New updates in Decree 65/2023/ND-CP on the trademark in Vietnam

On August 23, 2023, the Government issued Decree No. 65/2023/ND-CP detailing industrial property, industrial property protection, and plant variety management. Decree 65/2023/ND-CP replaces Decree No. 103 /2006/ND-CP and a number of articles of Decree 105/2006/ND-CP, including amendments and additions of some new points on trademarks. In the article below, Viet An Law will analyze new updates in Decree 65/2023/ND-CP on the trademark in Vietnam.

Legal basis

• Law on Intellectual Property, as amended and supplemented in 2022.
• Decree No. 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.

What is a trademark in Vietnam?

Trademarks are signs used to distinguish goods and services of different organizations and individuals. Thus, to distinguish from other intellectual property objects, the trademark is associated with the function of distinguishing the goods and services to which it is attached to create the uniqueness of the entity trading the goods and services.

New updates in Decree 65/2023/ND-CP on the trademark in Vietnam

Firstly, change the protection registration declaration form

The declaration forms, protection certificate forms, and declaration instructions specified in Appendix I of the Decree have replaced the trademark declaration forms according to Circular No. 01/2007/TT-BKHCN.

Secondly, procedures for amending and supplementing trademark registration applications

Pursuant to the provisions of Point b, Clause 1, Article 16 of the Decree, the applicant has the right to request to amend some additional information in the application such as the applicant’s country code, author’s address (if any), edit change industrial property representative.

However, according to the provisions of Article 16 of this Decree, it should be noted that:

• The applicant may exercise the right to request the above amendment in writing without submitting the Amended Declaration as before only if the time of the request is before the application is validly accepted or denied valid acceptance. or amend or supplement the application based on the notice of the National Office of Intellectual Property.
• In case the applicant changes the name, author’s nationality, name and address of the organization, the applicant must attach supporting documents. These documents are regulated similarly to the case of amending a patent protection certificate.
• In case of a change of representative, the applicant must submit a declaration of change of representative.
• The applicant must pay a fee for examination of the request for amendment and a fee for publishing amended and supplemented information according to regulations for each case.

In addition, based on Point dd, Clause 2, Article 16 of Decree No. 65/2023/ND-CP stipulates that the applicant does not have to submit a detailed explanation of the amended content in case of amending the sample of the mark or class of goods and services bearing the trademark, a description of the specific characteristics of the product bearing the geographical indication, and a map of the geographical area corresponding to the geographical indication.

Thirdly, add regulations on the withdrawal of trademark registration applications

Pursuant to Point b, Clause 2, Article 17, Decree 65 has added a regulation that the National Office of Intellectual Property must issue a notice of intention to refuse to accept the withdrawal of the application in case the request to withdraw the application does not meet the conditions for the applicant to fix the deficiency.

Fourthly, regulations separate trademark applications

According to Point a, Clause 1, Article 17 of Decree 65/2023/ND-CP, the applicant has the right to request to separate the industrial property registration application before there is a decision on formality or substantive examination. However, separating an order to create one or more new orders (separate orders) is only acceptable in the following cases:

• Separate one or part of the list of goods and services in the trademark registration application;
• When carrying out the procedure for splitting an industrial property registration application, the applicant must submit a written explanation of the object of protection requested and the content of changes compared to the original application according to Point c, Clause 1, Article 17 of the Decree.

Fifthly, supplementing international trademark registration procedures

Requirements for Madrid Applications of Vietnamese origin that have been granted an international registration number can be made directly with the International Bureau or through the National Office of Intellectual Property and regulations on documents to be submitted if choose to submit through the National Office of Intellectual Property (Article 26.3).

Sixthly, supplement the form of granting trademark registration certificates

According to Decree No. 65/2023/ND-CP, new declaration forms allow applicants to choose to receive protection certificates in paper or electronic form; Add sound trademarks and three-dimensional trademarks to the types of trademarks that can be registered.

Seventhly, procedures for amending trademark registration certificates

Pursuant to Clause 3, Article 29 of Decree 65/2023/ND-CP, supplemented with Point 20.1(b) of Circular 01/2007/TT-BKHCN on cases requiring amendments to protection documents, the request Requests to amend the trademark sample on the Trademark Registration Certificate are also accepted if the following conditions are met:

• Only removing small details is an excluded element (i.e. not individually protected).
• Does not change the distinctiveness of the mark.

The person requesting to narrow the scope of protection must pay the examination fee for the request to narrow the scope of protection, the registration fee, and the fee for publishing the decision to amend the protection title.

In essence, the provisions in Article 29 establish a legal framework to manage changes to registered trademarks and procedures for re-issuance or issuance of copies. Clear regulations on the strict conditions that must be met if the trademark owner wishes to amend the trademark form help protect the integrity and preserve the distinctiveness of the mark. While trademark owners are given the flexibility to request modifications to the trademark form, the conditions ensure that such changes stay within defined limits. This balance prevents abuse of the right to request amendments to a trademark model, while still meeting legitimate needs for amendments.

Eighthly, on conditions and procedures for transferring trademark use rights

Conditions for transfer of trademark use rights

The new decree has supplemented three content to guide the implementation of regulations in Clause 4, Article 139 of the Intellectual Property Law, as amended and supplemented in 2022 on restricting the transfer of trademark rights. Accordingly, the transfer of a trademark is not accepted if the trademark is transferred:

• Identical or confusingly similar to a trademark owned by the transferor;
• There is a part of the goods or services similar to the part of the goods and services owned by the transferor and the use of the transferred mark is likely to cause confusion as to the commercial origin of the goods or services;
• Contains signs that confuse or misunderstand consumers about the origin, quality, and value of goods and services.

Providing the above specific instructions in the Decree contributes to overcoming the shortcomings of previous regulations in handling trademark transfer applications and speeding up the application processing process at the National Office of Intellectual Property, which helps rights holders clearly understand the limitations of transferring intellectual property rights.

Procedures for transferring trademark use rights

Pursuant to Decree No. 65/2023/ND-CP stipulating that in case of registering a contract of transfer or transfer of use rights, reissue or issue a copy of the certificate of registration of a contract to transfer the right to use an object. Industrial property is applied similarly to the procedures for reissuing or granting copies of protection titles for the above subjects.

In addition, based on Clause 8, Article 29 of this Decree, also stipulates that the procedures for reissuing or issuing copies of certificates of registration of contracts for transfer of rights to use industrial property objects, which are applied similarly to the procedures for reissuing or issuing copies of protection title.

Above are some new updates in Decree 65/2023/ND-CP on the trademark in Vietnam. Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration to support you, please contact us to receive the best advice.