible signs). This is a new sign
added to the IP Law, its characteristic is that consumers can
recognize it by hearing, unlike other traditional signs. To
be protected, this sound must be represented graphically.
Thus, the Vietnamese law only protects the invisible
signs that are sounds, while other non-traditional signs such
as scents, tastes... can be recognized by the sense of smell
and taste. However, there has been no recognition, because
the protection of the above signs requires that the country

275
have a high level of development, have sufficient material
and technical conditions as well as the qualifications of the
managers.
Whether or not a trademark is unique depends on the
consumer's understanding of the goods or services, or at
least the people to whom the mark is directed. It is
considered unique if consumers see the trademark and
realize that the product or service originates from a business
or a business establishment. In short, that trademark must
be able to influence consumers' perception, so that
consumers can recognize, remember and distinguish it from
other goods and services of the same type. Example: The
Toyota trademark is a trademark that meets the
requirements of being easy to remember, recognizable and
unique.
5.2.2.2. Signs must be distinguishable
Clause 1, Article 74 of the Intellectual Property Law
provides that a trademark is considered to be capable of
self-distinction if it is made up of one or several
recognizable and memorable elements or from many
factors that combine into an easily identifiable whole.

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recognizable, easy to remember and does not belong to the
cases where the trademark contains signs of
indistinguishability specified in Clause 2, Article 74. With
the legislative technique of exclusion, the IP Law has
indirectly recognized many signs are distinguishable, so
they can all choose to register as trademarks177. Therefore,
signs that are indistinguishable are not protected.
Signs that are indistinguishable and not protected
include:
- Simple shapes and geometry (for example circles,
triangles, ellipses presented as discrete or single, or overly
complicated drawings with many combined, overlapping
lines. ..); numerals, letters, and letters of uncommon
languages (for example, characters of non-Latin origin such
as Arabic, Slavic, Japanese, Korean...), except for the this
sign was widely used and recognized as a trademark prior
to the filing date. For example, brand 555 is used for
cigarettes, brand 333 is used for beer products. “According
to German trademark law, these marks are refused or only

177
Kieu Thi Thanh (2013), International integration of intellectual property
rights protection in Vietnam, Politics - Administration Publisher, p. 200.

277
accepted when at least three letters or numbers are
combined or with letters that must be able to pronounce
them.”178
- Conventional signs, symbols, drawings (e.g. a
venomous snake on a plate for pharmaceutical products, or
® as a mark of proprietary protection) or common name of
the product. goods or services in any language, the usual
shape of the goods or a part of them, the usual shape of their
packaging or containers that were in regular and generally
accepted use before the date of apply for. For example, Hue
beef noodle soup, fish sauce, coffee, wine, orange juice and
orange shape... the above signs have become the common
name for the product.
- Signs indicating time, place, production method,
type, quantity, quality, nature, composition, use, value or
other characteristics describing goods or services (these
elements are the subject of labels intended to inform the
goods), for example, the phrases “natural mineral water”,
“raw milk”, “stain cleaners”. .. or a sign that adds
significant value to the goods cannot be registered as a

178
World Intellectual Property Organization, note (317), p. 73.

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trademark... Unless such sign has acquired distinctiveness
through use prior to the time of filing the application for
registering trademark.
- Signs describing the legal form, business field (for
example: limited liability company... operating in the field
of commercial services...).
- A sign indicating the geographical origin of goods
or services, is a sign used for local products and has the
meaning of indicating the geographical origin of the
product (indicating that the product is of local origin). A
sign indicating the geographical origin of a product is
usually a place name, but can also be a local symbol
(images of typical local objects, such as symbols, maps,
flags, badges, landmarks, special local works…), or it can
be any other sign. A place name can be the current or
historical name, the official name or the folk name of a
geographical area (determined by administrative
boundaries or geographical methods). For example, Phu
Quoc fish sauce, Buon Ma Thuot coffee.
Signs of geographical origin are essentially
indistinguishable; they suggest to consumers an association

279
with a geographical name, indication of the place of
manufacture or the ingredients used in the good, or,
depending on the circumstances, indicate the
characteristics of a good that are relevant to its origin,
unless such sign has been widely used and recognized as a
mark prior to the date of filing application or registered as
a collective or certification trademark.
- The sign is identical or confusingly similar to a
trademark of another organization or individual that has
been registered for identical or similar goods or services on
the basis of an application with the filing date or priority
date earlier in the case of an application for priority right,
including an application for registration of a trademark
filed under an international treaty to which the Socialist
Republic of Vietnam is a contracting party, unless the
registration of such trademark is terminated under the
provisions of Point d Clause 1 Article 95 or invalidated
according to the provisions of Article 96 according to the
procedures specified at point b clause 3 Article 117 of the
Intellectual Property Law.

280
 - Signs identical or confusingly similar to another's
trademarks that have been widely used and recognized for
identical or similar goods or services before the filing date
or priority date in the case of an application with the right
of priority, or the registration of such trademark has been
terminated for less than three years. Except for cases where
such trademark registration is terminated according to the
provisions of point d clause 1 Article 95 according to the
procedures specified at point b clause 3 Article 117 of the
Intellectual Property Law.
- Signs identical or confusingly similar to a well-
known trademark registered by others for goods or services
that are identical or similar to goods or services bearing a
well-known trademark or registered for goods or services.
dissimilar goods or services, if using such sign may affect
the distinctiveness of a well-known trademark or register a
trademark to take advantage of the well-known trademark.
For example, using the Coca Cola trademark for a
garment product that is not identical with a beverage
product but is not protected or using a confusingly similar
sign such as COLA COTA, or COKE COLA...

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 - A sign that is similar to a tradename being used by
another person if such use may cause confusion for
consumers about the origin of goods or services.
- A sign that is identical or similar to a protected
geographical indication if the use of such sign may lead
consumers to misunderstand the geographical origin of the
goods.
- Signs identical with or not significantly different
from another person's industrial design that has been or is
being protected on the basis of an industrial design
registration application with a filing date or priority date
earlier than the priority date of the trademark registration
application.
- A sign that is identical or confusingly similar to the
name of a plant variety that has been or is protected in
Vietnam if such sign is registered for goods as a plant
variety of the same or similar species or collected products.
harvested from plant varieties.
- Signs identical or confusingly similar to names and
images of characters and images in works covered by
copyright protection of others that were widely known

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before the filing date, except with the permission of the
owner of the work.
However, what is a confusingly similar sign is not
clearly defined, but it depends a lot on the feelings of the
appraiser as well as those with dispute settlement authority,
if any. Circular 01/2007/TT-BKHCN summarizes the
method of comparison between two trademarks in the
following cases, they are considered to be “similar to the
extent of causing confusion”. That is, to compare the
structure, content, pronunciation (for word signs), meaning
and form of expression of signs (for both text and pictorial
signs), and at the same time to make a comparison of goods
or services bearing the mark with those bearing the
reference mark.
A sign is considered identical or confusingly similar
to a control mark used for identical or similar or related
goods in the following cases:
(i) The sign is identical with the reference trademark
and the goods or services bearing the sign are identical or
similar to the goods or services bearing the reference
trademark;

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 (ii) The sign is identical with the reference
trademark and the goods and services are identical with the
goods or services bearing the reference trademark of the
same trademark owner;
(iii) Signs that are confusingly similar to the
reference trademark and goods or services bearing the sign
identical or similar to goods or services bearing the
reference trademark, except when calculating the similarity.
similarity in goods and services and the similarity of signs
are not sufficient to create a possibility of confusion when
similar signs are used;
(iv) The sign is identical or similar to the reference
trademark which is a well-known trademark and the goods
or services bearing the sign, although not identical or
similar to the goods or services bearing that trademark, the
use of the sign is not identical as a mark may mislead
consumers into believing that there is a relationship
between the goods or services bearing that mark and the
owner of the well-known trademark, which is likely to in
fact impair the ability to distinction of a well-known

284
trademark or damage to the reputation of a well-known
trademark.
For example, Ms. Anh H - the owner of the bakery
shop "Anh Hong" sued Ms. T - the owner of the bakery
shop "Anh Hang" about the trademark.
In 1995, Ms. Anh H opened a flan production
facility in plastic containers with lids, took the name of the
establishment and the product was "Anh Hong", was
granted a trademark certificate in 2001. In 1999 , Anh Hong
establishment discovered that Ms. T had established a flan
production facility with the trademark "Anh Hang", which
used most of the details and colors of the "Anh Hong and
picture" trademark. Therefore, Ms. Anh H sued Ms. T for
infringing her trademark.
Ho Chi Minh City People's Court based on the
certificate of trademark registration, Ms. Anh H is the
owner of the Flan Anh Hong trademark, the trademark
colors are: white, red, yellow, brown, pink, green, blue.
dark; on the List of goods and services group 30: Flan cake.
The court has sent an official letter to the NOIP requesting
the assessment of the trademark "Anh Hang and the image".

285
After that, NOIP issued Official Letter No. 522/KN dated
12/12/2003 with the following comments: “…the
trademark “Anh Hang and pic” has the same set of letters
(the letters are different in the letters ă and ô), in addition
the graphic and text elements in that trademark are
presented in the same color combination as the equivalent
components of the mark under trademark registration
certificate No. 37509 (i.e. trademark “Hink Light and
Picture”), at the same time, these two trademarks are
applied to the same product, which is Flan cake”. From that,
the Court held that there were grounds to determine that the
trademark "Anh Hang and image" of Mrs. T used for the
Flan products produced by her establishment was an
infringement of the ownership rights to the trademark "Anh
Hong and image” under protection title. Therefore, the
Court based on the provisions of the Civil Code in 1995179

179
The Court relied on Articles 785, Article 796 and Article 804 of the 1995
Civil Code. At this time, although the 2005 IP Law had not been promulgated
yet, the provisions of the 1995 Civil Code on trademarks, trademark owners'
rights and acts of trademark infringement of the Civil Code 1995 in the same
as the 2005 IP Law.

286
to force Ms. T to compensate Ms. Anh H, to withdraw the
products bearing the "Anh Hang and picture" trademark.180
In the above example, Ms. T could not prove that the
trademark "Anh Hang" satisfies the condition of being
"distinguishable" from the trademark "Anh Hong" for the
same goods, so she requested to use Ms. admissible and, of
course, not protected.
Therefore, when designing a mark that makes goods
and services accessible to consumers, businesses should not
only design text signs, but should also use images, or a
combination of both. and ensure that the elements are easy
to remember, transmit, and be universal. In terms of art, it
needs to be beautiful, unique, impressive and outstanding,
ensuring that it does not coincide or cause confusion with
the trademarks of other businesses. Also, indistinguishable
and prohibited trademarks should not be used.
5.2.2.3. Signs that are not protected are trademarks
Article 73 of the Law on Intellectual Property
stipulates that the following signs should not be protected

180
Judgment No. 704/DSST dated April 16, 2004 of the People's Court of Ho
Chi Minh City.

287
in order to protect public order and protect social moral
standards:
- Signs identical or confusingly similar to the
National Flag, National Emblem, National Anthem of the
Socialist Republic of Vietnam and of other countries and
international anthems. For example, the national flag of
Vietnam, the flag of the United States...
- Signs identical or confusingly similar to symbols,
flags, badges, abbreviations and full names of state
agencies, political organizations, socio-political
organizations or major organizations socio-professional
values, social organizations, socio-professional
organizations of Vietnam and international organizations,
without the permission of such agencies or organizations.
For example, the badge of the Ho Chi Minh Communist
Youth Union.
- Signs identical or confusingly similar to real names,
nicknames, pseudonyms, images of leaders, national heroes
and celebrities of Vietnam and abroad. For example,
national heroes like Nguyen Trai and Quang Trung.

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 - Signs identical with or confusingly similar to
certification marks, inspection marks, or warranty marks of
an international organization that such organizations
request may not be used, unless they are registered by that
organization themselves as certification trademark.
- Signs that mislead, confuse or deceive consumers
about the origin, features, uses, quality, value or other
characteristics of goods or services (eg. for example Korean
for ginseng products, or use a famous mountain in
Switzerland for chocolate products).
- Signs are only colors that cannot be combined with
word or pictorial signs or are not represented in the form of
word or pictorial signs.181
- Signs contrary to social order and harmful to
national security.182
5.2.3. Register to establish rights to trademarks
The registration of trademark protection has great
legal and economic significance because trademark
registration helps to protect the owner against the

181
Point b, Section 39.2 of Circular 01/2007/TT-BKHCN.
182
Point b, Section 39.2 of Circular 01/2007/TT-BKHCN.

289
production of counterfeit goods, like "counterfeit goods".
Besides the advantages of the market economy and the
globalization trend, which is to make transactions more
vibrant and diverse, people have many opportunities to
choose goods and services, whereas there is a situation in
which some individuals or organizations make counterfeit
goods or similar goods for their own profit or unfair
competition.
Therefore, registration of trademark protection
contributes to limiting the production of counterfeit goods,
similar to "fake goods" and creates conditions for subjects
to feel secure to invest in improving the quality of goods
and services. When goods and services are reputable, the
trademark owner can transfer the right to use the mark to
production and business entities, in the same field but
without a name, and this is also a great profit channel to
trademark owners. The transfer of trademarks to other
entities not only brings profits, but also contributes to
promoting the image of goods and services to more
consumers with a larger space, thereby consuming more
product.

290
 The registration of trademark protection not only
protects the owner of that trademark but also contributes to
protecting consumers from counterfeit goods. Consumers
can choose the goods and services they like, in accordance
with their needs and tastes. When the trademark is
protected, the owner of the industrial property object will
be assured to invest in production and business to improve
the quality of goods and services so that consumers can
benefit. The registration of protection also contributes to
creating a healthy competitive business environment,
businesses want to sell a lot of goods and products, want to
expand market share, increase revenue, and their influence
is constant investment in technology to improve quality,
increase products, reduce costs, besides constantly
investing in people who have a conscientious attitude at
work, an attitude of respect for consumers... contribute to
promoting production and business development,
diversifying goods and services...
In addition, registration of trademark protection is
also the basis for competent authorities to settle disputes.
When there is a request to resolve trademark disputes, the

291
competent state agency will base on the legal documents to
resolve disputes. It is one of the important evidences and
the disputing subject without a protection title will have to
prove his legal rights of title holder.
5.2.3.1. Mode of filing registration and application of
reagistration for the establishment of trademarks rights
For Vietnamese and foreign individuals and
organizations permanently residing in Vietnam or
headquartered in Vietnam, apply directly at the National
Office of Intellectual Property or through an industrial
property representative.
Foreign individuals who do not permanently reside
in Vietnam, or foreign organizations that do not have
production and business establishments in Vietnam, shall
file applications through an industrial property
representative.
In principle, Vietnam applies the principle of first-
to-file. Specifically, in case there are many applications by
many different people for registration of trademarks that
are identical or confusingly similar to each other for
identical or similar products or services, or where there are

292
many applications of if the same person registers identical
marks for identical products or services, a protection title
may only be granted to the trademark in a valid application
with the earliest priority or filing date among the
applications which meets the conditions to be granted a
protection title.
In case there are multiple registration applications
mentioned above that satisfy the protection conditions and
have the same priority or earliest filing date, a protection
title may be granted to the subject matter of only one
application in the same period by agreement of all
applicants. If no agreement is reached, the respective
objects of those applications will be refused to grant
protection titles.
The applicant can invoke the right of priority under
an international convention to which Vietnam is a
contracting party (for example, under the Paris Convention
it is 6 months for trademarks).
For an applicant who wants to enjoy priority under
the Paris Convention, the following conditions must be
met:

293
 - The applicant is a citizen of Vietnam, or a citizen
of a member country, or resides or has production and
business headquarters in Vietnam or a country that is a
party to the convention.
- The first application has been filed in Vietnam or
in the country of the Convention, which contains the part
corresponding to the claim for priority right.
- Applications are submitted within a period of 6
months from the priority date.
- The application clearly states the priority right and
submits a copy of the first application.
- Pay the priority right fee.
A protection registration application is a collection
of documents related to the protected object, including:
- A declaration requesting the grant of a certificate
of trademark registration: according to the prescribed form,
which contains a sample of the mark, a list of goods and
services bearing the mark; quantity of three copies.
- Trademark samples: 9 samples; the size is not
larger than 8cm x 8cm, the trademark sample must be
described to clarify the constituent elements of the mark

294
and the overall meaning of the mark (if any); if the
trademark contains words or phrases belonging to
figurative language, those words and phrases must be
transcribed; if the trademark contains words or phrases in a
language other than Vietnamese, it must be translated into
Vietnamese; if the trademark is an audio, the sample of the
trademark must be an audio file and a graphic
representation of that sound, if the trademark is applied for
registration in color, three black and white trademark
samples must be added.
If it is a collective trademark, there must be a
regulation on the use of the collective reademark: The
regulation must contain the minimum contents as
prescribed (Article 105 of the Intellectual Property Law and
point 37.6 of Circular 01/2007/TT-BKHCN), including:
- Name, address, basis of establishment and
operation of the collective organization;
- Criteria to become a member of a collective
organization;
- List of organizations and individuals permitted to
use the trademark;

295
 - Conditions for using the trademark;
- Measures to handle violations of regulations on
trademark use;
- Information about the trademark and goods and
services bearing the trademark;
- Obligations of the person using the trademark;
- The rights of the trademark owner, the mechanism
of licensing, control and inspection of the use of the
trademark.
The trademark sample must be described:
- Specifying that the registered trademark is a
collective trademark;
- Constitutive elements; the meaning of the
trademark; transliteration of words in figurative language;
Vietnamese translation of words in foreign languages;
- Clearly state the content and meaning of the figure
element;
- The list of goods and services must be clearly
stated and appropriately grouped according to the
International Classification of Goods and Services;
- Power of attorney, if any; and

296
 - Proof of payment of registration fee.
For certification trademarks, the applicant must
indicate in the declaration the purpose, content and method
of such certification (for what certification: quality, origin,
geographical origin or a combination of for that purpose;
certification content: specific conditions on subjects, goods
and services; certification like: order and procedures for
granting certification, testing methods, maintaining
purposes and certification content).
Applications must be uniform: each application is
only required to register one trademark for one or more
goods or services. In addition, if the trademark applied for
registration contains an indication of geographical origin,
the application owner must submit with the application a
document certifying that the collective trademark
registration organization is an organization of households,
individuals, businesses and individuals. local production
and business enterprises corresponding to geographical
indications, documents permitting the use of place names
or other signs indicating the geographical origin of local
specialties for registration of collective marks, trademarks

297
certification has that element. 183 The description must
clearly state the contents of the object of protection.
Documents proving the right to register the
trademark as prescribed in Article 87 of the Intellectual
Property Law, the right of priority according to Article 91
of the Intellectual Property Law. The applicant must submit
a copy of the first application, or the Certificate of
Exhibition Exhibition. According to the Paris Convention,
applications must be filed within 6 months from the date of
first filing or from the date of exhibition.
The application form must be made in Vietnamese,
if the documents are in a foreign language, they must be
translated into Vietnamese.
The section "List of goods and services bearing the
trademark" in the Declaration must be grouped in
accordance with the International Classification of Goods
and Services under the Nice Agreement published by the
NOIP in the Public Property Official Gazette. If the
applicant does not self-classify or classifies incorrectly, the

183
Section 37.7 of Circular 01/2007/BKHCN dated February 14, 2007 as
amended by point h clause 31 Article 1 of Circular 16/2016/TT-BKHCN
dated June 30, 2016.

298
NOIP will classify and the applicant must pay the
classification service fee as prescribed.
5.2.3.2. Application processing
A competent state agency will receive an application
from an individual or organization when all the statutory
conditions are satisfied. Specifically, it must have: A
declaration of trademark registration which contains
enough information to identify the applicant and a sample
of the trademark; Proof of payment of fees.
The filing date is the date the application is received
by the state management agency in charge of industrial
property rights or the international filing date for an
application filed under an international treaty.
* Formal examination of the application (Article
109 of the IP Law):
After receiving the application, NOIP will conduct
formal examination of the application. The examination
period is one month from the date of application, the
purpose of this examination is to check whether the
application is valid.

299
 The application will be considered invalid if it falls
into one of the following cases:
The application does not meet the requirements in
terms of form. For example, not written in Vietnamese, not
written on A4 size paper, the application does not guarantee
the consistency.
- The object stated in the application that is not
protected under the provisions of law violates Article 73 of
the Intellectual Property Law.
- The applicant does not have the right to register,
even if the registration right belongs to many organizations
or individuals, but one or several of them do not agree to
submit the application.
- The application is not submitted in accordance with
the provisions of the law. For example, a foreigner who
does not permanently reside in Vietnam applies directly to
the NOIP without going through a representative.
- The applicant fails to fully pay the prescribed fees
and charges.
In case there are bases to believe that the application
for the trademark is invalid, the NOIP will notify the

300
intention to refuse the valid application. It clearly states the
reasons and sets a time limit for the applicant to correct
errors or object to the intended refusal. If the time limit
expires without repair or unsatisfactory repair, the
application will be rejected.
If the formal examination finds that the statutory
conditions are satisfied, the competent state agency shall
issue a notice of acceptance of the application and publish
it in the industrial property gazette within two months from
the date the application is accepted. For trademark
registration applications that have not yet been properly
accepted by the state management agency in charge of
industrial property, they shall be published immediately
after being received.
Since the publication of the application, any
individual or organization has the right to give opinions to
the NOIP on granting or not granting a protection title.
* Substantive examination of the application (Article
114 of the IP Law):
The trademark will be appraised by the competent
state agency. The purpose of this appraisal is to check

301
whether the object of protection title is eligible for
protection as prescribed by law and determine the scope of
protection.
The time limit for substantive examination of a mark
shall not exceed nine months from the date of publication
of the application.184
After substantive examination, NOIP will notify the
applicant of the results. If the protection conditions are not
met, the reason for refusal must be clearly stated. The
rejected person has the right to lodge a complaint with the
NOIP. If you do not agree with the reply of the Department,
you have the right to complain to the Minister of Science
and Technology or sue to the People's Court according to
the provisions of law.
If eligible, NOIP will notify applicants and ask them
to carry out necessary procedures to grant protection titles.
Before the state management agency in charge of industrial
property rights issues a notice of refusal to grant a
protection title or a decision on the grant of a protection title,
the applicant has the right to request amendment,

184
Clause 2 Article 119 IP Law.

302
supplementation or withdrawal of the application request if
necessary.
Within five months from the date of publication of
the trademark registration application (before the date of
issuance of the decision to grant a protection title), any third
party has the right to object to the grant of a protection title.
This objection must be made in writing, enclosed with
documents or cited as an information source for proof, and
must pay fees and charges.
* Amendment of protection title (Article 97 of IP
Law):
The trademark owner has the right to request the
NOIP to amend the information on the protection title and
must pay a fee for:
Change, correct omissions related to the name and
nationality of the author, name and address of the
protection title holder.
Amendment of regulations on use of collective
trademarks and regulations on use of certification
trademarks.

303
 The NOIP, in the process of accepting applications,
if there are errors in the protection title, is responsible for
correcting it at the request of the protected trademark owner
and in this case the trademark owner is not required to pay
a fee.
Trademark owners have the right to request the
NOIP to narrow the scope of rights to the mark. In this case,
the respective trademark application must be re-examined
for content and the requester must pay a fee.
* Division, supplement and conversion registration
applications (Article 115 of the IP Law):
The applicant only has the right to divide,
supplement and converse the trademark registration before
the NOIP announces the refusal or acceptance to grant the
protection title. The addition of a trademark registration
application must not expand the scope of the object
disclosed or stated in the application and does not change
the nature of the object requested for registration in the
application. The consistency of the application must be
ensured. For a divided application, the filing date of the

304
divided application is determined to be the filing date of the
original application.
* Withdrawal of registration application (Article
116 of the IP Law):
The applicant has the right to declare the withdrawal
of a trademark registration application in writing in his own
name or through an industrial property representation
service organization (if the power of attorney clearly states
the authorization to withdraw the application). before the
NOIP announces the refusal or the decision to grant a
protection title. From the moment the applicant declares to
withdraw the application, all subsequent proceedings
related to that application will be terminated. All
withdrawn trademark registration applications are
considered to have never been filed, except for cases where
the application is used as a basis for claiming priority right.
5.3. INTERNATIONAL REGISTRATION OF
TRADEMARKS
5.3.1. The Madrid Agreement
In the context of international integration and
development, goods and products of individuals and

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organizations are not only exchanged domestically but also
exported and imported. In order to facilitate trademark
protection, reduce costs and save time, countries met and
approved the Madrid Agreement of 1891. The content of
this Agreement is to establish a international trademark
registration procedure, which offers the possibility of
trademark protection in one or all of the member countries
through the submission of a single application to the Swiss
office of the WIPO Organization in Geneva. According to
Article 1, paragraph 2 of this agreement, “Nationals of all
Member States may obtain protection in other countries for
their trademarks in respect of goods and services, which
have been registered signed in the country of origin, by
filing an application for registration of that trademark with
the International Bureau of Intellectual Property, provided
for in the Convention Establishing the World Intellectual
Property Organization, through the intermediary of the
authority in the country of origin".
Regarding procedures, the subject must file a
protection registration application in the country (country
of origin) in which he registers its production and business

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activities. After being granted a personal protection title,
the organization will apply to the international office
through the national industrial property office and
designate the country of protection.
For example, if a Vietnamese individual or
organization wants to file an international application for
protection of a trademark abroad under the Madrid
Agreement, the mandatory condition is that the trademark
has been granted a certificate of trademark registration by
Vietnam.
In principle, the International Office does not accept
applications directly from individuals, organizations or
representatives of these individuals and organizations, but
the National Intellectual Property Office will forward the
application to the international office. According to
regulations, the application for protection must be written
in English or French. The date on which the authority of the
country of origin receives the application for international
registration shall be deemed to be the date of receipt of the
international application at the international office. If the
application for registration has inappropriate contents, the

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international office shall request the subject to amend and
supplement the application within a time limit, after the
expiration of the above time limit, the individual or
organization filing the request fails to amend or supply the
application shall be considered as the subject giving up the
application. If the application is in accordance with the
provisions of the Agreement, the international office will
record the registration of the trademark in the international
register, and at the same time notify the competent
authorities of the designated countries in the application,
and published in the International Trademark Gazette of the
WIPO.
After receiving the application from the
international office, the IP office of the designated country
will examine the content of the application for international
registration in accordance with the laws of its country.
Within 12 months from the date of receipt of the
notification of the international office, the competent
authorities of the designated countries must have a
conclusion on the examination of the application. If the
designated State intends to reject the application or to

308
refuse part of the application, the competent authority of the
designated country shall notify the applicant in writing,
through the international office. The notice of refusal must
clearly state the reason for the refusal, upon receipt of the
written notice of refusal, the international registration
office must notify the competent authorities of the country
of origin and the applicant for trademark registration.
Within 3 months from the date the competent authority of
the designated country sends a notice of refusal to protect
the mark, the individual or organization filing an
international registration application has the right to appeal
the decision of this agency. The outcome of the complaint
settlement by the designated national authorities shall be
communicated in writing to the international office. The
international office will make a record in the international
register, and at the same time send a copy to the applicant.
If the refusal period expires and the competent authority of
the designated country does not issue a written refusal, the
trademark is automatically protected in the designated

309
country. According to the Madrid Agreement, the term of
protection is 20 years and can be renewed continuously.185
However, for a period of five years from the date of
the international registration, the application is still subject
to the application of the country of origin. If the national
application is invalidated, the international application is
also invalid and invalid. If after this time limit, the
international application will be independent from the
application in the country of origin.
5.3.2. The Madrid Protocol
Besides many advantages, the Madrid Agreement
also revealed limitations, making many countries reluctant
to join. That is to register an international application, that
application must be registered and granted a protection title
in a country of origin, so a new application filed only in a
country that has not yet been protected will not be accepted
under the Agreement, such provision would prolong the
term of international registration. The processing time for
applications from designated countries is short (12 months).

185
Article 6 Madrid Agreement - Translation of WINCO Law Firm.

310
 Therefore, to overcome the above disadvantages, the
countries signed the Madrid Protocol which took effect on
December 1, 1995.
With the above Protocol, applications for
international protection can be accepted in more countries.
The salient feature of this Protocol is that it allows the
international registration of marks based on a basic
application and not necessarily on a Certificate of
Registration, which enables the applicant to both filing in
the host country, and at the same time can submit an
international application to designate the claimant country,
this saves time and effort in filing a protection claim
compared to the Agreement.
In general, the procedure for international
application filing is under the Protocol as well as the
Agreement, but there are some differences as follows:
- Individuals and organizations filing an application
can base on the application in the country of origin or the
certificate of trademark registration in the country of origin.
- The application form can be written in French, but
can also be written in English. The competent authority of

311
the country of origin may limit the choice of an applicant
to be presented in either language.
- The time limit for the competent authority of the
designated country to examine the application is 18 months
for the Protocol and 12 months for the Madrid Agreement.
According to the provisions of the two documents
above, we see that the system of international registration
of trademarks has the following advantages:
- The requesting individual or organization must
submit only one application.
- The application is made in one language (English
or French).
- Only pay a fee per currency unit.
- After an international application is filed, if the
refusal period expires but the designated country does not
refuse, the application for protection of the trademark will
automatically be protected in that country.
- When there is a change of information in the
application such as name, address...just go through one
procedure and bear a fee.
- The application's expiry date is the same day.

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 - Individuals and organizations that want to renew
their application only need to apply for an extension once.
In case a Vietnamese individual or organization files
an international application under this Protocol, the NOIP
shall, within 30 days of receiving the application, transfer
that application to the International Bureau.

5.3.3. The view of the Vietnamese state with

international conventions
Early understanding the importance of trademark
protection in foreign countries, the Government of Vietnam
joined the Madrid Agreement on international registration
of trademarks on March 8, 1949. Vietnam joined the Paris
Convention for the Protection of Industrial Property.
However, the performance of the member's obligations and
the application of the provisions of the Madrid Agreement
to Vietnam was interrupted for a while due to war and the
influence of other historical upheavals. From 1954 to April
30, 1975, the Government of the Republic of Vietnam
continued to fulfill the obligations of a member state to this
Agreement and there were about 20,000 international

313
trademarks registered in the South of Vietnam, under the
Madrid Agreement.
After the country's reunification in 1975, the State of
the Socialist Republic of Vietnam was the legal and sole
representative of Vietnam in international treaties.
However, we only really continued to inherit our rights and
obligations as a party to the Madrid Agreement in 1976,
according to the Declaration of the Government of the
Socialist Republic of Vietnam.
In the process of performing the obligations of a
member state, Vietnam is ready to participate in the Madrid
Protocol, because compared with the Agreement, the
Protocol has many advantages and creates more favorable
conditions for businesses. Vietnam will soon integrate into
the world economy, fully implement bilateral and
multilateral agreements signed on IP.
The Madrid Protocol took effect in Vietnam on
11/07/2006. During the time before the Madrid Protocol
came into force in Vietnam, the IP Office of Vietnam has
been exchanged and shared many practical experiences by
the international office of WIPO and some member

314
countries of the Protocol in the application and operation of
the Protocol for the international protection of trademarks.
To be accepted for protection in Vietnam, an
internationally registered trademark must go through the
following processing procedures. When receiving a notice
from the international office about an international
registration of a trademark with the designation of Vietnam,
the NOIP will conduct a specific substantive examination
of the application to consider whether the mark's ability to
protect is satisfied. standards of protection under
Vietnamese law? Within 12 months from the date on which
the internationally registered mark is published in the
WIPO International Trademark Official Gazette. NOIP
must make a written conclusion on the protectionability of
an internationally registered mark designating Vietnam.
For trademarks that are likely to be rejected in whole or in
part, NOIP will notify in writing the applicant through the
International Bureau, clearly stating the reason for the
refusal. If within 12 months from the date of publication of
the international registration mark in the International
Trademark Official Gazette of WIPO, the international

315
office has not received a notice of refusal relating to the
international registration of the trademark, that trademark
is protected in Vietnam. Internationally registered
trademarks recognized for protection in Vietnam will be
published in the Vietnam Industrial Property Official
Gazette. The scope of protection of trademarks, if changed,
will be certified by the NOIP according to the content of
such trademark registration and recorded by the
international office in the international trademark register.
Trademarks registered internationally under the
Protocol are considered as those for international marks
under the Madrid Agreement, but there are some notes on
the time limit for refusal, the time limit for sending the
notice of refusal to the international office and deadlines for
replying to errors related to notification of refusal, of
national authorities, time limit for refusal in case of
objection and a number of other notes in the process of
issuing notices of refusal of international registration.
5.4. TITLE OWNER, TIME OF PROTECTION,
RIGHTS AND LIMITATIONS OF THE RIGHTS OF
THE PROTECTION

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5.4.1. Trademark owner
Trademark owner means an organization or
individual that is granted a protection title by a state agency,
unless otherwise provided for by law. That is, in the case of
a well-known mark, there is no need to apply for a
protection title, the subject who wants to enjoy the status of
a well-known trademark only needs to prove that his mark
satisfies the criteria of a well-known trademark.
In addition to the person assigned through the
agreement, the heir is also the owner of the trademark.
5.4.2. Term of protection
A trademark registration certificate is valid from the
date of issue to the end of ten years from the date of filing,
and can be renewed several times in a row for ten years
186
each. Trademarks are not the same as patents or
industrial designs, so there is no need to limit their use.
However, due to administrative reasons, most countries in
the world stipulate the term of protection titles for
trademarks and can be extended many times. The extension
of trademark registration will help the State collect a

186
Clause 6 Article 93 IP Law.

317
significant fee, which is a necessary source of revenue for
the operation of the registration agency as well as
increasing the state budget. The regulation of the term and
extension of protection also helps the owner of the
industrial property object to consider whether to extend the
title.
5.4.3. Rights of the trademark owner
* Title holder has exclusive right to use the
trademark, specifically:
(i) Putting a trademark on goods, packages, means
of business, services and transaction documents. A basic
activity of the subject conducting production and business
is to create products and goods to bring to consumers
through exchange and purchase. Therefore, the subject
affixes a trademark on the goods and products so that
consumers can recognize them. The purchase and sale is
done through a contract, so the owner can use his trademark
on contract documents and other transaction documents.
(ii) Selling, offering for sale, advertising for sale,
displaying for sale, storing for sale, transporting goods
bearing the protected trademark. One of the indispensable

318
activities of production and business subjects in the current
market economy is advertising activities, promoting
business images, promoting their products to consumers.
When performing these activities, the subject has the right
to use the protected trademark for advertising and
marketing on the mass media and other methods such as
distributing leaflets.
(iii) Import of goods bearing the protected trademark.
* Trademark owners have the right to prevent others
from using the mark, unless otherwise provided by law
(clause 2 Article 125 of the IP Law). The function of a
trademark is to distinguish goods and services of the same
type, so the owner has the right to prevent other subjects
from using identical or similar marks to cause confusion for
consumers. Preventing others from using the same or
similar trademark not only protects the legitimate interests
of the owner of the industrial property object, but also
protects the interests of genuine consumers as well as
ensures society fairness, creating healthy competition.
* The protected trademark owner has the right to
dispose of the trademark. As an intangible property, the

319
owner of a trademark has the right to sell, donate or give
away his trademark in accordance with the law, and has the
right to transfer the right to use his trademark to other
subjects. Through a contract, it can be said that the transfer
of the right to use the trademark is now very common for
well-known or widely known trademark, this is a huge
profit channel for the owner of the trademark.
However, it should be noted that the assignment of
rights to a trademark must not cause confusion about the
characteristics and origin of goods or services bearing the
trademark. The right to a trademark may only be transferred
to an organization or individual that meets the conditions
for the person having the right to register that trademark.
The right to use a collective trademark may not be
transferred to an organization or individual that is not a
member of the owner of that collective trademark. The
licensee of the right to use the trademark is obliged to write
instructions on the goods and packages of goods about the
fact that such goods are manufactured under the contract to
use the trademark.

320
 * Trademark owners have the right to leave an
inheritance in accordance with the law on inheritance. As
mentioned above, trademarks as intangible assets, subject
to the right to bequeath according to will or law.
* Trademark owners have the right to request
protection from state agencies when there is an
infringement. When industrial property rights are infringed,
the trademark owner has the right to request protection
from a competent state agency. Depending on each case,
state agencies will handle with criminal, administrative and
civil measures or control import and export goods.
Currently, Vietnam has six enforcement agencies to
protect IP rights in general and trademarks in particular: (i)
Public security agency; (ii) Market regulator; (iii)
Specialized inspection agency; (iv) Customs authority; (v)
People's Committee; (iv) People's Court. However, the
division of functions and tasks between agencies is unclear
and overlaps, so the enforcement of IP rights is still limited,
and the rights of industrial property object owners as well
as consumers are not well protected.

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5.4.4. Restriction of rights of trademark owners
In principle, the law protects industrial property
object owners the exclusive right to exploit and use the
trademark. However, the rights of trademark owners are
also limited in protecting the interests of the State, public
interests and the interests of other subjects, such as the
owner's obligation to use the trademark. When granted a
protection title, the owner has the exclusive right to use his
trademark. However, besides the subjects who registered
for protection for the purpose of using the mark in real
business activities, in order to attract customers and
increase competitiveness, there were many subjects
registered for protection for the purpose of trademark
protection. malicious intent to gain rights, take advantage
of the reputation of the trademark or commit acts of
infringing upon the protected trademark of another subject.
Because of that, the intellectual property laws of countries
around the world in general, and in Vietnam in particular,
all ask that the owner must "use" the trademark after being
granted a protection title.187

187
Trường Đại học Luật TP. HCM, note (103), p. 350.

322
 Clause 2, Article 136 of the Intellectual Property
Law stipulates: The trademark owner is obliged to use the
mark continuously. The use of a trademark by a licensee
under a trademark use contract is also considered the
trademark owner's use of the mark. In case a mark is not
used continuously for five years or more, the certificate of
registration of such mark shall be terminated according to
the provisions of Article 95 of the Intellectual Property Law.
Because, “the basic principle is that trademark law only
protects trademarks that are being used, and subjects do not
have the right to speculate on marks that may be used by
the other party”.188
The case of honest use of the trademark is not
considered an infringement of the rights to the trademark.
According to the provisions of Article 125 of the IP Law, a
trademark owner may not prevent others from performing
the following acts (in other words, this is an act that is not
considered an infringement of the rights to the mark): “Use
truthfully a person's name, sign describing the type, quality,

188
“Overview of Trademark Law”,
https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm, assess date
01/03/2019.

323
quantity, utility, value, geographical origin and other
characteristics of the goods or services" or "use the
trademark identical or similar to a protected geographical
indication if the trademark has been obtained in good faith
prior to the date of filing of the application for registration
of such geographical indication”.
To be considered to use truthfully a person's name,
sign describing the type, quality, quantity, utility, value,
geographical origin and other characteristics of goods or
services when satisfied certain conditions, in particular:
- Exist in reality a person's name, sign describing the
type, quality, quantity, use, value, geographical origin and
other characteristics of goods or services, and these signs
coincide with or similar to a protected trademark of another
subject.
- The use of these signs is only for the purpose of
accurately informing consumers of real and existing
information related to the goods and services that the user
of the sign is providing.
- Signs that are identical or confusingly similar to a
protected trademark need to be presented together with

324
other indicative information with an arrangement and
layout so that the sign is not too prominent in the future.
The relationship with other indicative signs in a whole
makes consumers mistakenly believe that the goods and
services provided carry the protected trademark.
Trung Nguyen trademark used for coffee products
has been registered for protection. A person named
NGUYEN TRUNG NGUYEN opened a coffee roasting,
packaging and packaging facility and used on the product
packaging the words "Roasted, Grind and PACKED AT
NGUYEN TRUNG NGUYEN FACILITY, 36 HUE
STREET, HANOI" (This text is clearly written next to
many other decorative elements for product packaging, for
example coffee cup shape, decorative color blocks for each
corner of the coffee package... but is not presented as the
trademark TRUNG NGUYEN and the image granted a
protection title by the NOIP). In this case, it can be
confirmed that the use of a sign indicating the commercial
origin of the product, which contains the phrase TRUNG
NGUYEN by the establishment Nguyen Trung Nguyen, 36
Pho Hue, Hanoi is an act of using faithful use of the person's

325
name (of the establishment's owner) and thus is not
considered an infringement of the rights to the protected
trademark mentioned above. Therefore, the honest use of a
person's name for a trademark of goods/services, if it does
not cause confusion about the origin or quality of the
product for consumers, is still accepted by the NOIP.
The owner also runs out of rights to the trademark
(exhaustion of right doctrine). According to point b, clause
2, Article 125 of the current IP Law: “The circulation,
importation and exploitation of the utility of the product
shall be made by the owner or the licensee of the right to
use, including the transfer of the right to use under the
decision, the person having the right to use before the
industrial property object under the provisions of this Law
puts it on the market, including the foreign market". The
importation of goods bearing a genuine protected mark
(genuine) that has been brought to the foreign market by
the owner of the trademark, or by another entity with the
owner's consent, is not considered a violation. trademark
infringement. The trademark owner has no right to prevent
it. The trading of these imported products takes place in

326
parallel with authorized distribution channels in the country.
This behavior is called parallel import.
According to the above regulation, the expiration of
rights to industrial property objects occurs when "products
are lawfully put on the market, including foreign
markets". 189 Accordingly: “Products that are legally put
on the market, including foreign markets (…), are
understood as products owned by the owner, the person
who has been assigned the right to use, including the
license to use the right under a compulsory decision, the
person having the prior-use right before the industrial
property object has been put on the domestic or foreign
market".
It should be noted in parallel import activities the
following issues (i) imported goods are genuine goods (real
goods); (ii) the goods are distributed in foreign markets by
the trademark owner or other entity with the consent of the
trademark owner; (iii) the holder of the right to the mark in
the exporting and importing country is one or two different
entities but has a legal and/or economic relationship with

189
Clause 2, Article 21 of Decree 103/2006/ND-CP. September 22, 2006.

327
each other (parent-subsidiary company; distribution
business partners…). Parallel imports occur because of
price differences between countries. When the same goods
have different prices between countries, the goods will be
imported from countries with low selling prices for resale
in countries with high prices.

5.5. TERMINATION AND INVALIDATION OF THE

PROTECTION TITLE
5.5.1. Termination
A trademark protection title will be terminated in
whole or in part in the following cases (Article 95 of the IP
Law):
The protection title holder fails to pay fees and
charges to maintain or extend the validity as prescribed.
The protection title holder declares to give up the
right to the trademark;
The protection title holder no longer exists or the
trademark registration certificate holder no longer conducts
business without a legal successor;

328
 The trademark has not been used by the owner or the
person authorized by the owner for a period of five
consecutive years prior to the date of the request for
termination without good cause, unless the use is started. or
restart at least three months prior to the date of the request
for termination;
The holder of a trademark registration certificate for
a collective trademark does not control or effectively
controls the implementation of the regulation on the use of
the collective trademark;
The holder of a certificate of trademark registration
for a certification mark violates the regulations on use of
the certification trademark or fails to control or effectively
control the implementation of the regulation on the use of
the certification trademark;
The use of a protected trademark for goods or
services by the trademark owner or a person authorized by
the trademark owner misleads consumers as to the nature,
quality or geographical origin of the trademark. such goods
or services;

329
 The protected trademark becomes the common
name of the goods or services registered for the trademark
itself.
In case the trademark holder fails to pay fees and
charges for extension of validity within the prescribed time
limit, upon the end of that time limit, the validity of the
protection title automatically terminates from the date of
commencement of the period, fees and charges for validity
extension are not paid.
Based on the results of considering the application
for termination of a protection title and the opinions of the
concerned parties, the state management agency in charge
of industrial property rights shall decide to terminate the
validity of the protection title or notify the relevant parties
of refusal to terminate the validity of the protection title.
In case the state management agency in charge of
industrial property rights issues a decision to terminate the
validity of a protection title when the protection title holder
declares to give up industrial property rights, the validity of
the protection title shall be terminated from the date the
state management agency in charge of industrial property

330
rights receives the written declaration of the protection title
holder. For other cases, the validity of a protection title
shall be terminated from the date the state management
agency in charge of industrial property rights issues a
decision on invalidation of the protection title.
5.5.2. Invalidation of protection title
A trademark protection title is completely
invalidated when the applicant registers a trademark with
bad intentions (Article 96 of the Intellectual Property Law).
In addition, a trademark protection title may also be
partially or completely invalidated if the whole or part of
such protection title fails to satisfy the provisions on
registration rights, protection conditions, and amendments,
in the following cases:
- The applicant for registration does not have the
right to register and cannot be transferred by the person
entitled to registration;
- The trademark does not meet the protection
conditions at the time of granting the title as prescribed in
Articles 8 and Chapter VII of the Intellectual Property Law.

331
 For example, the trademark BIRD'S NEST is
registered for protection by the company Dona Tower to
attach to bird's nest water products. Later, this company
discovered that Interfood also used the WONDERFARM
BIRD'S NEST brand for bird's nest water. Dona Tower
Company has submitted a petition to Interfood to stop
infringing on the BIRD'S NEST trademark. Interfood
Company filed a complaint with the NOIP on the bases that
BIRD'S NEST (in Vietnamese: Ngân nhĩ) is the name of
the product, has no distinguishing ability, so it cannot be
protected. The NOIP, after hearing explanations from the
parties, had an opinion: BIRD'S NEST is a sign that is not
distinguishable, is not widely known to consumers, is not a
well-known trademark or as a trademark of Dona Tower,
therefore, decided to invalidate the Certificate of
Trademark Registration of Dona Tower.
In case the trademark owner is found not to have the
right to file an application, it will be considered dishonest
in filing the application. Therefore, the degree granted is
also invalidated. In addition to the cancellation of the
protection title, that individual or organization must also

332
compensate for damage caused by their trademark
registration act.
In addition, a trademark that causes confusion with
a previously protected trade name will also be refused to
grant a protection title or cancel the protection title if it has
been granted.
Example: Anheuser Busch Company has been
granted a trademark for the Budweiser since the late 19th
century in the United States. But before that, this trademark
belonged to the Czechoslovakian Plzen brewery dating
back to the 18th century. In Vietnam, the Budweiser
trademark was granted a protection title by the National
Office of Intellectual Property for the Plzen brewery.
Anheuser Busch Company believes that even though Plzen
Brewery is protected by the National Office of Industrial
Property, its products have appeared in southern Vietnam
before 1975, so Budweiser is also its trade name and
Considering that the US trademark Budweiser is still a
well-known trademark, the NOIP considers it reasonable
and has accepted to invalidate the protection title of Plzen
brewery.

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 If a protection title is invalidated in whole or in part,
the whole or a part of the invalidation of that protection title
will not take effect from the time of grant of the title.
Organizations and individuals have the right to request the
state management agency in charge of industrial property
rights to invalidate a protection title if the conditions for
payment of fees and charges are satisfied. The statute of
limitations for exercising the right to request invalidation
of a protection title is throughout the protection term,
except for the case of requesting for invalidation of a
protection title for a mark because the applicant does not
have the right to register or the trademark to be invalidated.
If a trademark does not meet the protection conditions, the
statute of limitations is five years from the date of grant of
the protection title or from the effective date of the
international registration of the mark in Vietnam.

334
CHAPTER 6: OTHER OBJECTS OF INDUSTRIAL
PROPERTY RIGHTS
6.1. Layout-design of a semiconductor intergrated
circuit
6.1.1. Definition
The rapid development of science and technology
has created products that are increasingly smaller in size
but maximize their functions and effects to serve human
needs or "smart products" that have automatic control
function. Products such as notebooks, smart phones, tablets,
Blu-ray players... might not exist if integrated circuits do
not appear. Integrated circuits not only opened the door to
modern consumer electronics, but also fueled the field with
a series of small, low-cost, high-performance chips being
produced each year.
A semiconductor integrated circuit is a finished or
semi-finished product in which elements with at least one
active element and some or all interconnections are
mounted within or on top of the material plate to perform
electronic functions. Integrated circuit is synonymous with

335
 190
IC, chip and microelectronic circuit. In everyday
language, integrated circuit refers to a type of product made
from semiconductors, which is very small in size and
capable of performing an electronic function.191
The first integrated circuit on a thin piece of
germanium was invented by engineer Jack Kilby in 1959
(who won the 2000 Nobel Prize in Physics for this
invention). In 1961, Robert Noyce (co-founder of Intel
Corporation - one of the world's largest corporations in the
production of "chips") invented the integrated circuit - the
microchip on the silicon and metal board that forms the
central device of the computer brain. Before this invention,
electronic devices had to depend on bulky and fragile
electrical circuits, including vacuum tubes made of glass.
Today, integrated circuits are present everywhere, in all
current electronic products (phones, laptops, pocket
computers, electronic watches ...), many products used in
daily life (such as microwave - microwave, air fryer -
airfrier, or elevator ...) to space research equipment.

190
Clause 14, Article 4 of the Law on Intellectual Property and Clause 1,
Article 3 of Decree 42/2003/ND-CP.
191
Le Dinh Nghi and Vu Thi Hai Yen, note (31), p. 91.

336
Pic 1 Integtated circuit on a thin piece of Jack Kilby
However, integrated circuits are not the main
purpose of this object's protection, because the IC objects
themselves are protected as patents. The main protection
purpose of this object is the design and layout of
semiconductor integrated circuits on a circuit board.
Therefore, the layout design of semiconductor integrated
circuits (referred to as layout design for short) is
understood as the spatial structure of circuit elements and
the interconnection of those elements in a semiconductor
integrated circuit.

Pic 2 Illustrate image of layout design

337
 Regulations on protection of layout designs
appeared for the first time in the United States, which is the
country with the world's leading developed semiconductor
electronic product manufacturing industry192 and also the
first country in the world. The world enacted the
Semiconductor Integrated Circuits Protection Act of 1984.
The reason the United States does not want to protect layout
designs as patents or copyrights is because these layout
designs are not novel or innovative (such as patents) and
very limited copyright protection of applied works. In
addition, the protection of layout designs under copyright
will automatically grant foreign integrated circuits
protection in the United States. 193 Internationally, at a
diplomatic conference held in Washington, D.C. in 1989,
ratified the Treaty on Intellectual Property Related to
Integrated Circuits (IPIC Treaty) in accordance with the
provisions of this Treaty, the member states of WIPO and
those of the United Nations or intergovernmental

192
Kieu Thi Thanh (2013), International integration of IPR protection in
Vietnam, Politics - Administration Publisher, p. 188.
193
Le Net, note (88), p. 179.

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organizations are allowed to participate when certain
criteria are met.
According to the provisions of Article 2 of the
Treaty:194
(i) “integrated circuit” means a product, both
finished and semi-finished, in which elements with at least
one active element and some or all interconnections are
incorporated within or on top of a semiconductor wafer and
intended to perform an electronic function.
(ii) “layout design” means the three-dimensional
spatial structure of elements with at least one active element
and some or all of the interconnections incorporated within
an integrated circuit, or a three-dimensional structure of an
integrated circuit for manufacturing.195
The TRIPS Agreement also provides for the
protection of layout designs and references to the IPIC
Treaty.

194
Treaty on Intellectual Property in Respect of Integrated Circuits Adopted
at Washington, on May 26, 1989, https://wipolex.wipo.int/en/text/294976,
access date: 31/03/2019.
195
IP Handbook - Legal Policy and Application (Translated by NOIP in
2005), p. 118.

339
6.1.2. Protection conditions
The protection of layout design of semiconductor
integrated circuit is especially important when today's
technology is rapidly changing and the problem is that
individuals and organizations always want to use those
designs in their commercial activity without obtaining
permission from the actual owner who created the product.
Therefore, registration for protection of layout designs of
integrated circuits will limit the ability of individuals and
organizations to copy or use such designs in commercial
activities for their own profit without paying costs to the
author who created the design.
To be protected, a layout design semiconductor
integrated circuit must satisfy the following two conditions.
* Originality:
Layout design is a combination of elements, the
normal linkages are considered to be original only if the
whole combination is original. Layout design is considered
original if it meets the following conditions:196

196
Article 70 of the Law on Intellectual Property and Article 4 of Decree
42/2003/ND-CP.

340
 a) Is the result of the author's own creative labor; The
author does his own brain work to create the layout design
without copying from any previous designs.
b) Not widely known to layout design creators and
semiconductor integrated circuit manufacturers at the time
of creation of the layout design.
The requirement for the originality of the layout
design is not as high as the requirement for the inventive
level of the invention, but it must also show creativity at a
higher level than the creativity specified in the copyright.197
* Commercial novelty:
An integrated circuit layout design to be protected
must also satisfy commercial novelty. Commercial novelty
is understood to mean that the layout design of a
semiconductor integrated circuit has not been
commercially exploited (commercial exploitation of a
198
layout design is the public distribution of a
semiconductor integrated circuit manufactured under

197
Le Net, note (88), p. 180.
198
Distribution of layout design refers to any form of commercial
circulation, including sale, lease, transfer, including advertising, offering or
storing for such purposes (Clause 5 of Decree 42/2003/ ND-CP).

341
layout design or goods containing a semiconductor
integrated circuit manufactured according to such layout
design) anywhere in the world prior to the date of
application.199
Thus, despite the same requirements for novelty, the
novelty of the layout design of a semiconductor integrated
circuit is different from the novelty of an patent or
industrial design. If the novelty of an patent or industrial
design is absolute novelty from the filing date or priority
date, the novelty in this case is understood to mean only
when the layout design is commercially exploited (product
activity) and business for the purpose of making profit) will
lose its novelty, its exploitation and use by non-commercial
activities shall not be considered as loss of novelty.
An integrated circuit layout design is also not
considered to have lost its commercial novelty if the
individual or organization that invested in the creation of
that semiconductor integrated circuit layout design has
exploited it for commercial purposes and filed an
application within a period of 2 years from the date the

199
Article 71 IP Law.

342
semiconductor integrated circuit layout design is
commercially exploited. Such regulation aims to encourage
domestic individuals and organizations to register for
protection of layout designs of semiconductor integrated
circuits, and at the same time, to encourage foreign
individuals and organizations to bring layout designs into
Vietnam. This is a relatively new field that has not been
developed in the country and has no experience in
production and business.
It can be said that the protection criteria for the
layout design of semiconductor integrated circuits specified
in the Vietnamese law are quite similar to the IPIC Treaty
and some countries around the world.
It should be noted that the following objects are not
protected as layout designs of semiconductor integrated
circuit:200
- The principles, processes, systems and methods are
implemented by semiconductor integrated circuits, because
if the above objects are protected, no subject may use such
principles, processes and methods in research and

200
Article 69 IP Law.

343
manufacture other semiconductor integrated circuit
products.
- Software information contained in semiconductor
integrated circuits, because the information can be
protected as patents, software is protected under copyright
regulations.
6.1.3. Establish industrial property rights to layout
design of semiconductor integrated circuit
6.1.3.1. Subject has the right to register
According to the provisions of IP law, the following
entities have the right to apply for registration of layout
design of semiconductor integrated circuits:201
(i) The author creates the layout design at his own
expense and effort.
(ii) Organizations and individuals invest funds and
material means for authors in the form of job assignment or
hiring, unless otherwise agreed by the parties or the case
specified in Article 86a of the Intellectual Property Law.
For example, if company M hires Mr. T to research and

201
Article 86 of the Law on Intellectual Property and Clauses 1 and 2,
Article 9 of Decree 103/2006/ND-CP.

344
create the layout design of an integrated circuit X, the
subject that has the right to apply is company M because
the company is the subject of financial investment to create
the above object unless otherwise agreed by the parties.
Note that in case many organizations and individuals
jointly create or invest to create a layout design, those
organizations and individuals all have the right to register
and that registration right can only be exercised if all
organizations and individuals agree.
Besides, the IP Law also provides relatively detailed
regulations on the right to register a layout design in case it
is the result of a scientific and technological task funded by
the state budget (Article 86a):
- For layout designs that are the result of scientific
and technological tasks using the entire state budget, the
right to publish layout designs is assigned to the leading
organization automatically and without compensation,
except the case specified in clause 3 of this Article.
- For layout design that is the result of scientific and
technological tasks invested with many capital sources,
including part of the state budget, the right to design the

345
layout corresponds to the proportion of the state budget.
The state is assigned to the presiding organization
automatically and without compensation, except for the
case specified in Clause 3 of this Article.
- Accordingly, clause 3, Article 86a defines the right
to register layout designs as a result of scientific and
technological tasks in the field of national defense and
security.
Identifying the right holder is very important,
because if the protection title is later granted, the applicant
is the owner, moreover, the right to register can be
transferred to the organization, other individuals in the
form of a written contract, to inherit or inherit in accordance
with law, even if a registration application has been filed.
6.1.3.2. How to apply and apply for protection
In order to be protected with a layout design of
semiconductor integrated circuit in Vietnam, the holder of
the right to registration must file a request for protection in
Vietnam. The agency receiving and granting protection
titles is the National Office of Intellectual Property of
Vietnam.

346
 Regarding the subject, if it is a Vietnamese
individual or organization, a foreign individual
permanently residing in Vietnam, a foreign organization or
individual with a production or business establishment in
Vietnam, the applicant may apply directly or through an
industrial property representative in Vietnam. Foreign
individuals who do not permanently reside in Vietnam and
foreign organizations that do not have production and
business establishments in Vietnam shall apply for
registration through their lawful representatives in Vietnam.
About the application for protection registration for
the layout design of semiconductor integrated circuits is a
collection of documents related to the object of protection
including:
- The registration form according to the form issued
by the NOIP.
- Documents, samples, information defining the
layout design of semiconductor integrated circuits.
- Layout design drawings of semiconductor
integrated circuits.

347
 - Photograph of the layout design of semiconductor
integrated circuits.
- Information on functions and structures of
semiconductor integrated circuits manufactured according
to layout design.
- Samples of semiconductor integrated circuits
produced according to layout design if the layout design has
been commercially exploited.
In addition to the above documents, the application
should include:
- Power of attorney if the application is filed through
a representative.
- Documents proving the right to register if the
applicant is entitled to that right from another person.
- Documents proving the right of priority if the
application has a claim for priority.
- Proof of payment of fees and registration fees.
- Documents proving the right to register.
- Documents proving the right of priority include a
copy of the application or the first applications certified by

348
the agency receiving the first application. The paper assigns
priority right if that right is inherited from another person.
- Other documents to support the application.
In principle, only one protection title is required per
application for a layout design of integrated circuit. The
registration application must be made in Vietnamese,
except for a few documents which may be made in other
languages but must be translated into Vietnamese at the
request of the state agency in charge of industrial property.
6.1.3.3. Application processing
The processing of applications for protection of
layout designs of semiconductor integrated circuits is
similar to that of applications for protection of other
industrial property objects. The application processing
steps basically include: receiving the application;
examination of the form of an application (which is to
check the compliance with the regulations on the form of
an application, thereby drawing a conclusion whether the
application is considered valid or not); publication of valid
applications; substantive examination of the application
(evaluating the protection ability of the object stated in the

349
application according to the protection conditions,
determining the corresponding scope of protection); grant
or refuse to grant a title and register and announce the
decision to grant a protection title.
However, it should be noted:
- Requirements for integrated circuit samples
manufactured according to layout design: The submitted
sample must be the whole or part of an integrated circuit
that fully corresponds to the layout design stated in the
application. If an integrated circuit manufactured to a
layout design is an integral part of another product, the
submitted product must include documentation that
accurately indicates the part of the integrated circuit
manufactured to the layout design.
- The description of the semiconductor integrated
circuit manufactured according to the layout design must
include the following details: Name/symbol; Describe the
basic functions of integrated circuits; Describe the basic
structure of integrated circuits; Description of technology
for the manufacture of integrated circuits; Describe the
main characteristics that distinguish it from other

350
semiconductor integrated circuits on the market at the time
of application or first commercial exploitation in the world,
whichever is earlier.
- A layout design registration application is
published in a form that allows direct search at the state
management agency in charge of industrial property rights
but may not be copied; for confidential information in an
application, only competent authorities and related parties
in the process of carrying out procedures for invalidation of
protection titles or carrying out procedures for handling
acts of infringement of rights. only allowed to search.
- An application for registration of a layout design
shall be published within 2 months from the date of
acceptance of a valid application.
- The layout design registration application does not
examine the application's content (Article 114 of the
Intellectual Property Law), this comes from the condition
for protection of the layout design which is originality.
Moreover, it is difficult for NOIP to check the commercial

351
novelty of layout designs, because there are many layout
designs that have been created without registration.202
6.1.3.4. Term of protection
The registration certificate for layout of
semiconductor integrated circuit is valid from the date of
issue and terminates on the earliest of the following dates:
- End 10 years from the date of application.
-End of 10 years from the date the layout design is
first commercially exploited by the right holder or the
person authorized by that person anywhere in the world.
- End of 15 years from the date of creation of the
semiconductor integrated circuit layout design.
Similar to patents, the validity of a layout design
registration certificate is not extended.
6.1.3.5. Termination and invalidation of protection titles
* The protection title will terminate in the following
cases (Article 95 of the IP Law):
- Owners of layout designs do not pay fees or
charges for maintenance or extension of validity as
prescribed by law. Because a basic principle of IP

202
Le Net, note (88), p. 180.

352
protection in general and industrial property protection in
particular is the principle of balance. The owner of the
object discloses to the society and in return the subject is
exclusively exploited and wants to maintain the protection
title, the subject must pay a maintenance fee. This is also
an additional source of income of great significance in
maintaining the operation of the industrial property
management agency.
- The owner of the layout design object declares to
give up industrial property rights. As a property right, the
owner of an industrial property object has the right to
dispose of his property, however, such cancellation does
not infringe upon the interests of the State, the public
interest and the interests of the State. of another subject. In
this case, the state management agency in charge of
industrial property rights (NOIP) shall decide to terminate
the validity of the protection title from the date of receipt
of the declaration of the protection title holder.
- The owner of the layout design no longer exists or
is out of business without an heir. The property rights of the
owner of the layout design are considered property, so they

353
can obviously bequeathed to others to inherit, so when there
is no heir to these rights, the validity of the protection title
will be terminated.
* A protection title is invalidated in the following
cases (Article 96 of the IP Law):
A protection title shall be invalidate in whole or in
part if the whole or part of such protection title fails to
satisfy the provisions of this Law on registration rights,
protection conditions, modification and supplementation of
applications, patent disclosure, first-to-file principle in the
following cases:
a) The applicant for registration does not have the
right to register and is not allowed to transfer the
registration right to the layout design by the person with the
right to registration;
b) The industrial property object fails to satisfy the
protection conditions specified in the Intellectual Property
Law;
c) Amendment or supplementation of an industrial
property registration application expands the scope of
objects disclosed or stated in the application or changes the

354
nature of the object of registration request stated in the
application.
If a protection title is completely or partially
validated of the prescribed effect, the whole or a part of
such validation will not take effect from the time of grant
of the title.
Organizations and individuals have the right to
request the state management agency in charge of industrial
property rights to validate the validity of a protection title
when detecting that the applicant does not have the right to
register or the layout design does not satisfy the following
conditions: protection, subject to payment of fees and
charges. The statute of limitations for exercising the right
to request invalidation of a protection title is throughout the
protection term.

355
6.1.4. The subject and the rights and obligations of the
subject
6.1.4.1. Authors and Authors' Rights to Layout Design of
Semiconductor Integrated Circuits
* The layout design author is the person who directly
created the layout design; In the case of two or more people
directly co-creating, they are co-authors.
* Moral rights of layout design authors include the
following rights:
a) Being named as the author in the Certificate of
registration of layout design of semiconductor integrated
circuits;
b) Being named as the author in published and
introduced documents on layout design.
* In case the author is not concurrently the owner of
the layout design, the author's property right is the right to
receive remuneration as prescribed in Article 135 of the IP
Law.

356
6.1.4.2. Owners and rights and obligations of layout
design of semiconductor integrated circuit owners
* Layout design owner is an organization or
individual that has been granted a protection title by a
competent authority for the respective industrial property
objects (clause 1, Article 121 of the Intellectual Property
Law).
* Rights of layout design owners include:
- The owner has the right to use, allow others to use
the design of the semiconductor integrated circuit layout.
Use is understood to include the following acts: Copying
the layout design i.e. the act of making multiple copies of
the same; Semiconductor integrated circuit production is
the creation of many semiconductor integrated circuits;
Selling, renting, offering for sale, advertising protected
semiconductor integrated circuits; Importing a copy of a
layout design of a semiconductor integrated circuit
manufactured by a layout design or goods containing a
semiconductor integrated circuit manufactured by a layout
design.

357
 - In case the layout design of a semiconductor
integrated circuit is appropriated and illegally used by
others, the owner of the layout design has the right to
prevent other people from using such layout design, unless
others may use the layout design of semiconductor
integrated circuits for non-commercial purposes or for
evaluation, analysis, teaching, testing, or trial production
purposes.
The owner of the layout design also has no right to
prevent others from circulating, importing or exploiting the
products brought to the market by the owner of the layout
design or by the person authorized by the owner. The use
of the layout design of semiconductor integrated circuits in
the case for the purpose of maintaining the operation of
foreign means of transport in transit or temporarily located
in the territory of Vietnam is also not considered a violation
and therefore the owner has no right to prevent it. In case
of using a layout design without knowing or having no
obligation to know that such layout design is protected, the
owner also has no right to prevent it.

358
 - The owner has the right to decide on the layout
design of semiconductor integrated circuits. Semiconductor
integrated circuit is considered an object of intangible
property, so the owner of the industrial property object has
the right to decide whether to transfer it to another person
or give up the ownership right. However, the disposition
must not infringe upon the interests of the state, the public
interest and the interests of other subjects.
- The owner has the right to leave an inheritance to
the heirs in accordance with the law on inheritance.
In case the layout design of a semiconductor
integrated circuit is illegally exploited, the owner has the
right to request protection from a state agency. Depending
on the nature and seriousness of the violation, the subject
may request a competent state agency to handle criminal,
administrative or civil matters.
- The owner of the layout design has temporary
rights. 203 Accordingly, for layout designs that have been
commercially exploited by the person having the right to
registration or permitted by such person before the date of

203
Article 131 IP Law.

359
issue of the Certificate of registration of layout design of
semiconductor integrated circuits, if the person having the
right to register the sign that the layout design is being used
by another person for commercial purposes, that person has
the right to notify in writing of his registration right to that
layout design to the user for him to discontinue use of the
layout design or continue to use it.
In case the notified person continues to use the
layout design after being notified, when the Certificate of
registration of layout design of semiconductor integrated
circuits is issued, the layout design owner has the right to
request requires the person who has used the layout design
to pay a compensation equivalent to the transfer price of the
right to use the layout design within the respective scope
and term of use.
In case the layout design is the result of a scientific
and technological task funded with the state budget, the
State's rights to such layout design are determined as
follows (Article 133a of the Intellectual Property Law):
(i) The representative of the state owner shall make
a public announcement within ninety days to assign the

360
right to register layout design to the organization or
individual in need in the case of being the organization in
charge of scientific tasks. science and technology fail to
fulfill the notification obligation as prescribed in clause 1
Article 136a of the Intellectual Property Law; the
organization in charge of the science and technology task
shall send a written report to the state owner's
representative on the absence of a need for registration; or
the organization in charge of science and technology tasks
fails to submit a layout design registration application
within the time limit specified in clause 2 Article 136a of
the IP Law.
(ii) In case the registration right cannot be assigned
to an organization or individual in need, the state owner's
representative shall publicly announce it on the portal or the
website of the responsible agency. The science and
technology service on layout design content is the result of
science and technology tasks using the state budget.
(iii) Competent state agencies allow other
organizations and individuals to use the layout design
without the consent of the holder of the exclusive right to

361
use in case the holder of the exclusive right to use does not
do so in the a reasonable period of effective measures to use
layout design as a result of scientific and technological
tasks that the State supports over 30% of the total capital;
or the use for public, non-commercial purposes, serving
national defense and security, disease prevention and
treatment, ensuring nutrition for the people or meeting
other urgent needs of society.
However, it should be noted that the right to design
layouts as a result of scientific and technological tasks
using the state budget can only be transferred to
organizations established under Vietnamese law,
individuals who are citizens. Vietnam and permanently
reside in Vietnam. Organizations and individuals that
receive ownership transfer must perform the respective
obligations of the lead organization in accordance with the
provisions of the IP Law.
* Obligations of layout design owners:
- For layout design owners, the most important
obligation is to pay compensation to the author in case the
author is not the owner at the same time. Remuneration

362
shall be based on the agreement of the parties, if there is no
agreement, payment shall be made in accordance with the
provisions of law. Specifically, Article 135 of the
Intellectual Property Law allows the remuneration paid to
the author to be 10% of the pre-tax profit that the owner
earns from using the layout design; or 15% of the total
amount received by the owner in each payment due to the
transfer of the right to use the layout design before paying
tax as prescribed.
In case of co-authored layout design, this
remuneration is for co-authors. The co-authors themselves
agree on the division of the remuneration paid by the owner.
For layout designs that are the result of scientific and
technological tasks using the state budget, the owner shall
pay remuneration to the author:
a) A minimum of 10% and a maximum of 15% of
the pre-tax profit earned by the owner from using the layout
design;
b) At least 15% and maximum 20% of the total
amount received by the owner in each payment due to the

363
transfer of the right to use the layout design before paying
tax as prescribed.
The obligation to pay compensation to the author of
the layout design exists throughout the term of protection
of the layout design.
- In addition, the IP Law also stipulates the
obligations of the lead organization (not the owner) for the
layout design as a result of scientific and technological
tasks funded with the state budget in Article 136a.
6.2. TRADENAMES
6.2.1. Definition
The name of an individual or organization used in
production and business activities to distinguish a business
entity bearing that name from other business entities in the
same business field or area. Business activities of a
business entity are always associated with the name of that
business entity, because in a field or a business area there
are many different business entities operating together, so
the name used in production and business activities is an
important factor to "personalize and distinguish business
entities in commercial activities to help customers, partners

364
and partners identify, promote business efficiency”204. In
other words, “a trade name includes any name used to
identify or designate a business, profession or right to the
name of an individual or entity engaged in such business
activity, profession in a certain business scope such as
business field and business area”205.
The distinction between business entities is only set
when considering within the same business field and area.
A business area under the IP Law is defined as a
geographical area where a business entity has clients,
customers or a reputation.206 Business field is understood
as "the overall content of business fields in which an
enterprise invests and operates in accordance with the law
and is reflected in the business registration certificate,
investment license, and certificate of registration, receipt of
business conditions, tax identification number registration,
company charter registered with the competent authority or

204
Le Dinh Nghi and Vu Thi Hai Yen, note (88), p. 105.
205
Xuan Thao Nguyen and Jeffrey A.Maine (2007), “Taxing Trademarks
and Domain Names”, Intellectual Property Anh Information Wealth,
Volume Three, Praeger Publisher, p. 412.
206
Clause 21 Article 4 IP Law.

365
other valid documents” 207 , usually identified as specific
business fields of the business entity.
6.2.2. Protection conditions
A tradename is protected if it is capable of
distinguishing the business entity bearing that tradename
from other business entities in the same business field and
area. It is considered distinctive if the trade name satisfies
the following three conditions:
* Contains a proper name element, except where it
is already known to use
A proper name is an element capable of
"personalizing this business entity with another" 208 , the
purpose of using this name is to name it in the activities of
the business entity.209 In a trad name, there are usually two
components, a descriptive component and a proper name
component, for example, in the full name "Ha Anh Joint
Stock Company", the phrase "Ha Anh" is the proper name,
and "Joint Stock Company” is a description of the type of

207
Hanoi Law University, note (94), p. 142.
208
Pham Thi Thuy Lieu (2016), “Conditions for establishing trade names
of enterprises in Vietnam”, Journal of Democracy and Law, No. 294, p. 29-
32.
209
Le Net, note (88), p. 122.

366
business; or the name "Dat Xanh Real Estate Services and
Construction Joint Stock Company", "joint stock company"
is a description of the type of business, "real estate services
and construction" is a description of the field of business,
and “Green Land” is a proper name. Based on this provision,
it can be seen that a business entity whose tradename is only
a description without a distinguishing part cannot create
distinctiveness for that tradename. Thus, the names of two
business entities may have the same description, but the
distinguishing part must be different, because different
proper names can constitute a distinguishing feature for that
entity.
Currently, the legal documents on IP do not stipulate
how to name proper names and how to determine proper
names in tradenames. Therefore, the consideration of the
proper name of the business entity usually applies the
provisions in specialized legal documents depending on the
type of business entity. In case the business entity is an
enterprise and an individual business household, the

367
provisions of law on enterprises shall apply,210 and if it is a
cooperative, the current Law on Cooperatives shall
apply.211
The exception is that although the proper name in a
tradename only includes common, descriptive names that
anyone can use, but over time, that name is associated with
the subject. long-term, without any disputes from other
subjects, and forming in the minds of consumers, partners
the ability to recognize business entities with that name, not
to be confused with other subjects in the same business
sectors and areas. Thus, the tradename has now reached
distinction for the subject bearing the name through the
process of use, so it can be protected.
For example, Hanoi beer company, Saigon beer
company, Hanoi confectionery company..., in the
composition of the names of these companies are very

210
See clause 1 Article 38 of the Enterprise Law 2014 and clause 1 Article
18, Article 66 of Decree 78/2015/ND-CP dated September 14, 2015 of the
Government on business registration.
211
See clause 1 Article 22 of the Law on Cooperatives 2012 and clause 1
Article 7 of Decree 193/2013/ND-CP dated November 21, 2013 of the
Government detailing a number of articles of the Law on Cooperatives, as
amended and supplemented by Decree 107/2017/ND-CP dated September
15, 2017.

368
general and everyday descriptive phrases, such as alcohol
or confectionery, along with Hanoi and Saigon are also
famous place names in Vietnam, so this set of words can be
used by anyone and should not be protected exclusively for
any business entity. But since their establishment, these
companies have attached their names to all business
activities, even exporting to foreign countries, and there is
no dispute with other companies about the name. Over time,
consumers in Vietnam have completely memorized and
recognized the names of these businesses, thus creating a
distinction for the business itself by its tradename.
* Not identical or confusingly similar to a trade
name that other people have used before in the same field
and business area
This regulation demonstrates more clearly the
function of distinguishing business entities, because a
tradename that is distinguishable cannot cause confusion
with any other business entity's name in the same field and
business area. In the Enterprise Law 2014 there is also a
similar provision that "prohibit naming the same or

369
confusingly with the name of a pre-registered enterprise"212.
A business entity that imitates and uses another's pre-
existing trade name for the purpose of benefiting from such
conduct will be deemed to infringe on another's tradename.
In order to satisfy this condition, the law requires
three contents: first, the tradename must not be identical or
similar to lead to confusion with other trade names, this
needs to compare the proper name composition between the
different tradenames to identify; second, determine when to
use the trade name to identify which entity uses the trade
name under consideration first; and third, determine
whether the business fields and areas are the same.
For example, the following case: Vietnam Food
Industry Joint Stock Company (plaintiff) has its head office
in Tan Phu District, Ho Chi Minh City, established in 2004,
business fields are: domestic production, business and
export of products processed from rice, flour and other
agricultural products; direct import and export business of
machinery, equipment, raw materials for production; real
estate business, civil and industrial construction. In Hanoi,

212
Clause 1 Article 39.

370
the plaintiff's products are distributed through the agent
Hoang Nam Food Technology Co., Ltd., 30 Pho Duc Chinh,
Truc Bach, Ba Dinh, Hanoi.
The defendant is Vietnam Food Industry Joint Stock
Company, headquartered in Hoang Mai District, Ha Noi,
established in 2007, the business fields are: Processing milk
and milled dairy products, producing flour, producing
starch and starch products, producing cakes from flour,
manufacture of sugar, cocoa, chocolate and confectionery,
manufacture of pasta and similar products, processing and
canning of fruit and vegetables, other processing and
preservation of fruit and vegetables, production of beer and
malt beer…
The plaintiff sued the defendant to the Court because
he believed that the defendant's tradename was
indistinguishable from the plaintiff's tradename, so this was
an infringement of the rights to the tradename. When
settling, the People's Court of Hanoi concluded: "The
defendant's use of a trade name that is exactly the same as
the plaintiff's name will cause confusion for consumers
when using products consumed on the market... is not

371
guaranteed the protection condition in Article 76; 77; 78
Intellectual Property Law… The protection of trade names
is also provided for in Article 6; Article 13 Decree
105/2006/ND-CP.” The court considers the plaintiff based
in Ho Chi Minh City (Southern) but has a distribution agent
inHanoi (Northern region), and vice versa, the defendant is
based in Ho Chi Minh City, but "the defendant's products
are mainly consumed in the southern market, especially in
Ho Chi Minh City where the plaintiff is headquartered"213.
Therefore, the two parties have the same business area. The
two parties have many similar business fields according to
the Business Registration Certificate, so they also have the
same business field.
Hence, the Court determined that the defendant's
tradename was indistinguishable from the pre-established
plaintiff's tradename, so this act was also considered an
infringement of the plaintiff's rights.

213
Judgment No. 65/2009/KDTM-ST dated April 13, 2009 of the People's
Court of Hanoi.

372
 * Not identical or confusingly similar to another
person's trademark or geographical indication that was
protected before the date the tradename was used
The IP law exists the principle that "industrial
property rights may be invalidated or banned from use if
conflicts with the IP rights of other organizations or
individuals are established first"214. Therefore, a tradename
is considered to be distinguishable when it does not cause
confusion for two other industrial property objects, which
are trademarks and geographical indications that have been
previously protected.
To satisfy this condition, it is necessary to determine
the following three issues: first, comparing tradenames and
trademarks, whether geographical indications are identical
or similar; second, identify goods and services bearing
tradenames and trademarks and geographical indications;
and third, determine the time of protection of tradenames
and trademarks, geographical indications to know which
objects are established first.

214
Clause 1 Article 17 of Decree 103/2006/ND-CP amended and
supplemented by Decree 122/2010/ND-CP.

373
 An illustrative example of this condition is the
dispute over the tradename and trademark “Intel”. Intel
Corporation (USA) is the owner of about 70 trademarks
containing the word “INTEL” in Vietnam, which are
mainly exclusive to products and services related to
computer hardware and software, communications. In 2013,
Intel Corporation discovered that Intellsoft Communication
and Technology Solutions Joint Stock Company (Intellsoft
Company) used a sign containing the word "INTEL" under
its proprietary trademark in the business name and on the
signboard. Intel Corporation has requested the Inspector of
the Ministry of Science and Technology to handle the
above trademark infringement. The inspection showed that:
Intellsoft Company has been approved by the Department
of Planning and Investment of Hanoi issues business
registration certificates with many fields, including:
production, trading, installation, leasing, consulting,
designing computer software and computer services...
Company Intellsoft is using the word mark “INTELLSOFT”
as the proper name element in the business name and sign.
Inspector of the Ministry of Science and Technology said

374
that: The sign "INTELLSOFT" on the business name and
signboard of Intellsoft Company is similar to the trademark
"INTEL" which is being protected in Vietnam for Intel
Corporation, with only two differences, letter L in the word
intel after the letter “E” and add the word “SOFT”
(meaning software that describes the same area of operation
of the two companies) at the end. Combined with other
reasons, the conclusion of the Inspector of the Ministry of
Science and Technology is: Intellsoft Company uses the
sign "INTELLSOFT" as a tradename, for products/services
produced, traded, installed ordering, leasing, design
consulting, computer software and services are similar,
potentially confusing to consumers, to Intel Corporation's
previously protected trademarks.215
The reason why the IP Law sets out the requirement
to distinguish between tradenames and trademarks and
geographical indications that are not other objects of
industrial property rights comes from the similar nature of
these three objects which are signs that can be attached to

215
Ngo Phuong Tra (2016), "Business name and the possibility of
infringing rights to business names from the perspective of industrial
property law", Journal of Legal Science, No. 04, p. 13.

375
goods and services on the market, and through these signs,
consumers can identify the business entity producing and
supplying as well as the origin of goods and services. The
interdependence between tradenames and trademarks is
also reflected in the criteria of distinctiveness, 216 even
though the objects of distinction are different.
From a theoretical perspective, this condition comes
from the principle that an innovative result can be protected
under different forms of IPR, or is known as the
217
phenomenon of overlapping rights. “Overlapping”
occurs when the same creative result is registered by the
owner for protection under different objects of IP rights.218
There are many cases where enterprises use the proper
name part of the business name as a trademark or a strong

216
Le Tung (2007), "Trade names and trademarks: From definition to
possible legal situations", Journal of Legislative Research, No. 24, p. 43 -
44.
217
The phenomenon of "overlapping rights" in IP is when the right holder
claims more than one form of protection for an object or requests
continuous protection from the protection authority (for example, after the
expiration of the term of protection). patent protection, continue to claim
protection in the form of trademarks or copyrights…). According to Viva
R.Moffat (2004), “Mutant Copyrights and Backdoor Patents: The Problem
of Overlapping Intellectual Property Protection”, Berkeley Technology Law
Journal, vol. 19, no. 04/09, p. 1499.
218
Le Thi Nam Giang (2013), “Conflict of rights in the protection of
trademarks and trade names”, Journal of Legal Science, No. 03, p. 55.

376
ingredient in the trademark, for example, Tuong An
vegetable oil joint stock company owns the trademark
"Tuong An". Or there are businesses that use geographical
indications as components of their own names in their
tradenames, such as some companies producing fish sauce
named Phu Quoc or Phan Thiet. From the phenomenon of
"overlapping" leads to the issue of "conflict of rights"
between owners whose tradenames, trademarks,
geographical indications are identical or similar.
Therefore, the IP Law stipulates that there should be
no confusion between tradenames and trademarks,
geographical indications to ensure the distinctiveness of
219
tradenames, as well as to limit the problem of
infringement of tradenames and trademarks, geographical
indications.
* In addition, it should be noted that objects that are
not protected are trade names when considering conditions
for protection of trade names, including:220 Names of state
agencies, political organizations, socio-political

219
This requirement is also a condition of protection of the mark at point k,
clause 2, Article 74 of the Intellectual Property Law.
220
Article 77 IP Law.

377
organizations, socio-political-professional organizations,
social organizations, socio-professional organizations or
other subjects not related to business activities are not
protected in the name of trade names.
The above objects are not protected because they are
not related to business activities, not for profit purposes.
6.2.3. Establish industrial property rights to
tradenames
Unlike most objects of industrial property rights,
business owners establish rights to tradenames based on
legal use, not on protection titles,221 "not including use for
other purposes." non-profit society and in the family”222.
Therefore, it is very important to determine the exact time
to start using a tradename, because this time determines
which business subject is protected first, demonstrating the
principle of "anti-conflict of rights". The rights to the trade
name of the later established person may be rescinded or
not recognized if it conflicts with the rights to the trade

221
Point b clause 3 Article 6 IP Law.
222
Lionel Bently và Brad Sherman, note (31), p. 922.

378
name of the first established person.223 This point is also
important when determining trade name infringement, 224
because between two disputing parties, the latter may
infringe upon the former.
There is a view that "determining which business
entity uses a tradename first is always based on the time of
business registration"225, that is, the time when the business
entity is legally established is also the time when the
business name is registered for commercial use. However,
according to the provisions of the Intellectual Property Law,
the time to use a tradename is the time when the business
entity performs the act of using the tradename to name in
business activities, showing the trade name in the
documents. brochures, signs, products, goods, goods

223
According to clause 1 Article 17 of Decree 103/2006/ND-CP dated
September 22, 2006, detailing and guiding the implementation of a number
of articles of the IP Law on industrial property, as amended and
supplemented according to regulations. of Decree 122/2010/ND-CP dated
December 31, 2010 (abbreviated as Decree 103/2006/ND-CP).
224
According to point b, subsection 2.1, section III of the Joint Circular No.
02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP dated
April 3, 2008 guiding the application of a number of provisions of the law
in the settlement of disputes over intellectual property rights at People's
Courts.
225
Ho Chi Minh City University of Law, note (103), p. 483.

379
packaging and means of providing services, advertising, for
commercial purposes. 226 Therefore, these two times in
practice may be the same but may also be different, so the
determination of the time of establishing the right to a trade
name must still be based on the actual time of use by the
business entity.
Thus, for tradenames, the subject's industrial
property rights are protected automatically without having
to go through a legal procedure.
The rights to a tradename are protected indefinitely,
until the owner no longer uses the tradename in business
activities, or the tradename can no longer be distinguished
from another tradenames of other entities in the same field
and business area, the tradename is no longer protected
under IP law.
6.2.4. Tradename owner and rights of tradename owner
6.2.4.1. Tradename owner
Tradename owner is an organization or individual
that lawfully uses such tradename in business activities.
Trad name owners are business entities (which are

226
Clause 6 Article 124 IP Law.

380
organizations and individuals that carry out business
activities of a professional nature, operate under a certain
legal form and have carried out legal procedures for market
entry, has been granted an enterprise registration certificate
or an equivalent document as prescribed by specialized
laws).227
Based on the actual perception of tradenames in
Vietnam, at present, business entities have rights to
tradenames including enterprises, business households and
cooperatives. Among business entities in Vietnam,
enterprises are the most popular and interested subjects,
besides are cooperatives and business households.
6.2.4.2. Rights of Tradename owner
Tradename owners have the right to use their
tradenames in transactions. In the process of production
and business, enterprises must have transactions with state
management agencies, partners and consumers of goods
and services. In the above transactions, the enterprise has
the right to use the tradename to declare its name. Or use

227
City Law University. Ho Chi Minh City (2018), Law Textbook on
Business Subjects, Bui Xuan Hai (editor), Hong Duc Publisher – Vietnam
Lawyer Association, p. 17.

381
tradenames on transaction documents such as signing
contracts, offers, purchase orders, advertising... signs,
business vehicles.
Tradenames owners have the right to prevent others
from using his tradename. In production and business
activities, one or more entities may accidentally or
intentionally use the tradename of the subject that has been
legally registered. The above use leads to confusion among
consumers, affecting the reputation of businesses. In that
case, the enterprise has the right to object and request the
competent state agency to prevent the continued use of the
tradename of the above subjects.
The owner of a tradename has the right to assign the
tradename to another entity, however, upon such
assignment, the entire business establishment and business
activities under that tradename must be transferred.
Because the function of a tradename is to distinguish the
business entity, not like a trademark, which distinguishes
goods of the same type. However, the owner of a tradename
is not allowed to transfer the right to use the tradename to
any other entity.

382
 The owner of a tradename has the right to inherit the
tradename in accordance with the law on inheritance. The
inheritor must carry out procedures for declaring to the
management agency about business registration in
accordance with the provisions of law.
In case a tradename is illegally exploited and used,
the owner has the right to request the protection of a state
agency when there is an act of infringement.
6.3. GEOGRAPHIC INDICATIONS
6.3.1. Definition
Clause 22, Article 4 of the Intellectual Property Law
defines that: “Geographical indication is a sign used to
indicate the geographical origin of a product from a
particular region, locality, territory or country”. This
definition is transformed from the definition of a
geographical indication specified in Clause 1, Article 22 of
the TRIPS Agreement, which can be summarized as a
combination of quality, popularity, and specific
characteristics of a product associated with with a given
geographical area. It is the association between a product
and a defined geographical location.

383
 Geographical indications are “signs”, although the
IP Law does not clearly prescribe it, but in subsection 45.2
of Circular 01/2007/TT-BKHCN, geographical indications
are considered unsuitable if they are not visible signs.
Therefore, like a trademark (also a visible sign), a
geographical indication can be a word (a name pointing to
a certain geographical area); images or symbols describe a
geographical area, but "these images and symbols must be
really famous and widely known to ensure the function of
indicating the origin of products".228
According to Vietnamese law, geographical
indications are indications of the geographical origin of
goods from the region, locality, territory or country
corresponding to the geographical indication. Products
bearing a geographical indication must originate from the
indicated territory, locality or region. These instructions
must be displayed on the goods, their packaging or related
transaction documents to indicate the origin of the goods.
Products bearing a geographical indication have a quality,

228
Le Dinh Nghi and Vu Thi Hai Yen, note (31), p. 110.

384
reputation or characteristics that are primarily determined
by geographical origin.
Europe takes the lead in building separate product
chains with geographical indications protection, with
products packaged for consumers, labeled with the name of
the locality of production, with the initial purpose of
controlling agricultural products. 229 Many countries have
developed national logos for geographical indications for
products using geographical indications. In order for a
product to use a geographical indication on the label, the
manufacturer must comply with certain conditions to
ensure that the product is manufactured in accordance with
the protection requirements, especially the characteristics
and local origin. A protected geographical indication name
becomes the common property of a community, region, or
even a country, and is a cultural heritage if the product is
associated with cultural traditions. Therefore, all
manufacturers, subject to the production and distribution
conditions of the geographical indications requirements,

229
Lionel Bently và Brad Sherman, note (77), p. 975.

385
have the right to request the use of the geographical
indications name on their products.
One thing that anyone can not deny is that products
protected by geographical indications are often known as
famous brands and the economic value that it brings is
always higher than those of other common products of the
same type. For example, Bresse chickens - protected by
geographical indications - of France are sold for 5 times
more expensive than normal chickens, but the number of
customers looking to buy and sell is constantly increasing.
Therefore, the protection of geographical indications also
means that the profits will be more than before.
Compared with trademarks, geographical
indications have an important similarity that these two
objects are meant to provide information to consumers so
that they can conveniently choose products among a
multitude of similar products type, similar on the market.
However, there are two important differences between
these two subjects: first, trademark protection applies to
both goods and services, and geographical indication

386
protection applies only to goods230; Second, trademarks are
associated with the nature of "private property", so the
owner has the exclusive right to use them, while
geographical indications with describing a common
territory or geographical area cannot be recognized by the
law the right to use geographical indications for any
organization or individual, that is, anyone in the same
geographical area, if satisfying the conditions for product
production, can use the geographical indication.231
Besides, geographical indications when compared
with collective trademarks and certification trademarks
also have many similarities: a geographical indication,
certification trademark or collective trademark can be used
by different manufacturers, and each has the ability to state
the particular geographical origin of the product. Moreover,
in daily life, all three types of signs are very commonly

230
This is in line with the spirit of the TRIPS Agreement when, during the
negotiation and drafting of this Agreement, the recommendation to protect
geographical indications should also be applied to the rejected services, so
throughout the content geographical indications in the Agreement all use
the term "good(s)" without mentioning "service". (According to Kieu Thi
Thanh, note (355), p. 231).
231
Kieu Thi Thanh, note (355), pp. 232.

387
used on goods, so it is easy to confuse these three objects.
However, these three subjects are still completely different.
Collective trademark is a trademark used to
distinguish goods and services of members of an
organization that is the owner of the trademark from those
of organizations or individuals that are not members of that
organization. Collective trademarks do not always indicate
the place of origin of the product, nor do they always
guarantee that the product has the same quality
characteristics as a geographical indication.
Certification trademark is a trademark that the
owner of the trademark allows another organization or
individual to use on the goods and services of that
organization or individual to certify the characteristics of
origin, raw materials and materials, how the goods are
manufactured, how the services are provided, the quality,
accuracy, safety or other characteristics of the goods or
services bearing the mark. Although certification
trademarks guarantee the quality of products, not all
certification trademarks indicate the origin of that product.
For example, the certification trademark "V high-quality

388
Vietnamese goods voted by consumers" was granted a
protection title by the NOIP on May 12, 2009. Meanwhile,
a geographical indication always indicates the origin,
quality characteristics as well as the reputation of the
product bearing the geographical indication.
In addition, it should be noted that in the
international legal framework, there are three terms related
to the indication of origin of goods that are recognized as
"indication of origin", "appellation of origin" and
"geographical indication".
“Indications of origin” were first mentioned in the
Paris Convention, then specified in the Madrid Agreement
against false or misleading indications of origin 1891.232 A
pure indication of origin refers only to the geographical
origin, information about where the product is produced,
does not require the product to have a certain quality or
reputation, nor does it need to be related to the quality of

232
Article 1 of the Madrid Agreement provides: “Any product bearing a
false or misleading indication by which one of the member states of the
Madrid Agreement or a place in that country is directly indicated or
indirectly the country or place of origin, imports into any member country
of the Madrid Agreement shall be confiscated.

389
the product and the place of production of such goods, such
as: Made in Germany, Swiss made, Product of France...233
“Appellation of Origin” is also mentioned for the
first time in the Paris Convention, but the definition of
appellation of origin was first defined in the Lisbon
Agreement for the Protection of Appellations of Origin and
the international registration of appellations of origin
1958.234 An appellation of origin has three characteristics:
(1) Must be the “geographical name” of a particular country,
region or territory; Names that are not officially recognized
geographical names are not protected as appellations of
origin, even though they are also used to refer to a certain
place. (2) To indicate the geographical origin of the goods;
Goods bearing an appellation of origin must originate from,
and be produced in, the geographical area to which it
indicates. (3) There must be a relationship between the
quality and the specific properties of the goods and the

233
Le Dinh Nghi and Vu Thi Hai Yen, ref (31), p. 107.
234
Article 2(1) of the Lisbon Agreement states: “A appellation of origin is a
geographical name of a country, region or territory, intended to indicate to a
product originating in that area, of the qualities or specific and separate
characteristics stemming from the geographical environment, including
natural and human factors”.

390
special factors of the geographical environment, including
natural and human factors.235
Previously, Vietnamese law also used the definition
of "appellation of origin" instead of the current
"geographical indication". According to Article 786 of the
Civil Code of 1995, “Appendice of origin of goods is the
geographical name of a country or locality used to indicate
the origin of goods from that country or locality, provided
that these goods have the same characteristics and qualities
characteristics based on unique and preeminent
geographical conditions, including natural, human, or a
combination of both”. And according to Article 7, Decree
63/CP of the Government dated October 24, 1996 detailing
industrial property: “A protected appellation of origin must
be the geographical name of a country or a Locality is the
place where the respective goods are produced and such
goods must have specific characteristics and quality
determined by geographical factors (natural and human) of
that country or locality".

235
Le Dinh Nghi and Vu Thi Hai Yen, ref (31), p. 108.

391
 When comparing these three terms, it can be seen
that the indication of origin is the term with the broadest
meaning, that is, in principle the least and simplest
claims.236 Meanwhile, protection by appellation of origin is
the strictest, because it not only requires the entire
production process of the product to be in a defined
geographical area, but also requires the quality and
characteristics of the product created by both natural and
human factors of the geographical area. Particularly for
geographical indications, this is the most commonly used
term today, this definition extends the concept of
"appellation of origin" of the Lisbon Agreement, in which
the relationship between product quality with a
geographical area is not necessarily outstanding, the most
important thing is that the product must have a reputation
and quality associated with that geographical area and be
trusted by consumers. A geographical indication is
considered the most appropriate term because a
geographical indication actually ensures the function of
indicating the origin of products and providing information

236
Lionel Bently và Brad Sherman, note (77), p. 977.

392
about the quality of products originating from that
geographical area.
In addition, it is possible that different geographical
regions (within the same country or in different countries)
have the same name and are indications for the same
product, but they It is still possible to distinguish the origin
of a product through special conditions from the region
where the product was created and the geographical
location of those territories. For example, “Rioja” is the
name of a locality in Spain and Argentina and is both used
as a geographical indication for a wine product 237 . This
situation leads to the recognition and protection of
"homonymous geographical indication" in IP legal
documents at international and national level. Paragraph
22a, Article 4 of the Intellectual Property Law stipulates
that “Homonymous geographical indications are
geographical indications that have the same pronunciation
or spelling.” The addition of the provisions of the Law on
Intellectual Property of Vietnam is very necessary because

237
Pablo A. Palazzi (2013), “Argentine courts validates GI ‘La Rioja
Argentina’ against challenge from Spain,” Journal of Intellectual Property
Law & Practice, Volume 8, Issue 10, p. 759-760.

393
it is an important legal basis to confirm the existence and
determine the protection conditions for this object.
6.3.2. Protection conditions
A geographical indication is protected if the
following conditions are met:238
* Products bearing a geographical indication
originate from the region, locality, territory or country
corresponding to the geographical indication.
This is a very important condition when considering
the possibility of geographical indication protection as well
as the conditions for users of geographical indications. The
most important factor is that the product bearing the
geographical indication must be related to a special
geographical area that if the product is produced in another
geographical area, the quality and reputation will not be
guaranteed.
Originating from a geographical area is understood
that the product must be produced, processed or processed
from that geographical area. Each product has different
characteristics; The steps involved in the manufacturing

238
Clause 1 Article 79 IP Law.

394
process also have a different effect on the products.
Therefore, a product is considered to be of geographical
origin from the region, locality, territory or country
corresponding to the geographical indication when all or
some key stages in the production process have a decisive
influence on the geographical indication. The
determination and importance of creating and maintaining
the nature, quality, and reputation of a product are made in
the geographical area to which it indicates.
The current controversial issue related to this
condition, whether the production process of the product
bearing the geographical indication must include the entire
process from processing, manufacturing and packaging the
product in the region/region to where it leads or not?
In this regard, the European Union (EU) is very strict.
As is the case of the beer "Newcastle Brown Ale", which is
determined to be produced and bottled only in the city of
Newcastle (UK) on the banks of the River Tyne. But in
2004, after being certified for Protected Geographical
Indication (PGI), the beer company decided to move to the
town of Gatehead across the Tyne river. Although only one

395
river apart, Newcastle and Gatehead are two different
places, so the Brewing Company later applied to the EU to
remove the restrictions on location. Finally, in 2007, the EU
did not agree and revoked the PGI certification for
Newcastle Brown Ale beer.239
Around this issue, there is an opinion that if it is
stipulated that the entire process of processing,
manufacturing and packaging products must be in the
region, region, locality... respectively, to be protected by
geographical indications, it will be too much. Because in
the process of processing and manufacturing the product
has been carried out, in accordance with the prescribed
process for that product such as raw materials, processing
techniques, climate, temperature... package in another
geographical area without affecting the quality and
properties of the product, this product should still be
accepted, not considered infringing.240

239
Le Linh (2008), “Law on protection of local specialties”, Ho Chi Minh
City Law newspaper, released on June 27, 2008.
240
Doan Duc Luong (editor) (2012), Textbook of Intellectual Property Law,
National politics Publisher, p. 186-187.

396
 According to the guidance of Circular 01/2007/TT-
BKHCN dated February 14, 2007 by the Minister of
Science and Technology guiding the implementation of
Decree 103/2006/ND-CP,241 at point a, section 43.4, it was
stated: Geographical conditions constituting the unique
quality/quality, the reputation of the product bearing the
geographical indication, including the unique factors of the
skills and techniques of the producer, including the
production process. local traditions (which may include one,

241
Circular 01/2007/TT-BKHCN is amended and supplemented by:
1. Circular No. 13/2010/TT-BKHCN dated July 30, 2010 of the Minister of
Science and Technology amending and supplementing a number of
provisions of Circular No. 17/2009/TT-BKHCN dated 18// 06/2009 and
Circular No. 01/2007/TT-BKHCN dated February 14, 2007, effective from
September 13, 2010;
2. Circular No. 18/2011/TT-BKHCN dated July 22, 2011 of the Minister of
Science and Technology amending and supplementing a number of
provisions of Circular No. 01/2007/TT-BKHCN dated 14// 02/2007, as
amended and supplemented according to Circular No. 13/2010/TT-BKHCN
dated July 31, 2010 and Circular No. 01/2008/TT-BKHCN dated February
25, 2008, amended and supplemented supplemented by Circular No.
04/2009/TT-BKHCN dated March 27, 2009, effective from September 5,
2011;
3. Circular No. 05/2013/TT-BKHCN dated February 20, 2013 of the
Minister of Science and Technology amending and supplementing a
number of articles of Circular No. 01/2007/TT-BKHCN dated 14/02/ 2007
guiding the implementation of Decree No. 103/2006/ND-CP detailing a
number of articles of the IP Law on industrial property, as amended and
supplemented according to Circular No. 13/2010/TT-BKHCN dated 30
/07/2010 and Circular No. 18/2011/TT-BKHCN dated 22/07/2011,
effective from 06/04/2013.

397
several or all stages, from raw material production, raw
material processing to product creation and may include
product packaging, if the that paragraph affects the
nature/quality, reputation of the product)”. Thus, according
to the law, it is not required that every stage of the
production process must be carried out in a geographical
area, but depending on the influence of that stage on the
quality and reputation of the product bearing the
geographical indication.
In fact, Vietnam has a proven case that it is Phu
Quoc fish sauce. Previously, when Phu Quoc fish sauce was
not protected by geographical indications, fish sauce was
consumed in Ho Chi Minh City. Ho Chi Minh City is
mainly transported in crates from Phu Quoc to Ho Chi
Minh City, then extracted and bottled in Ho Chi Minh City
and then put it on the market. And it is clear that when
consumers know this, they may doubt the quality of the
product extracted and bottled in Ho Chi Minh City. HCM.
After Phu Quoc fish sauce was protected as a geographical
indication, the Ministry of Fisheries at that time stipulated
that the production process of fish sauce from brewing,

398
pulling, mixing, and packing must all be conducted in Phu
island district. Country. Thus, at present, if any
organization or individual in Ho Chi Minh City still
maintains the same method as before and those products are
still marked as "Phu Quoc fish sauce" and are considered
infringing protected geographical indications.
Therefore, in order to know how the stages in the
production process of products bearing geographical
indications should be carried out, it should be based on the
regulations on management and use of geographical
indications issued by organizations and individuals
approved by the Government. Because the content of this
regulation is formed from the knowledge and experience of
producing products bearing the geographical indication in
that area, it is appropriate to assess the production stages
affecting the quality of products.
Note that the geographical area carrying the
geographical indications\ has its boundaries precisely
defined by words and maps. The map of the geographical
area corresponding to the geographical indication must
present sufficient information to the extent that it is possible

399
to accurately identify the geographical area that meets all
natural conditions constituting a particular quality/quality
and reputation of the product. The map may be submitted
with a description of the geographical area corresponding
to the geographical indication.
* Products bearing a geographical indication whose
reputation, quality or characteristics are mainly
determined by the geographical conditions of the region,
locality, territory or country corresponding to that
geographical indication.
To satisfy this condition, the subject of geographical
indication protection must:
(i) List specific properties/quality of products
bearing geographical indications determined by
geographical conditions - determined by physical, chemical
and quantitative sensory, qualitative and quantitative
criteria , biological, capable of being tested by technical
means or by experts according to a defined test method.
(ii) Prove that the reputation of a product bearing a
geographical indication is determined by the level of trust
consumers have for that product through how widely

400
consumers know and choose that product in the relevant
consumer world, is verifiable.
For example, consumers know that Thailand's
Petchapun sweet tamarind product is protected by a
geographical indication with the characteristic properties of
straight or curved shape, brown skin, smooth and clear, wet
tamarind pulp and sticky, slightly soft and without veins,
sweet and aromatic.242
(iii) Proving that the reputation and quality of the
products bearing the geographical indications are
determined by the geographical conditions of that area. In
which geographical conditions related to geographical
indications are natural factors and human factors that
determine the reputation, quality and characteristics of
products bearing such geographical indications.
Natural factors include unique elements of
meteorology, hydrology, geology, topography, ecology and
other natural conditions.
The human factor includes the unique factor of the
producer's skills and techniques, including the local

242
Đoàn Đức Lương, note (404), tr. 184.

401
traditional production process (which may include one,
several or all stages, from raw material production, raw
material processing to product creation and may include
product packaging, if that stage affects the nature/quality,
reputation of the product), if the that process is the factor
that creates and maintains the unique character/quality and
reputation of the product bearing the geographical
indication, in which the information is clear and detailed
enough to be inspected (if in If the above information
contains confidential information, technical know-how that
has not been disclosed or is not widely known outside the
locality, the applicant has the right to refuse to provide
detailed information about the secret. such secret, know-
how if not committed to keep such information confidential
at his request).
Example of geographical indication number 00020
for the product "Hue conical hat" according to Decision No.
1347/QD-SHTT signed by the Director of NOIP on
19/07/2010. The People's Committee of Thua Thien Hue
province is the agency managing the geographical
indication "Hue" for conical hat products. Conical hats are

402
found in three regions, but Hue conical hats have such a
reputation because of their unique characteristics that make
them different from conical hats of other localities,
satisfying the conditions for protection of geographical
indications:
In terms of morphology: Hue conical hats are white
and green, there are very light green lines along the length
of the leaves, so basically the color of Hue conical hats is
still white but the characteristic greenish white color, unlike
the yellowish white color like cones in some other localities.
Hue conical hat is thin, light, soft, beautiful, strong, durable
and well-balanced.
Natural factors: The raw material for the production
of conical hats in Hue is a conifer tree with scientific name
is Licuala Fatoua Becc, grown in A Luoi and Nam Dong
districts, this is an area with high rainfall and high humidity,
so it is suitable compatible with the growth of conifers. The
raw material used for conifer leaves is neither too young
nor too old - the leaves are usually still with buds that are
just one month old and have grown to their full length and

403
width, have not turned dark green, the sheaths are close to
each other, unfolded, soft with a length of about 40-50cm.
Human factor: To make a conical hat is both an art
and a meticulous work of artisans in each stage of the
production process. In the technical stage, Hue conical hat
makers have experience in choosing dry leaves that still
retain their light green color, 16 thin rims are often rounded,
meticulous and elaborate. The leaves are ironed several
times, being careful to make them very flat and smooth.
The hat-frame maker keeps the technique of shaping the
roof, the distance between the rims and the roundness of the
brim... as a hereditary heirloom, following a folk aesthetic
that is in fact an appropriate proportion. The combination
has been tested for many generations and tested in many
regions… Thanks to the experience and skillful hands of
artisans, Hue conical hats not only bear the mark
symbolizing the beauty of Hue but also become everyone's
favorite souvenir.
The geographical area of Hue conical hat includes:
a) Conical material area: A Luoi district and Nam Dong
district; b) Area of raw materials for making conical hats:

404
Binh Dien commune, Huong Tra district; c) Preliminary
processing of conical leaves: Phuoc Vinh ward and Doc So
village, An Hoa ward, Hue city; d) Production area for
frame (mold) frame: Phuoc Vinh ward of Hue city and Phu
My commune of Phu Vang district; e) Conical hat making
villages: Doc Son village, An Hoa ward, Hue city; My Lam
village and An Luu village, Phu My ward…243
For the special case of homonymous geographical
indications, in order to be protected, in addition to
satisfying the two general conditions mentioned above,
such geographical indications must also be used in practice
in a manner that does not cause confusion consumers about
the geographical origin of products bearing such
geographical indications and ensure the principle of fair
treatment between organizations and individuals producing
products bearing such geographical indications (clause 2
Article 79 of the Intellectual Property Law).

243
See “Protection of geographical indications “Hue” for conical hats”,
http://www.noip.gov.vn/web/noip/home/vn?proxyUrl=/noip/cms_vn.nsf/(ag
ntDisplayContent)?OpenAgent&UNID
=4D4AD969C90C445F47257822002C1A70, access date: 31/03/2019.

405
 In addition, it should be noted that objects not
protected as geographical indications include (Article 80 of
the IP Law):
- Names and indications have become common
names of goods according to the perception of relevant
consumers in the territory of Vietnam.
For indications that have become common names,
used to name that product, it will completely lose its
function of distinguishing the origin of the goods, so it is
not protected as a geographical indication. In Vietnam, one
of the reasons that France's Champagne "instruction" was
denied protection was because "Champagne" was
considered a common name for a sparkling wine.244
- Geographical indications of foreign countries,
which are not protected in that country, are no longer used
because their protection has been terminated.
This content is consistent with the provisions of
clause 9 Article 24 of the TRIPS Agreement. For foreign
geographical indications, the first condition for protection

244
Le Dinh Nghi and Vu Thi Hai Yen, note (31), p. 114.

406
in Vietnam is that the indication must be protected in its
own country of origin.
- A geographical indication identical or similar to a
mark being protected or filed under a trademark registration
application with an earlier filing date or priority date, if the
use of such geographical indication is made there is a
possibility of confusion about the commercial origin of the
goods, for example Mont Blanc is a trademark of a famous
pen maker, but also the name of a mountain in Switzerland.
- Geographical indications mislead consumers about
the geographical origin of that product.
A geographical indication misleads consumers as to
the true geographical origin of the product bearing such
geographical indication when it is considered to be
identical or so similar that it is indistinguishable from a sign
being used by consumers. Vietnam is known as an
indication of the geographical origin of goods and services.

407
6.3.3. Establishment of industrial property rights to
geographical indications
6.3.3.1. Subject has the right to register
According to the provisions of Article 88 of the IP
Law: The right to register for protection of geographical
indications of Vietnam belongs to the State. The State
allows organizations and individuals to produce products
bearing geographical indications, collective organizations
representing such organizations and individuals or the local
administrative management agencies where the
geographical indications are located, the right to register a
geographical indication. Organizations and individuals
exercising the right to register a geographical indication
shall not become the owner of such geographical indication.
Agencies and organizations that have the right to
manage and register geographical indications are: The
People's Committee of the province where the geographical
area corresponding to the geographical indication is located.
In case the geographical indication belongs to many
localities, the provincial People's Committees of the
localities shall discuss and discuss so that the People's

408
Committee of one province is the authorized representative
of the People's Committees of other provinces where the
geographical area is located. corresponding to the
registered geographical indication.
Foreign organizations and individuals that are rights
holders to geographical indications according to the law of
the country of origin have the right to register such
geographical indications in Vietnam.245
6.3.3.2. Mode of filing registration applications and
application form
Each application may only register one geographical
indication for one product. An industrial property
registration application includes the following documents:
a) A registration declaration form according to the
prescribed form;
b) Documents, samples and information showing the
geographical indication, including:
- Names and signs are geographical indications;
- Products bearing geographical indications;

245
Article 8 Decree 103/2006/ND-CP.

409
 - A description of the characteristics, particular
quality and reputation of the product bearing the
geographical indication and the characteristic elements of
natural conditions that create the particular nature, quality,
and reputation of that product. hereinafter referred to as the
description of the particularity). A description of specific
properties must contain the following principal contents:
Description of the respective product type, including raw
materials and physical, chemical, microbiological and
organoleptic properties of the product; How to determine
the geographical area corresponding to the geographical
indication; Evidence of the type of product originating in
the geographical area in the relevant sense; Describe local
and stable production and processing methods; Information
on the relationship between the specific nature, quality or
reputation of the product and geographical conditions;
Information on the self-checking mechanism for the
specific properties and quality of the product.
- Map of the geographical area corresponding to the
geographical indication;

410
 - Documents proving that the geographical
indication is being protected in the country where the
geographical indication is located, if it is a geographical
indication of a foreign country.
c) Power of attorney, if the application is filed
through a representative;
d) Documents proving the right to register, if the
applicant enjoys that right of another person;
đ) Documents proving the priority right, if there is a
request for priority right;
e) Proof of payment of fees and charges.
6.3.3.3. Application processing
The processing of an application for protection of a
geographical indication is similar to that of an application
for the protection of other industrial property objects. The
application processing steps basically include: receiving
the application; formality examination of the application (is
the examination of the compliance with the regulations on
the form of the application, thereby drawing a conclusion
whether the application is considered valid or not);
publication of valid applications; substantive examination

411
of the application (evaluating the protection ability of the
object stated in the application according to the protection
conditions, determining the corresponding scope of
protection); accept or refuse to grant a title and register and
announce the decision to grant a protection title.
However, it should be noted:
- The object stated in the geographical indication
registration application shall be considered incompatible
with the type of geographical indication protection title, if
such object is not a visible sign used to refer to the product
originating from the geographical indication, specific
region, locality, territory or country.
- The applicant must fully demonstrate the following
requirements: (i) The existence of a geographical area
corresponding to the geographical indication stated in the
application; (ii) The product originates from the above
geographical area; (iii) The product has a particular
nature/quality and/or reputation determined by the
geographical conditions of the said geographical area as
prescribed in Article 82 of the Intellectual Property Law.

412
 - In the following cases, the geographical indication
stated in the application may not be registered:
(i) The geographical indication has become the
common name of goods in Vietnam;
(ii) A geographical indication of a foreign country in
which the geographical indication is not protected, has been
terminated or is no longer used;
(iii) The geographical indication is identical or
similar to a trademark being protected in Vietnam, if the
use of such geographical indication is made, it will cause
confusion about the origin of the product;
(iv) A geographical indication misleads consumers
about the true geographical origin of the product bearing
that geographical indication.

6.3.3.4. Term of protection

According to the provisions of law, the geographical
indication registration certificate is valid indefinitely from
the date of granted.246 Thus, geographical indications are

246
Clause 7 Article 93 IP Law.

413
protected until the conditions of nature, soil, ecosystem...
no longer create specific products of local nature.
6.3.3.5. Termination and invalidation of protection titles
* Termination of validity of protection titles (Article
95 of the IP Law):
- The protection title holder fails to pay fees and
charges to maintain validity or extend validity as
prescribed;
- The protection title holder declares to give up
industrial property rights;
- The geographical conditions that create the
reputation, quality and characteristics of the product
bearing the geographical indication are changed, causing a
loss of the reputation, quality and characteristics of that
product.
- A foreign geographical indication is no longer
protected in the country of origin.
* Invalidation of the protection title (Article 96 of
the Intellectual Property Law):
A protection title shall be invalidated in whole or in
part if the whole or part of such protection title fails to

414
satisfy the provisions of the Intellectual Property Law on
registration rights, protection conditions, amendments and
supplements. The statute of limitations for exercising the
right to request invalidation of a protection title is
throughout the protection term.
6.3.4. Subjects and rights and obligations of subjects
with respect to geographical indications
6.3.4.1. Owners and rights of geographical indication
owners
* For geographical indications of Vietnam, the
owner is the State (Clause 4, Article 121 of the Intellectual
Property Law). Geographical indications are therefore
assets under the ownership of the entire people, which are
represented by the State and uniformly managed by the
State (Article 197 of the Civil Code 2015).
* The State has the following rights with respect to
geographical indications:
- The State uses or grants the right to use
geographical indications to organizations or individuals
that manufacture products bearing geographical indications

415
in their respective localities and bring those products to the
market.
Using a geographical indication is the performance
of the following acts:
a) Affix protected geographical indications on goods,
goods packages, means of business, transaction papers in
business activities;
b) Circulating, offering for sale, advertising for sale,
storing for sale goods bearing the protected geographical
indication;
c) Import of goods bearing a protected geographical
indication.
- The State directly exercises the right to manage
geographical indications or grants the right to manage
geographical indications to organizations representing the
interests of all organizations and individuals that are
granted the right to use geographical indications.
- The State has the right to prevent others from using
geographical indications that are not authorized individuals
or organizations and without the State's consent, except in
cases where the use of a mark is identical or similar to that

416
of an individual or organization. A geographical indication
is protected if the mark has been obtained in good faith
before the date of filing the application for registration of
such geographical indication, it is not prevented. The State
also must not prevent other people from using truthfully a
person's name, a sign describing the type, quantity, quality,
utility, value, geographical origin and other characteristics
of goods and services.
6.3.4.2. Entities authorized to use and manage
geographical indications
* Theoretically, geographical indications are owned
by a single subject, the State, however, the State is an
abstract subject, including a combination of many different
agencies and apparatuses to exist and function. Therefore,
in practice, in order to effectively implement the
management and use of geographical indications, the State
grants this right to other organizations and individuals to
perform on their behalf. Entities are granted registration
rights to manage and use geographical indications, but are
not owners of geographical indications.

417
 Agencies and organizations with the right to manage
geographical indications specified in Clause 4, Article 121
of the IP Law include:247
a) The People's Committee of the province or
centrally run city where the geographical area corresponds
to the geographical indication in case the geographical
indication belongs to a locality;
b) The People's Committee of the province or
centrally run city is the authorized representative of the
People's Committee of another province or centrally run
city where the geographical area corresponding to the
geographical indication in the school is located.
geographical indications belonging to many localities;
c) Agencies or organizations that are granted the
right to manage geographical indications by the People's
Committees of provinces and centrally run cities, provided
that such agency or organization represents the interests of
all organizations, individuals are granted the right to use
geographical indications according to the provisions of
Clause 4, Article 121 of the IP Law.

247
Article 19 Decree 103/2006/ND-CP.

418
 * Rights of organizations and individuals granted the
right to manage geographical indications:
- Organizations granted the right to manage
geographical indications have the right to permit others to
use geographical indications. An owner of the right to use
a geographical indication means every organization or
individual that produces goods bearing such indication in
the indicated geographical area, provided that the goods
produced by such person must ensure the good reputation
or reputation of their native language. They have the right
to display such instructions on goods, goods packaging,
transaction documents for the purpose of buying and selling
goods and advertising for goods.248
- Organizations and individuals that are granted the
right to use or are granted the right to manage geographical
indications under the provisions of clause 4 Article 121 of
the Intellectual Property Law or under the law of the
country of origin of the geographical indications have the
right to prevent prohibit others from using that
geographical indication. The prohibition should be

248
Le Net, note (88), p. 119.

419
understood precisely as the prohibition of unauthorized
entities from using the geographical indication (at the
request of the organization or the state agency managing
the geographical indication) or the prohibition of products
not originating from the stated geographical area but
affixing this indication on the goods.249
However, it should be noted that the right to a
geographical indication is non-transferable and the right to
use a geographical indication is also non-transferable. 250

6.4. BUSINESS SECRETS

6.4.1. Definition
When you try once to use Chanel No.5 perfume of
the famous Chanel fashion house, you wonder once why
this perfume was born in 1921 but is still popular and is still
known today. "Perfume of all time"? Or when you ask any
person living in the US which fast food is their favorite and

249
Ho Thuy Ngoc (2012), Textbook of Intellectual Property Law, Hanoi
National University Publisher, p. 32.
250
Clause 2 Article 139 and clause 1 Article 142 of the Intellectual Property
Law.

420
most popular, the answer must be McDonald's, why is
McDonald's fast food so successful?
To answer the above two problems, there will
probably be many reasons, but one important reason cannot
be denied that is the quality of the product, the scent of
Chanel No.5 and the taste of Mc Donald's. And so the
formula for making perfumes as well as food of these two
companies is considered one of the most important business
secrets. Until now, McDonald's food recipes or Chanel
perfumery's fragrance recipes are kept secret and not
disclosed as patents to the State or the community.
Therefore, the issue of protecting business secrets is
a very important issue, which is vital to the existence and
development of businesses, especially in the increasingly
competitive market. fierce as it is today. As workers have
the freedom to choose and change their workplace, there is
a very high probability that they will bring information to a
new workplace, which is usually a competitor of the old
company. Confidential information itself is not a technical
solution, so it cannot be protected under the name of

421
invention; and also not publicly accountable for protection
due to the confidentiality of the information.
The protection of certain types of confidential
information provided for in Article 39 of the TRIPS
Agreement represents the first time that such information
has been formally protected in an international IP treaty
beyond the general obligation under the TRIPS Agreement.
in Article 10bis of the Paris Convention. In particular,
Article 10bis of the Paris Convention does not refer to
business secrets but regulates unfair competition, requiring
protection against any act of competition contrary to honest
business practice. In trade, the need for protection against
the wrongful protection of “non-disclosures” is generally
recognized. Article 39.1 of the TRIPS Agreement provides
that: “To secure effective protection against unfair
competition under Article 10bis, Paris Convention (1967),
Members must protect confidential information” under
defined in paragraphs 2 and 3 of Article 39. The Uniform
Trade Secrets Act (UTSA) of the United States defines a
“business secret as information, which (i) has created or
will create economic value, which is not widely known, and

422
is not easily obtained by just means by others who could
derive economic value if known or used such information,
and (ii) be the subject of efforts deemed reasonably
appropriate under the circumstances to maintain
confidentiality”.251
According to the provisions of current Vietnamese
law, "Business secret is information obtained from
financial and intellectual investment activities that has not
been disclosed and can be used in business"252. In simple
terms, a business secret is any information that is used in
the activities of a business entity (enterprise or other
economic organization) and this information has business
value and potential so that its owner must keep it a secret
from others.253
Business secrets can involve different types of
information such as technical and scientific (manufacturing
recipe, technical structure, computer code, test data...);

251
Nguyen Ngoc Xuan Thao (2013), Intellectual Property Law – Cases,
Materials and Problems, VNUHCM Publishing House, p. 222.
252
Clause 23 Article 4 IP Law.
253
B. Kevin Burke (2008), “Trade Secrets”, Practical Skills – Basics of
Intellectual Property Law, New York State Bar Association Publisher, p.
467.

423
commercial (list of suppliers and customers, marketing,
advertising and sales strategies, market research results,
sales methods...); financial (internal price structure, price
list...); negative information (research deadlock, technical
solutions withdrawn...)...
Example: The Coca Cola Company is a
multinational beverage company headquartered in the
United States and the owner of the Coca Cola brand. Coca
Cola is now available in all continents of the world and can
be recognized by the majority of the world's population.
The Coca Cola Company has more than 500 brands in more
than 200 countries, all under the common brand of Coca
Cola. Therefore, Coca Cola is the best-selling beverage in
most countries, and it is called a global beverage. So what
made Coca Cola's drink so successful?
The answer belongs to this company's business
secret, which is a recipe for a soft drink called Coca Cola.
The process to defend Coca Cola's formula (also known as
“7X Commodities”), as a Senior Vice President and Chief
Counsel of Coca Cola said at a court hearing, is as follows:
The paper data describing the secret recipe is kept in a

424
secure vault at the Trust Bank in Atlanta, Georgia, USA,
and this vault can only be opened upon a Resolution of the
Board of Directors of the Company. It is Company policy
that only two people within the Company know the recipe
at any time, and only such persons can supervise the actual
preparation of 7X Goods, who knows. secret recipe also
signed a non-disclosure agreement. The company also
refused to disclose the identities of these people and did not
allow these people to be with or fly on a flight. Similar
precautions apply to secret formulations of other Company
Cola drinks such as: Diet Coke, Dietary Caffeinated Coke,
TAB, TAB caffeine-free and Coca-Cola caffeine-free. In
fact, Coca Cola refused to disclose its trade secrets to at
least two of the judge's offers. Because of the decision to
keep this recipe a secret instead of applying for a patent, the
Coca Cola company is still the only company that can
produce a special drink that is globally popular. If this
recipe is patented (it can only be protected for a maximum
of 20 years, after which it will become the common
property of mankind), all ingredients and processing stages

425
of Coca Cola will be publicly disclosed, and the whole
world can produce Coca Cola.254
Thus, business secrets are information and know-
how that subjects in the process of financial, intellectual
and business investment have. This information is applied
in production and business activities, bringing economic
benefits to the subject.
6.4.2. Protection conditions
Business secrets are protected if the following
conditions are met:255
* Not common sense and not easily obtained
The first characteristic of information in a business
secret is confidentiality, which means that the information
or significant part of it must not be easily known or easily
guessed. Single information that does not contain a certain
amount of creative knowledge to those with average

254
Mark Pendergrast (2000), For God, Country & Coca-Cola, 2nd Ed.,
Basic Books Publisher, p. 456.
And see Nguyen Thanh Ha, “Business secrets and methods of protection”,
http://baohothuonghieu.com/banquyen/tin-chi-tiet/bi-mat-king-doanh-va-
phuong-thuc-bao-ve/317.html, access date: 31/03/2019).
255
Article 84 IP Law.

426
qualifications in that field256 will not meet the conditions of
protection as a business secret. Common, low-key, ordinary
knowledge, information that violates social ethics, and
unclear and ambiguous information are similarly not
prioritized for protection of business secrets.257
Of course that doesn't mean that every piece of
information has to be confidential. “Secrets can be simply
a combination of all the known.” 258 These insights may
include:
- Information related to science and technology:
+ The information and data in the process of
experimenting to create products, these are information,
formulas, processes, data during research and experiments
that have not been published.
+ Formulas to produce products, for example,
recipes for alcohol, recipes for perfumes...

256
A person with average knowledge is understood as a person who has
common technical practical skills and knows well the common knowledge
common in the respective technical field (according to Circular
01/2007/TTBKHCN).
257
Lionel Bently và Brad Sherman, note (77), p. 1010-1013.
258
Nguyen Xuan Quang, Le Net and Nguyen Ho Bich Hang, note (327), p.
201.

427
 + Information about the technical structure of the
product, such as how many parts the product consists of,
the connection of those parts, the operation process of those
parts...
+ The information about the design of the product:
It is the shape of the product, the size, the color... the
advantages of that shape in the process of using the product.
+ Information about computer code.
+ The necessary know-how to perform a specific
activity related to production and business activities. For
example, to create a product that plastic raw materials need
to be melted at what temperature, how many turns of plastic
should be stirred in a minute...
Trade-related information:
+ Information about business goals of enterprises,
each business has a certain business goal, there are
businesses whose business goals are profit, but also search
for markets, promote business image own business or
compete for market share...
+ On the basis of the set goals, the business has a
business strategy in each period, short-term, long-term...

428
The information about the business strategy can be targeted
by customers such as rich or popular or businesses towards
potential customers; It can also be information about the
market that the business will target, invest ...
+ Information about the business plan, from the set
business strategy, the enterprise develops a specific
business plan to implement the set strategy.
+ Information about marketing plans such as
advertising and marketing methods, forms of marketing
advertising, means of supporting tools... In the market
economy, in the trend of advertising globalization
Marketing is an extremely important stage contributing to
the success of a business, through marketing advertising,
products, goods and services to consumers...
+ Information on methods of distributing goods to
customers, distribution channels...
+ Information about customer records, which
contains information related to address, business field,
performed transactions, number of transactions, transaction
value, transaction price, location delivery...

429
 + Information about the list of partners, suppliers of
goods and services, list of customers and addresses,
headquarters of partners, customers, thereby knowing that
the above partners belong to the wealthy class or ordinary...
+ Information about the needs of customers and
partners that the business obtains during the transaction,
during the investigation and collection of information.
+ Information about the number of contracts that
have been transacted with partners, customers, information
from such contracts such as quantity of goods, quality of
goods, models, designs, packaging, and prices, execution
method, payment method.
- Other confidential information:
+ Information on input costs of products, prices of
products and goods. These are important information of the
business, which is important in deciding the selling price,
the partners to associate, the market to occupy.
+ Information about failures in the process of
experimenting and researching new products. As we all
know, to create a new product, businesses have to spend a
lot of research and experimentation costs, but not every

430
experiment gives the desired results. There are even cases
where the experimental results are very good, but when put
into industrial production, they are not satisfactory.
+ Information about difficulties in researching,
researching, manufacturing new products or improving
technology and processes.
* When used in business, it will give the holder of a
business secret an advantage over those who do not hold or
do not use the business secret.
That is, the information must play an important role
in the production process, creating a product or service, in
other words, a business secret of commercial value. As such,
a secret should be useful in that it enhances the position or
gives the holder a competitive advantage, for example by
tapping into new consumer tastes.259
However, this condition is more qualitative, since
the “goodwill” brought about by a trade secret can only be
judged by the owner to be the most accurate, that is,
information to the user. This may be beneficial and they

259
Le Net, note (88), p. 175.

431
keep it a secret, but the same information is not of great
value to others, so they don't need to keep it a secret.
* Secured by the owner by necessary measures so
that the business secret is not disclosed and not easily
accessible
This condition is very important and can be
quantified through the measures that the owner adopts
outwardly to keep his business secret.
In order to be protected, the owner of a business
secret must have the intention to keep the business secret
and take necessary measures to keep it. For example, to
protect recipe secrets companies often protect by restricting
important information to only one or two trusted
individuals, such as the ingredients of Chartreuse.260 This

260
This is a French liqueur, created and processed by monks of the
Carthusian Catholic order in the 1740s. This wine is made by distilling and
extracting 130 different herbs. The liqueur is named after the monks of the
Grande Chartreuse monastery, located in the Chartreuse mountains in the
general area of Grenoble in France.
See also “History of the Chartreuse (liqueur)”,
https://www.chartreuse.fr/en/histoire/history-of-the-chartreuse-liqueurs/,
access date: 31/03/2019.

432
drink has a unique flavor created using 130 different herbs,
known only to two of the monks at the monastery.261
The basis for legal protection in the form of a
business secret is that businesses determine what is a secret,
how it plays a role in their business processes and,
importantly, that the business has What measures should be
taken to protect it? One can't just say it's a secret without
taking any action to protect it. Trade name protections can
be a physical measure or a measure through a contract,
undertaking, or even a combination of the two.262
For example, as stated above, Coca Cola is rated as
the company with the greatest formula confidentiality. In
addition, information about the development of new drinks
is also kept secret. It is only when the drink is sold that the
information circulates. However, in 2006, the theft of Coca
Cola's secrets showed us how much effort and necessary
measures were taken to protect the company's business
secrets.

261
See “Protection, Trade Secret”,
http://en.wikipedia.org/wiki/Trade_secret, accessed date: 31/03/2019.
262
Victoria A. Cundiff (2008), “The New York Law of Trade Secrets: A
Practical Guide”, Practical Skills – Basics of Intellectual Property Law,
New York State Bar Association Publisher, p. 661.

433
 Coca-Cola employee Joya Williams "collaborated"
with Ibrahim Dimson and Edmund Duhaney to hack the
data and steal the recipe for a new Coca Cola product. Then,
offer to sell the information to PepsiCo - Coca Cola's top
competitor. An undercover FBI agent assigned to the agent
made an appointment with Dimson, who was later
identified as Dirk, who sent a letter to PepsiCo claiming to
be a senior Coca Cola employee wanting to sell information,
at the airport. Hartsfield-Jackson International in Atlanta.
During this meeting, Dimson presented an envelope
containing the document and a glass bottle containing a
sample of the liquid solution. The FBI investigator said he
would pay $30,000 in advance and promised to pay the
remaining $45,000 later. On June 27, the FBI secretly
assigned an employee to pretend to want to buy the
remaining secrets for $ 1.5 million from Dirk. On the same
day, the FBI discovered a bank account had been opened
under the names of Duhaney and Dimson. Soon after, both
Williams (who leaked the information to Dimson), Dimson
and Duhaney were arrested. FBI investigators said they had
obtained video footage of Williams stealing data. Therefore,

434
these people have to appear in court in Atlanta, Georgia. In
addition, Coca Cola said, the secret of the recipe for the
official drink - sold in the familiar red and white boxes -
remains intact.263
In the United States, trade secrets are protected
under State law, and most states have enacted the Uniform
Trade Secrets Act (UTSA). One of the differences between
patents and trademarks, and trade secrets, is that a trade
secret is protected indefinitely as long as it is not disclosed
to the public. Therefore, companies often take two main
measures to protect confidentiality: (1) Usually, before a
company gives an employee the right to hold a confidential
information, the company will ask the employee to The
employee signs an agreement not to disclose information to
the public during the working period, even for a certain
period of time after the termination of the employment
contract (non-disclosure agreement). (2) Companies also
often require employees to sign an agreement that grants

263
Kathleen Day (2006), “3 Accused In Theft Of Coke Secrets”,
Washington Post, Thursday, July 6, http://www.washingtonpost.com/wp-
dyn/content/article/2006/07/05/AR2006070501717.html, access date:
31/03/2019.

435
the company ownership of intellectual property created by
employees while working for the company. These two
types of contracts often stipulate very heavy fines if the
employee violates the contract.
In addition to the two ways above, most companies
go further by stipulating in the company's rules that all
information and news of the company, any kind of
information is confidential information of the company.
company, no employee may disclose it to anyone. Violation
of this rule may result in immediate dismissal of the
employee.264
An illustrative example of the above method in
Vietnam is the case of a labor dispute related to the
obligation of confidentiality at work between the employee
- Ms. Hien (plaintiff) and the employer - Mr. Nike
(defendant). Nike company dismissed Ms. Hien on the
grounds that Ms. Hien violated the company's rules and
disclosed the company's business secrets. On November 17,
2004, the Resident Representative Office of Nike, Inc.,
USA in Ho Chi Minh City. Ho Chi Minh City has decided

264
Victoria A. Cundiff, note (426), p. 653.

436
to terminate the labor contract with immediate effect
between Nike and Ms. Hien (by letter of notice) due to a
deliberate violation of the Labor Regulations in Part 4,
Article 4.1 on information security. Nike's information and
standards of conduct, such as: disclosing the company's
business records (section 4, Article 4.1), 265 intentional
misuse of company resources (Article 4.3) and conflict of
interest (Article 4.4) and Article 85 of the Labor Code and
according to Article 85, Section 1 of the Labor Code, Nike's
rules to discipline Ms. Hien. The case has been handled by
the People's Court of Ho Chi Minh City.266
Or another way of protecting business secrets, which
is quite popular in Vietnam today, is through a work
restriction agreement in a labor contract. Specifically, the

265
Section 4 Article 4.1 of the Code states: “In the course of working for
Nike, employees may obtain documents or obtain information about the
company. This information or materials, if disclosed to unrelated
individuals, may cause material harm as well as other negative effects for
the company. Such disclosure, whether intentional or negligent, may be
considered a breach of contract and may result in disciplinary action
including dismissal.
266
See judgment No. 20/LD-ST dated March 17, 2005 of the People's Court
of Ho Chi Minh City. And comments in the Case Book of Vietnam
Intellectual Property Law, Ho Chi Minh City of the University of Law,
2019, from page 494-531.

437
owner of a business secret will require an employee who
holds a part or all of his business secret after leaving a job
to not work for a competitor for a certain period of time (by
agreement). This is especially necessary when employees
are arranged at important stages and stages, can through
their work capture important information that has a vital
influence on the development of an enterprise.267 And the
higher the position of this person, the greater the risk of
exposing business secrets. 268 For that reason, the law
allows business secrets owners to have obligations on
employees as measures to protect their business secrets.
A typical dispute for this measure is a labor dispute
between Saitex Company (plaintiff) and former employee
- Mr. Ram (defendant). Previously, Mr. Ram signed a labor
contract with Saitex which included the provision that Mr.
Ram, after terminating his labor contract with Saitex within
1 year, could not sign a labor contract with a competitor of
Saitex. Mr. Ram then worked for Vina Company which was
Saitex's competitor. Saitex Company sued Mr. Ram for

267
Ho Chi Minh City University of Law, note (103), p. 517.
268
Holyoak and Torremans (2013), Intellectual Property Law, 7th Edition,
Oxford University Publisher, p. 612.

438
violating the labor contract, violating the obligation to
protect business secrets. The case has been accepted by the
People's Court of Duc Hoa district, Long An province.269
In addition, when a secret is lost due to "industrial
spying", both a spy for another country and a spy for
another company, including a domestic company, some
countries, in including the United States, will handle the
matter according to criminal law.270
Note: Unprotected objects are trade secrets.
- Personal secrets.
- Secrets of state management.
- Security and defense secrets.
- Other secrets not related to business.
The above objects are not protected as business
secrets because this is information related to an individual
or a person, related to state management, security and
defense, not related to production and business activities.

269
See judgment No. 09/2010/LD-ST dated December 10, 2010 of the
People's Court of Duc Hoa district, Long An province. And comments in
the Case Book of Vietnam Intellectual Property Law, of Ho Chi Minh City
University of Law, 2019, from page 494-531.
270
Tran Dinh Hoanh (2006), “Protecting Business Secrets”, Managers
Journal, No. 40, October.

439
business is therefore not protected by one law, but by
another.ư
6.4.3. Establishment of industrial property rights to
business secrets
According to the provisions of current law,
“Industrial property rights to business secrets are
established on the basis of financial, intellectual investment
or any other lawful means to find, create or acquire.
information and confidentiality of information constitutes
such business secret without the need to carry out a
registration procedure.”271
According to the laws of other countries, a business
secret is established on the basis of the lawful acquisition
and use of such a business secret, which entails the
automatic protection of the business secret. There is no cost
to maintain validity like other objects of IP rights, the
protection period is not limited, there is no fear of being
exposed due to registration with a competent state agency.
According to the laws of other countries, a business
secret is established on the basis of the lawful acquisition

271
Clause 4, Article 6 of Decree 103/2006/ND-CP.

440
and use of such a business secret, which entails the
automatic protection of the business secret. There is no cost
to maintain validity like other objects of IP rights, the
protection period is not limited, there is no fear of being
exposed due to registration with a competent state
agency.272
Thus, the subject's industrial property rights are
protected automatically without having to go through a
legal procedure. Trade secrets are protected indefinitely
until the above information is revealed to be no longer a
secret, the above information has been disclosed and
widely known to many people.
Compared with patents and copyrights, a business
secret can be protected forever, it is not forced to be made
public; The protection of trade names also does not have to
follow the rigorous process of subject matter, conditions
and costly appraisal like patents. However, the

272
Talhiya Sheikh, “Pros and Cons of trade secret protection”,
https://www.wipo.int/sme/en/documents/trade_secrets_employee_loyalty.ht
ml%20#pros, accessed date: 31/03/2019.

441
disadvantage is that a business secret cannot be protected if
it is independently created by another entity.273
6.4.4. Owners and rights of business secret owners
6.4.4.1. Owners of business secrets
An individual or organization that legally obtains a
trade secret and keeps it confidential. In principle, the entity
that invests in financial means and techniques to research
and create processes and technical know-how is the owner
of such information. In addition, the owner of a business
secret can also be the subject of transfer through
transactions or inheritance.
6.4.4.2. Rights of the owner of a business secret
- The owner of a business secret has the right to use
the business secret in its production and business activities.
Specifically, applying trade secrets to produce
products, services, and trade in goods. The owner of a
business secret also has the right to use the business secret
in the form of selling, advertising, offering for sale or
importing products to which the business secret is applied.

273
Michael J. Hutter (2008), “General Principles of Trade Secret Law”,
Practical Skills – Basics of Intellectual Property Law, New York State Bar
Association Publisher, p. 545.

442
 - In the course of owning a business secret, if another
subject is discovered to illegally use his ownership rights,
he has the right to prohibit that person from using the
business secret. Except for the following cases, the owner
of a business secret is not entitled to prohibit others:274
(i) disclose or use a business secret obtained without
their knowledge and under no obligation to know that the
business secret was obtained illegally by others;
(ii) or disclosure of confidential data to protect the
public;
For example, a preservative for vegetables and fruits
stays fresh for a long time, but in that preservative there are
ingredients that cause cancer and are harmful to health.
(iii) use confidential data specified in Article 128 of
the IP Law275 for non-commercial purposes;

274
Clause 3 Article 125 IP Law
275
Obligation to protect test data
1. Where it is required by law that an applicant for a license to trade in or
circulate pharmaceuticals or agrochemicals must provide test results or any
other data that is a business secret obtained by investment. considerable
effort and the applicant requests that such information be kept confidential,
the licensing authority is obligated to take all necessary measures to prevent
such data from being used for commercial purposes. unfair trade and is not
disclosed, except where disclosure is necessary to protect the public.

443
 (iv) disclosure and use of independently generated
trade secrets;
(v) disclose and use a business secret created by
analyzing and evaluating legally distributed products,
provided that the analyst or evaluator has no other
agreement with the owner of the business secret. This case
is often referred to as “reverse analysis” of business secrets.
For example, the formula for perfume Chanel No.5
is a trade secret. A chemist bought a bottle of perfume at
Saks Fifth Avenue, then analyzed the perfume and
produced a solution similar to Chanel No.5. This reverse
parsing behavior is legal.276
- The owner of a business secret has the right to
dispose of his/her business secret to another entity through
a contract. The sale and transfer of business secrets is a
channel that brings great profits to the owner. Especially

2. From the time the confidential data in the license application is submitted
to the competent authority specified in Clause 1 of this Article to the end of
five years from the date on which the applicant is granted the license, such
authority shall not be granted a license. to any person filing a later
application if the above confidential data is used in the application without
the consent of the submitter of such data, except for the case specified at
point d, clause 3, Article 125 of the IP Law.
276
Nguyen Ngoc Xuan Thao, note (415), p. 220.

444
secrets that bring great advantages to the subject in
applying that secret to production and business activities.
- The owner of a business secret has the right to
inherit the business secret in accordance with the law on
inheritance.
- When a business secret is infringed, illegally
collected, used or disclosed, the owner has the right to
request protection from a state agency. Depending on the
seriousness of the violation, the subject may be subject to
criminal, administrative or civil penalties. For example, the
violation of trade secrets can be an act of unfair competition
or entail liability for damages or penalties. On the other
hand, when competitors have intimidated or influenced
representatives or employees, or induced them to disclose
confidential information, then civil compensation 277 or
apply constitute a crime in the criminal field.

277
Doan Duc Luong, p. 203.

445
 CHAPTER 7: RIGHT TO PLANTS
7.1. CONCEPT
Plant variety rights, also known as breeder's rights,
are rights set forth to protect the creative fruits of
individuals and organizations in the field of plant varieties.
seed field. The TRIPS Agreement does not have specific
provisions on plant variety protection, but at point b, clause
3 of Article 27, it states: “However, members must protect
plant varieties by means of a patent system or by a patent.
effective system of its own, or in any way by a combination
of the two”. This means that the TRIPS Agreement opens
up the possibility for member countries to choose one of
the systems that the country deems most suitable for the
protection of plant varieties. At the same time, the TRIPS
Agreement does not cover plant varieties. Because, in fact,
the issues of new plant varieties are governed by the
International Convention for the Protection of New Plant
Varieties (UPOV Convention).
According to the UPOV Convention, the concept of
a plant variety refers to a single group of plants belonging
to the lowest botanical taxonomy, regardless of whether the

446
variety fully or not fully meets the conditions for
recognition. At the discretion of the breeder, plant groups
may (i) be identified by the expression of traits resulting
from known genotypes or combinations of genotypes, (ii)
be distinguished from any other plant by the expression of
at least one of the foregoing traits, and (iii) considered as a
unit with regard to fitness of being unchanged after
propagation.
Plant varieties are defined in the Law on Intellectual
Property as “the lowest plant population belonging to the
same plant taxonomy, morphologically homogenous,
stable over propagation cycles, recognizable by their
expression. traits determined by a genotype or a
combination of genotypes and distinguished from any other
plant population by the expression of at least one heritable
trait”.
Plant varieties are created on the basis of intellectual
creativity, financial and technical investment... of breeders
and owners of plant varieties. Therefore, plant varieties
must be protected to ensure the rights of the above subjects.
Rights to plant varieties are established on the basis of

447
decisions on grant of plant variety protection certificates
issued by competent state agencies according to the
registration procedures with state management agencies in
charge of plant varieties according to the provisions of the
Law on plant varieties. This. Right to plant variety means
the right of an organization or individual to a new plant
variety that he or she chooses to create, discover and
develop, or enjoys ownership rights.
Thus, it can be said that plant variety rights are
understood as specific powers that the State grants to
organizations and individuals that have had the merit of
selecting, creating, or discovering and developing plant
varieties or investing in the public sector. breeding or the
discovery and development or transfer of rights to the plant
variety.
7.2 CONDITIONS FOR PROTECTION OF PLANT
VARIETIES
7.2.1 Novelty
The novelty of plant varieties is specified in Article
159 of the Intellectual Property Law. The condition of
novelty is set forth from the nature of plant variety

448
protection. If the newly created plant varieties are not
protected, it means that the research results are not
accepted, and therefore, plant breeders are not motivated to
continue their innovative research. . On the contrary, if the
plant variety does not meet the novelty, then the protection
of that old plant variety does not have much meaning in
promoting research to create new plant varieties. If
Vietnam does not create many new plant varieties by itself,
it will lead to the possibility of being heavily dependent on
imported plant varieties. These cultivars will not be fully
compatible with the soil conditions of Vietnam, so in the
long-term cultivation process will lead to changes in the
ecology and environment of Vietnam. Indigenous plant
varieties of Vietnam will be affected and narrowed in terms
of cultivation area. Economically, if the plant variety is not
proactive to a certain extent, when there are unexpected
circumstances that make the import of the variety not
possible, or the export market for the seed for some reason.
Failure to supply seeds to Vietnam will lead to the
possibility that Vietnam's agriculture will fall into a passive
state. Therefore, the Vietnamese government needs to have

449
the right guidelines and policies to encourage individuals
and organizations to create new plant varieties suitable to
Vietnam's soil and environmental conditions. to create a
competitive advantage when entering into trade agreements
with countries around the world.
According to the provisions of the Intellectual
Property Law, a plant variety is considered novel if the
propagating material or the harvested product of such plant
variety has not been sold or distributed by the person
having the right to registration or his/her licensee. other
means for the purpose of exploiting plant varieties in the
territory of Vietnam one year before the date of application
for registration or outside of Vietnam six years before the
date of application for registration, for plant varieties of
woody and climbing plants. timber, four years for other
cultivars.
7.2.2 Distinctiveness
A plant variety is considered distinctive if it is
clearly distinguishable from other plant varieties that are
widely known at the time of application or priority date if

450
the application enjoys priority. Widely known plant variety
is understood in one of the following cases:
(a) A plant variety whose propagating or harvesting
material is widely used in the market in any country at the
time of filing the application for protection;
(b) The plant variety has been protected or included
in the List of Plant Varieties in any country;
(c) The plant variety is the subject of an application
for protection or an application to the List of Plant Varieties
in any country, provided that such applications are not
refused.
7.2.3. Consistency
During breeding, there may be cases where variation
occurs due to specific characteristics during breeding. This
is completely understandable from a scientific perspective.
Because for plants, variation can arise due to genetic causes
and the effects of environmental and geographical factors.
Therefore, for cultivars, during propagation, it is unlikely
that the results will be the same for all propagations.
Therefore, a plant variety is considered to meet the
conditions of homogeneity if there is a complete

451
homogeneity of all the traits associated with that plant
variety, excluding the possibility of variation within allow.
This provision is also provided for in Article 8 of the UPOV
Convention. The homogeneity of the cultivar should be
specifically described in the DUS trial report.
7.2.4. Stabilization
Plant variety stability is one of the important
conditions for plant varieties. The stability of the cultivar
should be specifically described in the DUS trial report.
Usually, breeders often research to come up with plants that
have superior features compared to those currently on the
market such as short-term growth, high yield, pest
resistance, drought tolerance, salt tolerance, disease
resistance, weed resistance, etc., due to these superior
characteristics, the plant variety is considered new and
likely to be protected. The superior features of the new
plant must be preserved, not changed through the
propagation process or after each propagation cycle. If the
superior characteristics of the plant variety are not stable
over the propagation cycle or after each breeding season,
the protection of the new plant variety will not make much

452
sense. In other words, if a plant variety does not meet the
requirements of stability, it will not satisfy the conditions
for protection.
7.2.5. Having a suitable name
The name of a plant variety is considered
appropriate if it is readily distinguishable from the names
of other widely known cultivars of the same or similar
species. Conversely, the name of the plant variety shall not
be considered appropriate in the following cases:
(a) Consists only of numerals, except where the
number relates to the characteristic or formation of the
variety;
(b) Violation of social ethics;
(c) misleading about the characteristics,
characteristics of that variety;
(d) It is easy to mislead the author's identity;
(dd) Identical or confusingly similar to a protected
trademark, trade name or geographical indication before
the date of publication of a plant variety protection
registration application; and

453
 (e) Affecting the pre-existing rights of other
organizations or individuals.
7.3. ESTABLISHMENT OF RIGHTS TO PLANT
VARIETIES
The registration of rights to plant varieties can be
done as follows:
- In case the application owner is a Vietnamese
organization or individual: the legal representative, the
authorized representative of the application owner or the
plant variety rights representation service organization
authorized by the application owner.
- In case the application owner is a foreign
organization or individual with its head office and
permanent address in Vietnam or has a plant variety
production and trading establishment in Vietnam: the head
of a representative office or branch in Vietnam or a plant
variety rights representative service organization as
authorized by the applicant.
- In case the application owner is a foreign
organization or individual that has no head office or
permanent address in Vietnam or has no establishment for

454
production and trading of plant varieties in Vietnam: a plant
variety rights representative service organization shall be
authorized by the applicant.
For the procedures for registration of plant varieties
in Vietnam, the principle of first application shall be
applied. The principle of first filing application for plant
varieties is specified in Article 166 of the Intellectual
Property Law. Accordingly, in case two or more people
independently file a protection registration application on
different days for the same plant variety, the plant variety
protection certificate can only be granted to the earliest
valid registrant. Where there are many applications for
protection of the same plant variety filed on the same day,
the plant variety protection certificate may only be granted
to the person who files a single application under the
agreement of all the registrants; if the registrants cannot
reach an agreement, the state management agency in charge
of rights to plant varieties will consider to grant a plant
variety protection certificate on the basis of determining
that the first person has chosen to create or discover and
develop such plant variety.

455
 The registrant has the right to claim priority right in
case the protection registration application is filed within
twelve months from the date of filing the application for
protection of the same plant variety in the country which
has signed an agreement on plant variety protection with
the Socialist Republic of Vietnam. The first filing date does
not count towards this deadline.
In order to enjoy priority, the registrant must show
the claim for priority in the protection application. Within
three months at the latest from the date of filing the
registration application, the registrant must provide copies
of documents on the first application certified by the
competent authority and samples or other evidence
confirming that the plant variety in the two applications is
one and must pay a fee. The registrant has the right to
provide necessary information, documents or materials to
the state management agency in charge of plant variety
rights for examination according to the provisions of
Articles 176 and 178 of the Intellectual Property Law
within two years after the expiration of the priority period
or within an appropriate time depending on the species of

456
the plant variety in the application, after the first application
is rejected or withdrawn. For a protection registration
application entitled to priority, the priority date is the first
filing date. Within the time limit for claiming the right of
priority, the filing of another application or the publication
or use of the plant variety which is the subject of the first
application shall not be considered as grounds for refusal
of the application for protection of the right of priority.
7.4 CONTENTS
A plant breeder is a person who directly uses his/her
own efforts to research, select, create, discover or develop
new plant varieties with his/her intellectual labor. In case
there are two or more people who jointly directly select,
create, or discover and develop new plant varieties, they are
co-authors. Due to their indispensable role in the creation
of new plant varieties, the breeder of a plant variety has the
rights set forth in Article 185. In particular, the rights:
- To be named as the author in the Plant Variety
Protection Certificate, the National Register of Protected
Plant Varieties and in the published documents on the plant
variety. The right to be named as the breeder of the plant

457
variety remains intact even if the variety is transferred to
other entities.
- Received remuneration. Remuneration is the
material benefit that the author receives for his mental labor
spent in the process of creating a new plant variety. The
right to receive remuneration is set forth in cases where the
breeder of the plant variety and the holder of the plant
variety protection certificate are two different subjects. In
case the plant variety protection certificate holder is not
concurrently the plant variety breeder, the plant variety
protection certificate holder is obliged to pay remuneration
to the breeder, the remuneration level being determined on
the basis of agreement between the parties. In case the
parties cannot reach an agreement, the level of
remuneration shall be determined as follows:
(a) 10% of the pre-tax profit that the plant variety
protection certificate holder gained from using
the protected plant variety for production and business;
(b) 15% of the total amount received by the holder
of the Plant Variety Protection Certificate in each payment

458
due to the transfer of the right to use the plant variety before
paying the prescribed tax;
(c) 35% of the total amount that the plant variety
protection license holder receives from the transfer of
rights to the plant variety for the first time before paying
the prescribed tax and is not entitled to receive
remuneration for the subsequent transfer and the
remuneration specified at points a and b above.
The fact that the Intellectual Property Law
recognizes the remuneration of the breeder of a plant
variety in the absence of an agreement by the parties is
meaningful in making the provisions of the law transparent,
minimizing disputes between the parties in the process of
exploitation and commercialization of the plant variety.
Besides, if the breeder of the plant variety is properly paid,
it will create an incentive for the author to make more
contributions in the field of research to create more useful
plant varieties. In addition, for plant varieties resulting from
scientific and technological tasks funded by the state
budget, the plant variety protection certificate holder shall

459
pay remuneration to the author according to the following
provisions:
(a) A minimum of 10% and a maximum of 15% of
the pre-tax profit that the Certificate of Plant Variety
Protection earns from using a protected plant variety for
production and business;
(b) A minimum of 15% and a maximum of 20% of
the total amount received by the holder of the Plant Variety
Protection License in each payment due to the transfer of
the right to use the plant variety before paying the
prescribed tax;
(c) A minimum of 20% and a maximum of 35% of
the total amount that the plant variety protection certificate
holder receives from the first transfer of the right to a plant
variety before paying tax as prescribed, and is not entitled
to receive remuneration for the next transfer
and remuneration as prescribed in points a and b of this
clause.
Rights of protection title holders are specified in
Article 186 of the IP Law. Accordingly, during the
protection term, the protection certificate holder has the

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right to: (i) use or permit others to use the following rights
in relation to the propagating material of the protected
variety. Specifically, the following acts:
a) Production or breeding;
b) Processing for the purpose of propagation;
c) Offer;
d) Sell or perform other market access activities;
dd) Export;
e) Import;
g) Storage to perform the above acts. Comparing
with the provisions of the UPOV Convention, it can be seen
that these rights are basically a re-write of Vietnam's IP law
from paragraph 1, Article 14 of this convention.
(ii) In addition, the protection title holder also has
the right to prevent others from exploiting and using the
rights of the protection title holder without the permission
of the protection title holder; Using the name of a plant
variety that is identical or similar to the name of a protected
plant variety for a plant variety of the same species or
closely related to the protected plant variety; Using

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protected plant varieties without paying compensation in
accordance with this IP Law.
(iii) Because IP rights in general and rights to plant
varieties in particular are property rights, the holder of a
title as an individual has the right to inherit and inherit
rights to plant varieties and to transfer rights to plant
varieties according to the provisions of IP law.
7.5. DURATION OF PROTECTION
A plant variety protection certificate is valid from
the date of grant to the end of twenty-five (25) years for
woody plant varieties and woody climbing plants; to the
end of twenty (20) years for other plant varieties. The term
of protection for plant varieties under the provisions of the
IP Law is consistent with the provisions on the term of
protection for the rights of breeders under the provisions of
the UPOV Convention.
In paragraph 2 of Article 19 of this convention, “the
period shall not be shorter than twenty (20) years from the
date of recognition of the breeder's right. For woody plants
and grapes, the aforesaid period must not be shorter than
twenty-five (25) years from the said date.”

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 Thus, although the UPOV Convention only sets the
term of protection of the rights of plant variety (plant
breeders) to a minimum, the States Parties to this
convention may provide for a longer term of protection, if
they so desire. However, the term of plant variety
protection in Vietnam's IP law is consistent with the time
limit requirements set forth by the UPOV Convention.
A plant variety protection certificate may be
suspended in the cases specified in Article 170 as follows:
- The protected plant variety no longer meets the
conditions of uniformity and stability as at the time of grant
of the Degree. Conditions of uniformity and stability are
key in determining the novelty of a plant variety. Therefore,
if these conditions are not achieved through propagation
cycles, the protection of the new variety is no longer as
important as it is. In other words, the exclusive protection
of a plant variety that does not meet the core protection
conditions only increases the work and costs for the state
management agency of the plant variety while the surplus
value that society collects from the advancements,

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technology and results of the new plant variety in this case
is zero.
For plant varieties that no longer satisfy the
conditions of homogeneity and stability at the time of
granting the certificate, any individual or organization has
the right to request the state management agency in charge
of rights to plant varieties to suspend the validity of the
plant variety protection certificate. However, the validity of
a plant variety protection certificate will be restored after
the plant variety protection certificate holder proves that the
variety has met the conditions for uniformity and stability
and has been certified by the state management agency in
charge of rights to plant varieties.

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