Circular No. 05/2013/TT-BKHCN amending and supplementing certain Articles of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No. 103/2006/NĐ-CP detailing certain provisions of the Intellectual Property Law on industrial property, which has been amended and supplemented by Circulars No. 13/2010/TT-BKHCN dated July 30, 2010 and No. 18/2011/TT-BKHCN dated July 22, 2011.

CIRCULAR

Amending and supplementing certain provisions of Circular No. 01/2007/TT-BKHCNdated February 14, 2007 guiding the implementation of Decree No. 103/2006/NĐ-CPdetailing certain provisions of the Intellectual Property Law on industrial property, amended and supplemented by Circular No. 13/2010/TT-BKHCNdated July 30, 2010 and Circular No. 18/2011/TT-BKHCN dated July 22, 2011

Pursuant to Decree No. 28/2008/NĐ-CP dated March 14, 2008 of the Government stipulating the functions, tasks, powers, and organizational structure of the Ministry of Science and Technology;

Pursuant to the Intellectual Property Law dated November 29, 2005 and Law No. 36/2009/QH12 dated June 19, 2009 amending and supplementing certain provisions of the Intellectual Property Law dated November 29, 2005 (hereinafter referred to as the "Intellectual Property Law");

Pursuant to Decree No. 103/2006/NĐ-CP dated September 22, 2006 of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law on industrial property and Decree No. 122/2010/NĐ-CP dated December 31, 2010 amending and supplementing certain provisions of Decree No. 103/2006/NĐ-CP;

The Minister of Science and Technology amends and supplements certain provisions of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No. 103/2006/NĐ-CP detailing certain provisions of the Intellectual Property Law on industrial property, amended and supplemented by Circular No. 13/2010/TT-BKHCN dated July 30, 2010 and Circular No. 18/2011/TT-BKHCN dated July 22, 2011 (hereinafter referred to as "Circular No. 01/2007/TT-BKHCN") as follows:

Article 1. Amending and supplementing certain provisions of Circular No. 01/2007/TT-BKHCN

1. Amending Point 1.1 of Circular No. 01/2007/TT-BKHCN as follows:

"1.1 Industrial property rights arising or established based on the grounds provided for in Clause 3, Article 6 of the Intellectual Property Law, Clauses 1, 2, 3, and 4, Article 6 of Decree No. 103/2006/NĐ-CP dated September 22, 2006 of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law on industrial property, amended and supplemented by Decree No. 122/2010/NĐ-CP and as specifically provided herein."

2. Amending Point 7.1.b (iii) and supplementing Point 7.1.b (iv) of Circular No. 01/2007/TT-BKHCN as follows:

"(iii) Map of the geographical area (if the registered trademark is a certification mark for the geographical origin of a product, or a collective mark or certification mark containing a place name or other indication of the geographical origin of a local specialty);

(iv) Document of the People's Committee of the province or centrally governed city allowing registration of the trademark according to the provisions at Point 37.7.a of this Circular (if the registered trademark is a collective mark or certification mark containing a place name or other indication of the geographical origin of a local specialty)."

3. Amending and supplementing Point 13.8 of Circular No. 01/2007/TT-BKHCN as follows:

"13.8 Time limit for formality examination of the application

a) The time limit for formality examination of the application is one month from the date of filing as stipulated in Clause 1, Article 119 of the Intellectual Property Law.

b) In cases where the National Office of Intellectual Property issues a notice as provided for in Point 13.6.a of this Circular, the period for the applicant to respond to the notice shall not be counted towards the time limit for formality examination. This period means:

(i) The period from the date of issuance of the notice to the date the applicant responds to the notice; or

(ii) The deadline set in the notice (including any extension thereof), in cases where the applicant does not respond to the notice.

c) In cases where the applicant voluntarily requests amendments or supplements to the application, or responds to the notice issued by the National Office of Intellectual Property as provided for in Point 13.6.a of this Circular, the time limit for formality examination may be extended by ten days as stipulated in Clause 4, Article 119 of the Intellectual Property Law.

d) Before the end of the time limit specified in Points 13.8.a, 13.8.b, or 13.8.c above, the National Office of Intellectual Property must complete the formality examination of the application and notify the applicant of the result as provided for in Points 13.6 or 13.7 of this Circular."

4. Amending Point 15.6.d, supplementing Points 15.6.đ and 15.6.e of Circular No. 01/2007/TT-BKHCN as follows:

"d) Prior to issuing a notice of intention to grant a protection certificate as provided for in Point 15.7.a (iii) of this Circular, the National Office of Intellectual Property shall check the first-to-file principle as provided for in Points 25.7, 35.9, and 39.10 of this Circular.

đ) The notice provided for in Point 15.7.a (iii) of this Circular shall be implemented for the following applications:

(i) Applications that do not fall under the cases stipulated in Article 90 of the Intellectual Property Law;

(ii) Applications with the earliest filing date or priority date among applications for invention patents as stipulated in Clause 1, Article 90 of the Intellectual Property Law;

(iii) Applications with the earliest filing date or priority date among applications for utility models as stipulated in Clause 1, Article 90 of the Intellectual Property Law;

(iv) Applications with the earliest filing date or priority date among applications for trademarks as stipulated in Clause 2, Article 90 of the Intellectual Property Law;

(v) Applications pursuant to the agreement stipulated in Clause 3, Article 90 of the Intellectual Property Law.

e) Applications that do not fall under the cases stipulated in Point 15.6.đ of this Circular shall be handled as follows:

(i) Refused protection certificates because they do not meet the first-to-file principle, if the application has the earliest filing date or priority date granted a protection certificate; or

(ii) Considered to have the earliest filing date or priority date and processed as provided for in Point 15.6.đ above, if all applications with earlier filing dates or priority dates are refused protection certificates or withdrawn, or deemed withdrawn."

5. Amending and supplementing Point 15.7.a (iii) of Circular No. 01/2007/TT-BKHCN as follows:

"(iii) If the subject matter described in the application meets the conditions for protection or the applicant has corrected deficiencies to the required standard or provided a convincing explanation within the time limits stipulated in Points 15.7.a (i) and (ii) above, the National Office of Intellectual Property shall issue a notice of the results of the substantive examination of the application, including:"

- For applications falling under the cases prescribed in point 15.6.đ of this Circular: Notify the intention to issue the certificate of protection and set a deadline of one month from the date of notification for the applicant to pay the registration fee for the certificate of protection, the publication fee for the decision on issuance of the certificate of protection, the registration fee, and the first-year maintenance fee for patents. The applicant may request an extension of the above period in accordance with point 9.2 of this Circular.

- For applications not falling under the cases prescribed in point 15.6.đ of this Circular: Notify the continued processing of the application in accordance with point 15.6.e of this Circular.”

6. Amend and supplement point 15.8 of Circular No. 01/2007/TT-BKHCN as follows:

“15.8 Time limit for examining the content of the application

a) The time limit for examining the content of the application shall be carried out in accordance with Clause 2 of Article 119 of the Intellectual Property Law.

b) In case the National Office of Intellectual Property issues notifications as prescribed in point 15.7.a (i) and (ii) of this Circular, the period for the applicant to respond to the notification shall not be counted towards the examination time limit. This period means:

(i) The period from the date of issuance of the notice to the date the applicant responds to the notice; or

(ii) The deadline set in the notice (including any extension thereof), in cases where the applicant does not respond to the notice.

c) In case the applicant voluntarily requests amendments or supplements to the application, or responds to the notification issued by the National Office of Intellectual Property as prescribed in point 15.7.a (i) and (ii) of this Circular, the time limit for examining the content of the application shall be extended accordingly with the time limit for processing the amendment or supplement request or the explanation provided by the applicant in accordance with Clause 4 of Article 119 of the Intellectual Property Law as follows:

(i) For inventions, not exceeding six months;

(ii) For trademarks, not exceeding three months;

(iii) For industrial designs, not exceeding two months and ten days;

(iv) For geographical indications, not exceeding two months.”

7. Amend and supplement point 25.7 of Circular No. 01/2007/TT-BKHCN as follows:

“25.7 Examination of the principle of priority filing for invention patent applications

For invention patent applications that have been concluded as meeting the conditions for protection, before issuing the notification of the intention to grant the Patent Certificate or Utility Model Certificate as prescribed in point 15.7.a (iii) of this Circular, the National Office of Intellectual Property shall examine to ensure compliance with the principle of priority filing as prescribed in Clause 1 and Clause 3 of Article 90 of the Intellectual Property Law as follows:

a) To examine the principle of priority filing, at least the following mandatory sources of information must be searched (but not limited to these minimum sources): All invention patent applications received by the National Office of Intellectual Property up to the time of examination, having the same Classification Index as the object described in the application being examined - up to the third-level Classification Index (third-level code), and having an earlier filing date or priority date than the filing date or priority date of the application being examined (if the application claims priority rights) and which have not yet been published or have a later publication date than the filing date or priority date (if the application claims priority rights) of the application being examined.

b) The search is to identify multiple applications (including the application being examined) registering similar or equivalent inventions and determine the application with the earliest filing date or priority date.

c) If there are multiple applications as prescribed in point 25.1.b above, the Patent Certificate or Utility Model Certificate can only be granted to the invention in the valid application with the earliest filing date or priority date among those applications meeting the conditions for obtaining a certificate of protection.

d) Among the applications as prescribed in point 25.7.b above, if there are multiple applications with the same filing date or priority date, the Patent Certificate or Utility Model Certificate can only be granted to the invention in one single application among those applications according to the agreement of all applicants; if no agreement is reached, all corresponding objects of those applications will be refused issuance of a certificate of protection.”

8. Amend and supplement point 35.9 of Circular No. 01/2007/TT-BKHCN as follows:

“35.9 Examination of the principle of priority filing for industrial design applications

For industrial design applications that have been concluded as meeting the conditions for protection, before issuing the notification of the intention to grant the Industrial Design Certificate as prescribed in point 15.7.a (iii) of this Circular, the National Office of Intellectual Property shall examine to ensure compliance with the principle of priority filing as prescribed in Clause 1 and Clause 3 of Article 90 of the Intellectual Property Law as follows:

a) To examine the principle of priority filing, the information must be searched in the mandatory source prescribed in point 35.4.b (iv) of this Circular.

b) The search is to identify multiple applications (including the application being examined) registering industrial designs of parts of products and/or products that are similar or not significantly different from each other and determine the application with the earliest filing date or priority date.

c) If there are multiple applications as prescribed in point 35.9.b above, the Industrial Design Certificate can only be granted to the industrial design in the valid application with the earliest filing date or priority date among those applications meeting the conditions for obtaining a certificate of protection.

d) Among the applications as prescribed in point 35.9.b, if there are multiple applications with the same filing date or priority date, the Industrial Design Certificate can only be granted to the industrial design in one single application among those applications according to the agreement of all applicants; if no agreement is reached, all corresponding objects of those applications will be refused issuance of a certificate of protection.”

9. Amend and supplement point 37.7 of Circular No. 01/2007/TT-BKHCN as follows:

“37.7 Requirements for permission documents for registering collective marks or certification marks containing place names or other signs indicating the geographical origin of local specialties of Vietnam

a) Permission documents for registering collective marks or certification marks containing place names or other signs indicating the geographical origin of local specialties shall be issued by the competent authority as follows:

(i) The People's Committee of the province or centrally governed city where the geographic area corresponds to the name or other indication of the geographical origin of the local specialty (in the case where the geographic area belongs to one locality);

(ii) All People's Committees of the provinces or centrally governed cities where the geographic area corresponds to the name or other indication of the geographical origin of the local specialty (in the case where the geographic area belongs to multiple localities).

b) The map of the geographic area corresponding to the name or other indication of the geographical origin of the local specialty must fully reflect information sufficient to accurately identify that geographic region and must be confirmed by the competent authority mentioned in point 37.7.a above.”

10. Supplement point 37.8 of Circular No. 01/2007/TT-BKHCN as follows:

“37.8 Criteria for determining the name or other indication of the geographical origin of a product

a) An indication of the geographical origin of a product is a sign used for a product of a locality and has the meaning of indicating the geographical origin of the product (indicating that the product originates from that locality).

An indication of the geographical origin of a product is usually a name, but it can also be a symbol representing the locality (images of typical objects of the locality, such as symbols, maps, flags, emblems, scenic spots, special constructions of the locality...), or it may be any other sign.

A name can be the current name or historical name, the official name or folk name of a geographic area (defined according to administrative boundaries or geographic methods).

b) A name or symbol representing the locality used for a common product (not a specialty) may or may not have the meaning of indicating the geographical origin of the product, depending on the product and the actual use of the name or symbol representing the locality.

c) A name or symbol representing the locality has the meaning of indicating the geographical origin of the product in the following cases:

(i) Used for the specialty of the locality (a special product with fame due to certain characteristics produced in the locality);

(ii) Used for crops, livestock, and products processed from crops and livestock of the locality;

(iii) Used for natural resource extraction products (coal, iron, steel, aluminum, cement, stone, salt, wood...) in the locality;

(iv) Used for products belonging to industries developed in the locality;

(v) Other cases determined based on the product and the actual use of the name or symbol representing the locality for the product.

d) A name or symbol representing the locality does not have the meaning of indicating the geographical origin of the product in the following cases:

(i) Has been used with the function of a regular trademark and widely recognized, i.e., achieving a commercial origin indication (distinctiveness) and losing its descriptive meaning of geographical origin, for example: Hanoi beer, Saigon beer;

(ii) The corresponding locality cannot be the place where the product is produced, for example: Arctic tobacco...

Names or symbols representing the locality that do not have the meaning of indicating the geographical origin of the product can be protected as regular trademarks without the need for permission from the local authorities.

đ) Common knowledge geographic names or symbols representing the locality known to many people (for example: names of provinces, cities, scenic spots) used for common products of the locality (including products that the locality has a business advantage but lacks fame or quality characteristics), used by many business entities in the locality for their goods and services to indicate the production location (but do not meet the criteria of points (c) and (d) above), will not be protected.

However, such names or symbols representing the locality can still be used as a secondary element forming the regular trademark of organizations or individuals in the corresponding locality, provided that the name is excluded from the scope of protection (not protected separately) and does not require permission from the local authorities.”

11. Amend and supplement point 39.10 of Circular No. 01/2007/TT-BKHCN as follows:

“39.10 Examination of the principle of priority filing for trademarks

For trademark registration applications that have been concluded to meet the conditions for protection, before issuing a notice of intent to grant the Certificate of Trademark Registration pursuant to point 15.7.a (iii) of this Circular, the National Office of Intellectual Property shall conduct an examination to ensure compliance with the principle of priority filing stipulated in Clause 2 and Clause 3 of Article 90 of the Intellectual Property Law as follows:

a) To examine the principle of priority filing, a search must be conducted of all trademark registration applications received by the National Office of Intellectual Property (up to the date of examination) that have an earlier filing date or priority date (if the application claims priority) than the filing date or priority date (if the application claims priority) of the application under examination.

b) The search is to identify cases where there are multiple applications (including the application under examination) filed by different persons for identical or similar trademarks that could cause confusion for identical or similar goods or services, or multiple applications by the same person for identical trademarks for identical goods or services; and to determine the application with the earliest filing date or priority date.

c) If there are multiple applications falling within the category described in point 39.10.b above, the Certificate of Trademark Registration shall only be granted to the trademark in the valid application with the earliest filing date or priority date among those meeting the conditions for issuance of the certificate of protection.

d) Among the applications falling within the category described in point 39.10.b above, if there are multiple applications with the same filing date or priority date, the Certificate of Trademark Registration shall only be granted to the trademark in one of those applications agreed upon by all applicants; if no agreement can be reached, all corresponding objects of those applications shall be refused issuance of the certificate of protection.”

The Director of the Ministry’s Office, the Inspector General of the Ministry, Heads of Departments, Directors of the Vietnam Maritime Administration, Directors of the Vietnam Inland Waterway Administration, Director of the Department of Transport of Danang City, Director of Da Nang Marine Port Office, Heads of agencies, organizations, and individuals concerned are responsible for implementing this Circular./.

This Circular takes effect 45 days from the date of issuance./.