Vietnam's IP Law (Law No. 50/2005QH11, often called as IP Law 2005) was passed by the National Assembly in November 2005, came into effect on July 1, 2016. Afterward, in the process of negotiation to join the World Trade Organization (WTO) and meet the requirements of the Agreement on Trade Aspects of Intellectual Property (TRIPS) the law was amended in 2009 (often called as the amended IP Law 2009). On 14/6/2019, the law was amended and supplemented for the second time to comply with the provisions regarding the protection of intellectual property rights of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) that Vietnam and 10 other countries, namely Canada, Australia, Brunei, Chile, Japan, Malaysia, Mexico, New Zealand, Peru and Singapore has signed and has just taken effect in Vietnam since January 14, 2019. The amended IP 2019 will be effective from November 1, 2019.
In fact, the 2005 IP Law also contains a provision on the fulfillment of intellectual property protection obligations under international agreements to which Vietnam is a member, which reads "3. Where the provisions of the international treaties to which the Socialist Republic of Vietnam is party contravene the provisions of this Law, the former shall be applied”(Article 5. Application of Laws). However, having to refer to the international provisions, along with necessary annotations, some times not only causes inconveniences, but may also lead to misunderstanding and inconsistent enforcement among concerned authorities. Therefore, both lawmakers and those who are governed by the law want it to be in line with international standards and as detailed as possible to facilitate an effective execution.
Below are detailed amendments and supplements in the amended IP Law 2019.
Regarding novelty of invention and grace period applicable
To amend Clause 3 and supplement Clause 4 of Article 60 as follows:
Article 60. Novelty of inventions
"3. An invention shall not be considered as lacking of novelty if it is disclosed by the person entitled to registration as stipulated in Article 86 of this Law or by a person that obtained the information directly or indirectly from such entitled-to-registration person provided that the patent application is filed within twelve months from the date of disclosure.”
4. The provision of clause 3 of this Article shall not be applied to a case where an invention is disclosed in applications for, or registrations of, intellectual property rights made available to the public by the intellectual property agency, unless erroneously published or unless the application was filed without the consent of the person entitled to registration as stipulated in Article 86 of this Law, by a third person who obtained the information directly or indirectly from such entitled-to- registration person.
Previously, the grace period for public disclosure was much shorter, just six months from the date of disclosure.
Geographical Indications (GIs)
Regarding generic names [of goods] ineligible for protection as Gis, the amended IP Law 2019 clarifies the condition a term is recognized as generic name. Further, a GI will be considered identical with or similar to a mark having been protected if their use is likely to cause [instead of “will cause” under the previous IP Law] confusion as to the origin of the products.". This extends the protection of a registered trademark. In details:
To amend Clause 1 and Clause 3 of Article 80 as follows:
Article 80. Subject matters not protected as geographical indications
"1. Designations, indications having become generic names of goods as per the perception of relevant consumers in Vietnam”.
"3. Geographical indications identical with or similar to a mark having been protected if their use is likely to cause confusion as to the origin of the products;"
For simplifying the recognition and protection of GIs under international treaties to which Vietnam is a member, the amended IP Law 2019 supplement Article 120a as the following:
Article 120a. Recognizing and protecting geographical indications according to international treaties
The publication, processing of opinions of a third person, assessment of the registrability and determination of the protection scope for geographical indications that are required to recognize and protect according to international treaties to which the Social Republic of Vietnam is a member shall be made in accordance with the relevant provisions of this Law for geographical indications in the application submitted to the state management agency of industrial property rights [NOIP]."
In the amended IP Law 2019, Clause 2 of Article 136 is amended to determine clearly that the use of a trademark by a licensee constitutes use of mark by the trademark holder, which, in a certain situation, can be used as a defense against non-use cancellation.
Article 136. Obligation to use inventions and marks
"2. Trademark owners are obliged to use the trademark continuously. The use of a trademark by the trademark licensee under a licensing agreement shall also be considered a trademark used by the trademark owner. In case the trademark is not used continuously for five years or more, the trademark registration certificate shall be invalidated in accordance with Article 95 of this Law.”
Effect of licensing contracts
In the amended IP Law 2019, a licensing contract of industrial object without recordal with the NOIP is still valid, but to be effective to a third party it must be recorded with the NOIP, except for trademark license contracts. In details, it is as follow:
To amend Clause 2, supplement Clause 3 of Article 148 as follows:
Article 148. Effect of contracts for transfer of industrial property right
2. For the industrial property rights established on the basis of registration as referred to in Article 6.3(a) of this Law, a licensing contract of industrial property object shall be effective as agreed by the parties.
3. The licensing contract of industrial property objects in Clause 2 of this Article shall only be effective to a third party upon registration with the state administration agency of industrial property rights [NOIP] except for the licensing contract of trademark.”
Online filing system
In practice, in addition to paper modality, an online filing system set up by the NOIP, started with trademark applications, followed by patent applications, has been implemented since 2017. However, specific provisions for this have only been added to the amended IP Law 2019 by adding Clause 3 to Article 89. Mode of filing registration applications for the establishment of industrial property rights, as follow:
"3. Applications for registration of industrial property rights shall be submitted in written form to the state management agency of industrial property rights or to other application-receiving locations established by this agency or in electronic form according to the online filing system set up by the state management agency[NOIP] of industrial property rights.”
Enforcement of IP rights
Two new clauses, i.e., Clause 4 and Clause 5 are incorporated into Article 198. Right to protection by oneself to ensure equality in adjudication of intellectual property rights disputes. According to these, the defendant, without the court's conclusion of infringement, has the right to ask the court to force the plaintiff to pay reasonable attorneys' fees. Acts of abusing other people's intellectual property protection procedures causing damages are also dealt with. In details, it reads as follow:
"4. Organizations, individuals who are defendants in intellectual property disputes, if the Court concludes that they do not commit acts of infringement, may request the Court to force the plaintiffs to pay them reasonable fee to hire a lawyer.
5. Organizations, individuals that suffer from acts of abusing other people's intellectual property protection procedures may request the Court to force the abusers to compensate for damage caused by the abuse, including reasonable costs to hire a lawyer.”
Grounds for determination of damages caused by the infringement
Under the amended IP Law 2019, beside the methods for calculating damages that already set forth in the IP Law 2005, Clause c added to Article 205.1, which writes “c) Other legal bases given by the right holder” gives an IP right holder the right to claim damages on any legal basis which he/she is able to prove it eligible. This supplement makes the article in question more inclusive and helpful for choosing proper way for determining damages in practice.
Obligations of customs to provide information on suspected infringing goods
Clause 1 Article 218 is modified to determine the obligation of customs to provide information on suspected infringing goods as follow:
“1. When a person who requests for the suspension of customs procedures has properly performed his/her obligations provided for in Article 217 of this Law, the customs office shall issue the decision on suspension of customs procedures with regard to relevant lots of goods. Within 30 days from the date of the suspension decision, the customs office provides information on the name and address of the shipper, exporter, consignee, or importer; a description of the goods, the quantity of goods, and the country of origin of the goods (if known) to the right holder.".
This amended IP Law 2019 takes effect from November 1, 2019 and apply to:
a) An application for registration of an invention, utility solution, industrial design, trademark, layout design or geographical indication shall be submitted to the state management agency of industrial property rights from January 14, 2019.
b) Procedures for canceling the validity of Patents for inventions, Patents for utility solutions, Certificates of registration of geographical indications of the applications filed from January 14, 2019;
c) Procedures for invalidation of trademark registration certificates shall be carried out from January 14, 2019;
d) Procedures for protection of intellectual property rights are required from January 14, 2019.
Author : Pham Vu Khanh Toan, Pham holds a BSc in Physics, a BA in law and a MIP (1988). He is a registered IP attorney and attorney-at-law. From 1985 to 1988, Pham was an expert at the Vietnam National Office of Intellectual Property. Since 1991 he has been the founder and managing partner of Pham & Associates. His focused practice areas are licensing, franchising, dispute resolutions and litigation relating to IP rights. He is a member of the Vietnam Lawyers Association, INTA, AIPLA, ECTA, IBA, FICPI, LES and LAWASIA and is Vice-President of the Vietnam Association for Anti-counterfeiting and Trademark Protection and the Intellectual Property Association of Ho Chi Minh City.