The new key points of Decree 65/2023/ND-CP on Trademark

After a long period of waiting, Decree 65/2023/ND-CP (hereinafter referred to as Decree 65) was issued on August 23, 2023. This is a detailed document specifying certain provisions and measures for the implementation of the Intellectual Property Law (amended in 2022), replacing the old regulations guiding the enforcement of industrial property rights that have existed since the first Intellectual Property Law was enacted in 2005.

This decree has replaced the entire Decree 103/2006/ND-CP guiding the Intellectual Property Law (amended and supplemented by Decree 122/2010/ND-CP), a part of Decree 105/2006/ND-CP guiding the Intellectual Property Law on the protection of intellectual property rights and state management of intellectual property (amended and supplemented by Decree 119/2010/ND-CP).

In particular, the decree also includes some content on the procedures for establishing protection of industrial property rights as previously guided in Circular 01/2007/TT-BKHCN and its amendments. Therefore, it can be said that Decree 65 is the most comprehensive and extensive guiding document for the Intellectual Property Law to date.

Regarding the provisions related to Trademarks, Decree 65 has some new and important updates as follows:

1. Application form

The application form for trademark registration has been renewed and integrated in the Appendix of the Decree. In particular, the application form for trademark registration has added one type of protected trademark called “sound trademark” to comply with the provisions of the amended Intellectual Property Law in 2022, as well as to meet the mandatory requirements under the CPTPP Agreement that Vietnam has participated in.

2. Protection certificate

The protection certificate will be issued in electronic or paper form, and the Intellectual Property Office will only issue a paper certificate in cases where the applicant requests a paper certificate in the Registration Application (by selecting the option for a paper certificate in the Registration Application). If the applicant does not make this selection in the application form, the protection certificate will be automatically issued in electronic form.

3. Modifications and additions to the trademark registration application

These changes include:

♦ The applicant can modify and supplement information about the “country code” of the applicant and the “information of the industrial property owner’s representative

♦ The applicant can make these modifications and additions in writing without submitting an amendment declaration if it is a proactive modification before the application is accepted as valid/rejected/amended. This is based on the notification from the Intellectual Property Office;

♦ The applicant must submit a declaration of change of representative in case of a change in representation;

♦ The applicant does not need to submit a detailed description of the modified content in the case of modifying the trademark design, the list of goods/services bearing the trademark, the description of the specific characteristics of the product bearing the geographical indication, or the geographical map corresponding to the geographical indication (point d, Clause 2, Article 16 of Decree 65/2023);

♦ The applicant must submit: (i) the fee for the amendment assessment request, and (ii) the fee for publishing the amendment information, according to the regulations for each case.

4. Splitting of a trademark application

The splitting can be requested before a decision on form or content assessment is made. However, the splitting of the trademark application into one or more new trademark applications (split applications) is only accepted if:

♦ It involves splitting all or part of the list of goods/services in the trademark registration application.

♦ The applicant must submit a description of the subject matter to be protected and the changes compared to the original application.

5. Withdrawal of trademark application

If the withdrawal of a trademark application does not meet the conditions, the Intellectual Property Office will issue a Notice of Intended Refusal against the withdrawal of the application and provide the applicant with a time frame for rectification.

6. Modifying the trademark sample on the Certificate of Trademark Registration

Such modification is accepted if it meets the conditions: (i) only removing minor details that are excluded elements (not separately protected) and (ii) not changing the distinctiveness of the trademark.

7. Conditions for restricting the trademark assignment

The conditions for restricting the trademark assignment are specified. Accordingly, the transfer of rights to a trademark is considered to cause confusion about the characteristics and origin of goods and services bearing the trademark if:

♦ The transferred trademark is identical/similar to the trademark owned by the transferor;

♦ Some goods or services bearing the transferred trademark are similar to the goods or services owned by the transferor, and the use of the transferred trademark is likely to cause confusion about the commercial origin of the goods and services;

♦ The transferred trademark contains signs that confuse/mislead consumers about the origin, quality, value, etc. of the goods and services within the scope of the transfer.

8. Procedures for reissuing or granting a duplicate of the Certificate of Trademark Registration

Procedures for reissuing or granting a duplicate of the Certificate of Trademark Licensing Agreement are applied similarly to the procedures for reissuing or granting a duplicate of the Certificate of Trademark Registration.

9. Requirements for registering an International Trademark

The requirements are supplemented as follows:

♦ Requirements for Vietnamese-origin Madrid applications can be directly implemented with the International Office or through the Intellectual Property Office of Vietnam. If choosing to submit through the Intellectual Property Office of Vietnam, it must comply with the specified documents.

♦ The regulations clearly state that objections/opinions of third parties regarding Madrid applications designated for Vietnam can be made from the date the International Office announces the application in the Official Gazette until the date of the decision to accept protection, or the end of 12 months from the date the International Office notifies the application with the designation of Vietnam, whichever comes earlier. At the same time, it is determined that the opinion of the third party is considered as a source of reference information during the examination process of the application.

By Nguyen Trong Tu

Deputy General Director