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Amendments to Circular No. 01/2007/TT-BKHCN in relation to procedures for establishment of industrial property rights

After 5 years of implementation and having amended twice, Circular No.01/2007/TT-BKHCN (“Circular 01/2007”), which guides the implementation of the Government’s Decree No. 103/2006/NĐ-CP detailing and guiding implementation of a number of articles of the Law on Intellectual Property regarding Industrial Property,has been once more amended and supplemented by Circular No. 05/2013/TT-BKHCN issued by Ministry of Science and Technology on 20th February 2013 (“Circular 05/2013”). The newly issued Circular came into effect as of April 06, 2013.
Regarding procedures for establishment of industrial property rights, some of the most remarkable amendments and supplements are as follows:
  1. As to the time limit for formality examination of applications:
Pursuant to Article 13.8.b) of the old Circular 01/2007, in case applicant files amendment or supplement of documents, whether on his/her own initiative or upon request of the NOIP, the time limit for formality examination may be prolonged for a period of time “equal to the time for amendment or supplementation of documents, but this article does not provide a detailed method of calculating the time for such  amendment, or supplementation of documents. Circular 05/2013 clarifies  method of calculating the prolonged time limit for  amendment or supplementation of documents in 3 different cases, as follow:
(i)             where the applicant amends  or supplements documents on his/her own initiative, the time limit shall be prolonged for another 10 days;
(ii)            where the NOIP requests the applicant to amend or supplement documents and the applicant responds to such notification, the time limit shall be prolonged for a period of time from the date of the NOIP’s notification until the date on which the applicant’s response is submitted plus 10 days;
(iii)           where the NOIP requests the applicant to amend or supplement documents but the applicant does not respond to such notification, the prolonged time limit shall be in accordance with the deadline stated in the NOIP’s notification.
  1. As to the examination of the first-to-file  principle:
Concerning patents, previously Article 25.7 of Circular 01/2007 provides that the NOIP shall examine the first-to-file principle by conducting search in order to “find application(s) for registration of identical inventions and identify the application with the earliest filing date or priority date”. Circular 05/2013 has replaced the notion “application(s) for registration of the same invention by “applications (including those pending for examination) for registration of identical or equivalent inventions”. Regrettably, the new Circular does not provide a definition of equivalent invention.It is worth reminding that although the concept of “equivalent inventions”was introduced for the first time when the IP Law was amended in 2009, it has neither been detailed in any legal documents nor put into practice. However, with this amendment to Circular 05/2013, we can hope that the NOIP’s examination practice in the time to come may set a precedent for a specification of such important concept.
Circular 05/2013 also amends Article 35.9 on the first-to-file principle examination of applications for registration of industrial designs. Nonetheless, these amendments are merely the rewording and rewriting of the old Article 35.9 to make it more accurate, easier to understand, and similar in form to the above Article 25.7 with regard to patent. Specifically, article  35.9.b) is amended to be read as follow: “The purpose of the search is to find cases where there are more than one application (including those pending for examination) for registration of industrial design of parts of products and/or products that are identical to or not essentially different from each other; and identify the application with the earliest filing date or priority date”
Similarly, to the old Article 39.10 of Circular 01/2007 on first-to-file principle examination of trademark application has been amended and supplemented with more specific and detailed provisions. In fact, these supplements are only the codification of the present practice of the NOIP. Specifically, the newly supplemented article 39.10.b) stipulates that “The purpose of the search is to find cases where there are more than one application (including those pending for examination), in the name of different applicants, for registration of identical or confusingly similar trademarks for identical or similar good, services, or cases where there are more than one application, in the name of the same applicant, for registration of identical trademarks for identical good, services; and identify the application with the earliest filing date or priority date.”
  1. As to the procedure for registration of collective marks, certification marks containing geographical names or other signs indicating geographical origin of Vietnam’s local specialty:
Previously, pursuant to article 37.7 of Circular 01/2007, to be qualified for registration of “certification mark containing signs indicating a geographical origin”, the applicant has to submit a permit issued by a “local competent authority”, but this article did not specify which local authority is competent for issuing such permit. The new Circular has clarified this point by determining that the local authority competent to issue permit “for registration of collective marks, certification marks containing geographical names or other signs indicating geographical origin for Vietnam’s local specialty” is the relevant “People’s Committee of province or city under direct management of the Government”.
In addition, pursuant to the new Circular 05/2013, the documents required for registration of collective marks, certification marks containing geographical names or other signs indicating geographical origin include “map of geographical area” (in replacement for “map defining territory” of the old Circular 01/2007). Moreover, this “map of geographical area” must contain sufficient information so that the relevant geographical area can be exactly defined. Further, it must be certified by the People’s Committee of the relevant Province or City under direct management of the Government.
Last but not least, Circular 05/2013 has supplemented a new Article providing for the first time criteria for determining geographical names, other signs indicating geographical origin of product (Article 37.8 which did not exist in Circular 01/2007). Pursuant to this newly supplemented provision, signs indicating geographical origin of product are “signs used for local products, and its meaning indicates geographical origin of the product (indicating such product is originating from the locality). The above said definition is accompanied with the explanations and examples giving relatively specific understanding of the cases where signs are qualified or disqualified for protection.