By Linh Nguyen and Ngan Pham
The Vietnamese National Assembly finally ratified the Amended IP Law on 16 June 2022. The Amended IP Law will take effect from 1 January 2023, except for certain provisions on the protection of sound marks and protection of test data for agrochemicals, which come into effect respectively on 14 January 2022 and 14 January 2024.
On the basis of Vietnam IP Law 2005, the Amended IP Law creates significant changes covering a wider scope compared to the previous two Amendments in 2009 and 2019, with over 100 articles being amended and supplemented. Here are several main points of the Amended IP Law that stakeholders, especially IP owners, may have concerns about:
1. Establishment of IPRs
The Amended IP Law has simplified and accelerated the administrative procedures for industrial property rights establishment and copyright registration in regard to term, compulsory documentation, and requirements. Notable general amendments include:
- providing an online system for registration of copyright and related rights (Article 50.1)
- restricting term for opposition to accelerate the examination process (Article 112a), instead of allowing third party oppositions at any time before the granting dateThe term is limited to a specific number of months after the publication of the application and before the granting date thereof respectively:
- 9 months for patent application
- 4 months for industrial design application
- 5 months for trademark application
- 3 months for geographical indication application
- supplementing provision on procedures of complaint settlement (Article 119a) and additional grounds for terminating, invalidating or cancelling a granted certificate (Articles 95, 96)
- adding provisions to settle conflict between IPRs, including design, trademark, name of plant variety, and copyright (Article 74.2)
- clarifying unfair competition activities between domain names with trademark, trade name and geographical indication (Article 130.1.d)
- The new provision limits and clarifies the scope of security control compared to the current Law, particularly such security control to inventions belonging to technical fields having an impact on defence and security created in Vietnam and under the registration rights of Vietnamese citizens residing in Vietnam or organizations established under Vietnamese jurisdiction (Article 89a);
- With respect to a pharmaceutical product that is subject to a patent, to compensate the patent owner for unreasonable curtailment of the effective usage of patent term as a result of the marketing approval process. The patent owner does not need to pay usage fees for the granted patent during this time (Article 131a).
- The requirements on the design specification (Article 103) are simplified to facilitate design registration and to harmonize with the Hague Agreement;
- The request for late publication of design application is allowable but the deferment is not later than 7 months from the filing date (Article 110).
- Sound marks became the very first invisible sign added to the list of protectable marks in Vietnam under the Amended IP Law (Article 72.1);
- Bad faith officially becomes one of the main grounds for refusal of the request for trademark protection (Article 117.1b). Given so, a trademark may be challenged by a third party due to “bad faith” through an opposition or a cancellation procedure;
- The action of requesting the Vietnam IP Office to suspend the examination of a rejected trademark while waiting for the results of the invalidation or cancellation of a cited mark is recognized by Law for the first time (Article 117.3b). Thus, instead of pursuing the case via an appeal procedure which is costly and time-consuming, the applicant may achieve a positive outcome more easily and quickly, perhaps within several months.
- Clarifying the definition of an author and co-author(s), in which co-authors are people who directly create the work, provided that their contributions are intentionally combined into a complete work (Article 12.a);
- Supplementing obligations on moral rights and economic rights, notably the provision of allowing an author to transfer the right to name a work to an individual or organization who receives the economic rights (Article 19.1);
- Amending provisions on the limits and exemptions of copyrights and related rights, accordingly adding one more case of using published works where permission is not required but the payment of royalties and/or remunerations and the notification of the origin of the work are required (Article 26.1b);
2. Enforcement of IPRs
The enforcement of IPRs are supported and strengthened by the new Amended IP Laws in view of the below notable provisions:
- IP assessment is adopted officially to be one of the sources of evidence for competent authorities when handling and settling IP disputes (Article 201);
- The expansion of authority to customs, as one of the IPR enforcement authorities, to proactively apply control measures at the border when finding solid grounds on counterfeits in the course of inspection, supervision and control of imported/exported goods (Articles 216).
If you are seeking assistance regarding industrial property establishment and enforcement in Vietnam, please do not hesitate to reach out to us at firstname.lastname@example.org!