Vietnam: Guidelines for inspecting the conformity to the first-to-file rule of trademarks

According to Article 90 of the  Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property of Vietnam, the first-to-file principle is to protect the interests of applicants filing applications earlier than other subjects for the same subject matter registered for protection of industrial property rights.

Inspecting the conformity to the first-to-file rule of trademarks, which is one of the contents of examination of trademark registration applications in the field of industrial property, is amended in Clause 11 Article 1 of the Circular No. 05/2013/TT-BKHCN of the Ministry of Science and Technology of Vietnam, specifically as follows:

For the industrial design applications that satisfy the protection conditions, before issuing the notice of intention to grant the Certificate of trademark registration prescribed in Point 15.7.a (iii) of Circular No. 01/2007/TT-BKHCN, National Office of Intellectual Property shall inspect the conformity to the first-to-file rule as prescribed in Clause 2 and Clause 3 Article 90 of the Law on Intellectual property, in accordance with the following provisions:

- To inspect the conformity to the first-to-file rule, it is required to check all applications for trademark registration received by the National Office of Intellectual Property (up to the date of inspection) that have earlier filing dates or priority dates (if the application is entitled to priority) than that of the examined application.

- The information collection is to identify the case in which many applications (including the examined application) register the same or confusingly similar trademark of the same or similar products or services, or many applications made by the same applicant register identical trademark of identical products or services; and identify the earliest filing date of priority date.

- If there are many applications falling in the case prescribed in Point 39.10.b above, the Certificate of trademark registration is only granted to the trademark is the application that has the earliest filing date or priority date among the patentable applications.

- Among the applications prescribed in Point 39.10.b above, if there are many applications that have the same filing date of priority date, the Certificate of trademark registration shall be granted to the trademark of only one application among them under the agreement of all applicants; if an agreement cannot be reached, all applications shall be rejected.

View more details at Circular No. 05/2013/TT-BKHCN of the Ministry of Science and Technology of Vietnam effective from April 06, 2013 and Circular No. 01/2007/TT-BKHCN.

Thu Ba

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