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 [by Law no.42/2019/QH14 of June 14, 2019 amending and supplementing some articles of the Law on Insurance Business and the Law on Intellectual Property, takes effect on November 1, 2019] 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 some key amendments and supplements that are included in IP law 2019
Patents
Regarding novelty of invention and grace period applicable
Amendments to Clause 3 and addition of Clause 4 after Clause 3 of Article 60 as follows:
Article 60. Novelty of inventions
"3.An invention shall not be considered as lacking of novelty if it is directly or indirectly disclosed by the person entitled to registration specified in Article 86 of this Law or by the person who has information about the invention under the condition that the patent application is submitted in Vietnam within 12 months from the date of disclosure.
4. The provisions of Clause 3 of this Article shall also be applied to any invention disclosed in the industrial property application or industrial property protection title published by the state administration authority of industrial property rights in case the publication is inconsistent with provisions of laws or the application is submitted by a person ineligible for registration”.
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 may cause [instead of “will cause” under the previous IP Law] confusion as to the commercial origin of goods.". This extends the protection of a registered trademark. In details:
Amendments to Article 80 as follows:
a) Amendments to Clause 1:
"1. Names and indications that have become common name of goods as per the perception of relevant consumers in Vietnam ";
b) Amendments to Clause 3:
“3. Geographical indications that are identical with or similar to a trademark being protected or have been filed under a trademark application with an earlier filing date or priority date, if the use of such geographical indication is made may cause confusion about the commercial origin of goods ".
For simplifying the recognition and protection of GIs under international treaties to which Vietnam is a member, the amended IP Law 2019 supplements Article 120a as the following:
“Article 120a. International proposal and processing of international proposal on geographical indication
1. Proposal for recognition and protection of geographical indications in accordance with international agreement to which the Socialist Republic of Vietnam is negotiating, is called international proposal.
2. The publication of international proposal and handling of opinion of a third person, assessment of the registrability of geographical indication in international proposal shall comply with the relevant provisions specified in this Law for geographical indication in geographical indication application submitted to the state administration authority of industrial property rights.”
Trademarks
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.
Amendments to Clause 2 of Article 136 as follows:
“2. Trademark owners are obliged to use the trademark continuously. The use of a trademark by a licensee under a trademark licensing contract is also considered as a trademark owner's use. In case the trademark has not been used continuously for five years or more, the registration certificate of such trademark shall be terminated according to the provisions of 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 and supplement Article 148 as follows:
"Article 148. Effect of contracts for transfer of industrial property right
1. For the industrial property rights established on the basis of registration as referred to in point 3(a) Article 6 of this Law, a contract for assignment of industrial property right shall only be effective upon registration with the state administration authority of industrial property rights.
2. For the industrial property rights established on the basis of registration as referred to in point 3(a) Article 6 of this Law, a contract for use of industrial property object shall be effective as agreed by the parties.
3. A contract for the use of industrial property object specified in Clause 2 of this Article, except for a contract for the use of trademark, shall be registered with the state administration authority of industrial property rights to ve valid for third parties.
4. Validity of a contract for use of industrial property object shall be terminated ex- officio upon the termination of licensor’s industrial property rights."
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 the form of paper documents or electronically under the online filing system to the state administration authority of industrial property rights."
Enforcement of IP rights
Lawyers’ fees
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 lawsuit over intellectual property infringements, 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 or other expenses in accordance with laws.
5. In case an organization or individual abuses the procedures for intellectual property protection and thus causes damage to another organization or individual, the organization and individual suffering damage may request the Court to force the abuser to pay damages, including reasonable costs of hiring a lawyer. Acts of abusing intellectual property rights protection procedures include acts of intentionally exceeding the scope or objective of this procedure.”
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) Material losses calculated in other ways by the intellectual property right holder in accordance with provisions of laws” 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 the requester for suspension of customs procedures has fulfilled the obligations specified in Article 217 of this Law, the customs authority shall issue the decision of suspension. The customs authority shall provide the intellectual property rights holder with information on name and address of shipper; exporter, consignee or importer; description of goods; quantity of goods; origin of goods (as the case may be), within 30 days from the date of issuance of the decision to apply administrative measures to handle trademark counterfeiting and pirated goods specified in Clause 4, Article 216 of this Law.”
Effectiveness
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.
