Patent, Trademark, Industrial Design in Vietnam, Cambodia, Laos, Myanmar

DAITIN & ASSOCIATES CO., LTD.
(IP Agent in Vietnam, Laos, Cambodia and Myanmar)
Office 1: 12A4, Ly Nam De Street, Hoan Kiem District, Hanoi, Vietnam
Office 2: 17-19, Hoang Dieu Str., District 4, Ho Chi Minh City, Vietnam
T: +844-6270 0022; F: +844-6270 0020; E: info@daitin.com.vn; W: www.daitin.com.vn
NEWSLETTER ISSUE 24.2015
TABLE OF CONTENT
o TABLE OF CONTENT............................................................................................................ 1
o ANNOUNCEMENT ON OPENNING NEW BRANCH OFFICE IN HO CHI MINH CITY ............ 2
o ANNOUNCEMENT ON LAUNCH OF NEW CORPORATE IDENTITY .................................... 2
o DIVISIONAL PATENT APPLICATION IN VIETNAM ............................................................... 3
o TRADEMARK SQUATTERS - A CASE STUDY IN VIETNAM................................................. 5
o PATENT INVALIDATION IN CAMBODIA ............................................................................... 7
o CONTACT US:....................................................................................................................... 8

ANNOUNCEMENT ON OPENNING
NEW BRANCH OFFICE IN HO CHI
MINH CITY
For better serving a growing number of local
clients, we are proud to launch a new branch
in the Ho Chi Minh City of Vietnam from June
15, 2015.
The contact detail of the new branch is as
below:
17-19, Hoang Dieu Str., District 4,
Ho Chi Minh City, Vietnam
Tel: +844-6270 0022;
Fax: +844-6270 0020;
E: info@daitin.com.vn; binh@daitin.com.vn
You are warmly welcome to visit our office at
the both biggest cities of Vietnam (Ho Chi
Minh City & Hanoi).
The former logo
ANNOUNCEMENT ON LAUNCH OF
NEW CORPORATE IDENTITY
We are also proud to announce the launch
of the new company logo as part of the
ongoing evolution of our company’s brand.
Our business has been evolving over the
last 8 years, leading to changing milestones.
We have refreshed our logo to reflect who
we are today and to symbolize our vision.
This is more than a decision. We are proud
of the service quality and reliability provided
to our clients, which are importance
elements to build the company’s prestige
and recognition. Our new logo, based on
that, retains core elements - the name of our
firm. The color is changed to dark blue,
representing the trust, reliability and loyalty.
In addition, can you find a number in the
logo? Yes, number 1. With the No1
embedded in the logo, we emphasize the
commitment of ourselves struggling for the
first position in service quality, efficiency and
reliability.
New launched Logo

DIVISIONAL PATENT APPLICATION
IN VIETNAM
Introduction
Divisional patent application is one of the
important manners for the applicant to attain
the protection of patent registration which
contains matter(s) from a parent application
in the case that the parent application may
lack unity of invention or describes more
than one invention and the applicant wants
to split the parent into the divisional patent
application(s). In Vietnam, according to the
Article 115 of Law on Intellectual Property,
the applicant could file the divisional patent
application depending on his/her own
initiative or upon the request of the NOIP and
it must satisfy the following conditions:
 be filed before the concerned state
management agency in charge of
industrial property rights notifies a
refusal or decides to grant a
protection title;
 must not expand the scope of the
subject matter already disclosed or
stated in such application and must
not change the nature of the subject
matter subject to registration stated
in the application and must ensure
the uniformity of the application.
A divisional patent application should be
considered as a new patent application
bearing a new serial number and the filing
date of the divided application shall be
determined to be the filing date or the priority
date of parent application (if any).
Fees
The applicant must pay the official fee for the
divisional patent application like an usual
patent application but is exempted from the
fee for claim for priority rights.
Procedure
Divisional application is subject to formality
examination and shall be further processed
according to the procedure not yet
completed for their parent application.
Divisional patent application shall be re-
published and applicant shall pay a
publication fee if the division is effected after
the NOIP issues notice on acceptance of
valid application for parent application.
Parent application (after being divided) shall
be further processed according to normal
procedure and applicant shall pay an
amendment and supplement fee.
All application accepted as valid shall be
published by the NOIP in the Industrial

Property Official Gazette (applicant shall pay
a fee for such publication, as usual, this fee
was paid in the filing stage in the
convenience). An invention registration
application shall be published in the
nineteenth month from the date of priority or
the filing date in case the application has no
date of priority or within two months after it is
accepted as a valid application, whichever is
later; or shall be published within two months
from the date it is accepted as a valid
application and enters the national phase.
After being published, the divisional patent
application shall be examined in the
substantive examination to examine that it is
whether or not possible to assess the
protecability of the objects stated in those
applications under the protective conditions
and corresponding protection coverage. In
general, the duration of substantive
examination is eighteen (18) months from
the publication date the application.
Required documents:
The applicant has to prepare the following
documents:
 Patent application (two copies of a
written application);
 An invention description (consist of
the section of invention description
and the invention protection
coverage) in Vietnamese;
 An invention abstract in Vietnamese
(no more than 150 words);
 The letter of consent of the applicant
for the parent application in case that
application of the divisional patent
application is not the applicant of the
parent application.
 The original Power of Attorney in
case the applicant appoints his/her
agent to file the application.
The other documents depend on the NOIP’s
request.
Comment
The registration of divisional patents in
Vietnam is similar to filing a new application
for patent. So, there are no statistics of the
number of divisional patent applications in
Vietnam and the registration process also
does not have any difficulties for applicants
at all.

TRADEMARK SQUATTERS &
REGISTRATION - A CASE STUDY IN
VIETNAM
Background
A Germany’s company (the German
company) - an eyewares, sunglasses,
protective helmets trader, manufacturer. The
German company registered trademarks
under Madrid system in 2010 that protect its
brands “AAA,” which is registered in many
countries worldwide. Among these countries
include Vietnam and the registered the mark
is registered under the goods and services
category in International classes 06-20, 35-
41.
The trademark registration in Vietnam under
Class 9 with specified goods (Spectacles;
sunglasses; spectacle frames; spectacle
cords; spectacle cases; protective helmets;
protective helmets for sports; recorded
sound storage media, recorded picture
carriers, recorded audio-visual data carriers
and recorded data carriers of all kinds;
computer hardware; video games…) and
class 38 for the related service.
In late of 2010, the German company
received a provision refusal from the
Vietnam’s trademark office because the
above application is confusingly similar to
the cited marks under National Trademark
Registration No. 12345 which was register
for the designed trademark “AAA” for the
services in class 38 specified services
(Mobile phone services and message
sending; computer aided transmission of
messages and images).
Advice
The Trademark Examiner in-charge
informed the Germany company that the
registered trademark application covered
the goods of class 09 confusingly related to
the services in class 38. Thus, the
Trademark Examiner propose refusal of the
application in class 09, despite the fact that
other good items of the application are
significantly different. .
The German’s company seek the assistance
from a local Law firm in Vietnam to file an
opposition to the refusal. The opposition is
basing on the following ground
Limiting the related goods while keep such
other unrelated goods as spectacles;
cords; spectacle cases; protective helmets,
protective helmets for sports, video games in
Class 09 under International Registration.

After limitation, the mark “AAA” under
International Registration is NOT
confusingly similar to the marks under
Registration 123456 in Vietnam
The two mark are considered as identical
only when they are applied for similar
goods/services or similar marks in respect of
the same kind of goods/services.
Furthermore, goods/services are considered
as similar if they are similar in nature
(composition, component, appearance etc),
in their functions (purposes) and the way
their functions are performed, or they have a
related nature (constituted by a same
material, one is part, component of the
other), use of other is needed, normally in
use one with other, same way to their
functions are performed or closely related by
their trade channels (sold in the same
shops).
Outcome
The Trademark Examiner was convinced
that the good items “Spectacles;
cords; spectacle cases; protective helmets;
protective helmets for sports; video games”
and service in class 38 have NO natural
relationship in nature (composition,
component, appearance etc), in their
functions (purposes) and the way their
functions are performed as well as same
way to their functions are performed or
closely related by their trade channels (sold
in the same shops).
The Trademark Certificate was issued for
the German’s company
Lessons Learned
 The specified goods/services play a
crucial role in determination of the
similarity during the trademark
examination in Vietnam;
 Even when the two similar mark in the
same class, but the goods/services are
different, they still can be registered;
 All the related classes should be
included in the trademark search
conduction, not only the intended class
for registration;
 The trademark examiner’s examination
criteria varies in each country and is
subjective. Registration of the mark in
the plural of countries around the word
can be considered as a good evidence
in the TM examination in Vietnam;
 Local agent and experience attorney
significantly contribute to the success of
the case.

PATENT INVALIDATION IN
CAMBODIA
Basing ground
The patent invalidation was mentioned in
The Law on the Patents, Utility Model
Certificates and Industrial Designs retains a
separated Section for Patent invalidation, in
which:
Article 65.
Any interested person may request the
competent Court to invalidate a patent.
Article 66.
The competent Court shall invalidate the
patent if the person requesting the
invalidation proves that any of the
requirements of the 2nd and 3rd paragraph
of Article 3, Articles 4 to 9 and Articles 18 to
20 of this Law is not fulfilled or if the owner
of the patent is not the inventor or his
successor in title.
Article 67.
Any invalidated patent, or claim or part of a
claim, shall be regarded as null and void
from the date of the grant of the patent.
Article 68.
The final decision of the competent Court
shall be notified to the Registrar who shall
record it and publish a reference thereto as
soon as possible.
Fact & Figure
As we may know that the technology and
technical background of Cambodia are not
very high. The number of patents/patent
applications granted/filed each year is not
much. Therefore, an actual patent
invalidation procedure has not been well-
established. But, the patent-owner can take
the invalidation action for the patent filed in
Cambodia basing on the above regulations.
The quotation for filing a patent invalidation
in Cambodia will range 800 – 1.800USD
basing on complexity of each case.
Lastly, Cambodia is a member of Paris
Convention and for granting patent, the
invention have to satisfy all the common
criteria on the patent. All the evidence can
be used and considered by the court during
the invalidation procedure.

CONTACT US:
Please feel free to let us have your comment
or other requests at:
Hanoi Office:
No. 12A4, Ly Nam De Str., Hoan Kiem,
Hanoi, Vietnam
Tel: +84-4-6270 0022;
Fax: +84-4-6270 0020
Email: info@daitin.com.vn
Website: www.daitin.com.vn
Ho Chi Minh City Office:
17-19, Hoang Dieu Str., District 4,
Ho Chi Minh City, Vietnam
Tel: +84-4-6270 0022;
Fax: +84-4-6270 0020
Mob. +84-9-6337-4499
Email: info@daitin.com.vn
Website: www.daitin.com.vn

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