Vietnam: Notable Changes Related to Industrial Property Rights in The Draft Law Amending and Supplementing The Current IP Law

Pham & Associates Vietnam

This article summarizes notable amendments and supplements related to industrial property rights mentioned in the working documents distributed at the Workshop on the Draft Law amending and supplementing a number of articles of the Intellectual Property Law (IP Law), organized by the National Assembly's Legal Committee in collaboration with the Legal Research Institute on August 28, 2021 in Hanoi.

According to the legislative plan approved by the National Assembly (NA), the Draft Law  will be submitted to the NA for consideration by the end of the fourth quarter of 2021 or the beginning of the second quarter of 2022.

I. A brief glance at the Draft Law

The Draft Law consists of 5 articles, accordingly amends, supplements a total of 94 articles and cancels 1 article in 14 out of 18 chapters of the current IP Law. Thus, after the amendment, the IP Law will still have the same number of chapters, but increase by 11 articles to 233 articles. More specifically, as follows:

Article 1: Amendment and supplementation of a number of articles of the IP Law

(i) Amending and supplementing 81 articles, namely 4, 8, 19, 20, 21, 22, 25, 26, 28, 29, 30, 31, 32, 33, 35, 36, 41, 42, 43, 44 , 49, 50, 52, 55, 56, 60, 72, 73, 74, 75, 79, 86, 88, 92, 93, 95, 96, 97, 100, 103, 106, 109, 110, 112, 113 , 114, 115, 116, 117, 121, 123, 124, 128, 130, 139, 145, 146, 147, 151, 153, 154, 155, 157, 158, 159, 163, 165, 170, 171, 17 2 , 176, 188, 189, 190, 198, 201, 211, 213, 214, 216, 218;

(ii) Inserting 12 articles, namely 13a, 25a, 56a, 86a, 89a, 112a, 119a, 131a, 133a, 136a, 198a, 198b.

(iii)  Removing article 215.

Article 2: Cancellation of articles, paragraph(s) of article, replacing a number of words and phrases in some articles, paragraphs and points of the IP Law

Article 3: Amendment and supplementation of a number of articles of other relevant laws

Article 4: Transitional Provisions

Article 5: Effectiveness

II. Some major amendments related to industrial property rights

II.1. Objects of industrial property rights

II.1.1 General provisions:

- Amending and supplementing a number of concepts in Article 4 (Explanation of terms), namely: "industrial designs", "well-known marks",  "geographical indications";

- Removing the concept of "associated marks"; and

- Inserting the concept of "secret invention".

II.1.2 Inventions

- Amending paragraph 1 of Article 60 (Novelty of invention) to clarify that an invention in a patent application with a later filing date or priority date is also considered to have lost its novelty if it has already been disclosed in an another patent application with an earlier filing or priority date but published on or after the filing or priority date of that patent application.

II.1.3 Marks

  - Amending paragraph 1, Article 72 (General requirements for marks eligible for protection), which adds provisions on the possibility of registration of sound signs as trademarks.

- Amending paragraph 1, Article 73 (Signs not protected as trademarks), to add excluded signs that cannot be registered as sound marks, namely “the national anthem of Vietnam and other countries, L'Internationale ".

- Amending paragraph 2, Article 74 (Distinctiveness of Marks) towards to supplement  regulations to clearly define the principle that the protection conditions of a mark must be assessed at the time the application is filed; shortening the time period for consumers to forget the existence of an expired mark from 05 years to 03 years; supplementing a mechanism for making the cancellation of a cited mark's validity for 5 years of non-use; supplementing regulations on refusal of trademark protection if it causes confusion with the name of a protected plant variety and with the names, images of characters and images in the works under the copyright of others.

- Amending the initiatory sentence in Article 75 (Criteria for recognition of a well-known mark) to clarify the selection of the criteria listed in this Article.

II.1.4 Geographical Indications (GIs)

Amending Article 79 (Protection requirements for GIs) by inserting a text to clarify the possibility of protection of homonymous GIs (are those that are spelled or pronounced alike).

II.2. Establishment of industrial property rights

II.2.1 Registration of industrial property rights

- Inserting Article 86a to stipulate that the right to register inventions, industrial designs and layout designs which are the result of S&T researches/tasks funded by the State belongs to the organization in charge of such S&T researches/tasks and this organization will become the right-owner;

- Inserting Article 89a to stipulates that an invention of a Vietnamese organization or individual, created entirely in Vietnam, if it affects national security or defense, may only file an application for registration of such invention abroad after it has been filed for registration in Vietnam and the time limit of 6 months from the filing date has ended without being identified as a confidential invention. In case it is determined to be a confidential invention, it is only allowed to file abroad according to the guidance of the Government.

- Amending Article 95 (Termination of validity of Protection Titles), to supplement cases where protection titles are terminated; clarify more clearly the case of protection title being terminated due to failure to pay fees and charges to maintain or renew its validity; clearly determine the time of termination of the protection title's validity and clarify the procedure of considering a request for termination of protection title.

- Amending Article 96 (Invalidation of Protection Titles) to supplement cases where protection titles are completely or partially invalidated; clarify the procedure of considering a request for invalidation of protection title.

II.2.2 Industrial property registration application

- Amending Article 103 (Requirements for industrial design registration applications (“applications”) to stipulate that documents identifying an industrial design claimed for protection are a set of photos, drawings of the industrial design and their descriptions; requirements for the description are simplified.

II.2.3 Procedures for handling applications

- Amending Article 112 (Third party opinion on the grant of protection title) towards to  supplement provisions to clarify that the document stating the opinion of the third party is considered as an information reference source for handling the applications and are not required to respond.

- Inserting Article 112a on objections to applications, determining the right to object to the grant of a protection title, provided that a written objection must be filed within a prescribed time limit and fees, charges and expenses must be paid.

- Supplementing paragraphs 4 and 5, Article 113 (Request for substantive examination of invention registration applications) to stipulate the examination process according to summary procedures if the invention in the application coincides with an already patented invention in another country.

- Amending Article 117 (Refusal to grant protection titles) towards to supplement some more grounds of refusal to grant protection titles; mechanism to suspend the application examination process; clarify the re-examination process in case the application is subject to re-examination.

- Inserting Article 119a on complaints and settlement of complaints related to industrial property procedures, which stipulates some peculiarities in the settlement of complaints related to industrial property such as payment of re-examination fee if the complaint contents relate to the right to register or re-examination is needed; the time for re-examination is not included in the time limit for complaint settlement; allow filing of complaints through industrial property representative organizations (IP agents).

II.3. Industrial property rights holders

- Amending point b, paragraph 5, Article 124 (Use of industrial property objects) towards to clarify the act of "circulating, or offering, advertising, storing for sale of, goods bearing the protected mark" as the basis for the performance of obligations in Article 18.77.2 of the CPTPP.

- Amending point d, paragraph 1, Article 130 (Acts of unfair competitions) to clarify that the act of domain name possession is only determined as unfair competition when it is done "with bad intentions" and "for illicit gain".

II.4. Industrial property representative

- Amending Clause 1, Article 151 (Industrial property representation service services) only to stipulate that industrial property representative service is the act of performing transactions on behalf of organizations and individuals before competent State agencies in order to establish and protect industrial property rights.

- Amending paragraph 2, inserting paragraph 2a, Article 155 (Conditions for practicing industrial property representation services), specifically dividing representation services into two areas (inventions, trademarks and the rest) and stipulating the conditions to be granted a practicing certificate of industrial property representation service for the respective area.

III. Protection of intellectual property rights

- Amending Article 201 (Inspection, assessment on intellectual property (IP) towards to clearly define the scope of IP assessment and IP judicial expertise; conditions for an organization to carry out assessment activities; principles of assessment; determining the value of the assessment conclusions.

- Amending Article 211 (Acts of IP right infringements liable for administrative remedies), specifically to remove paragraph 3 on administrative sanctions for acts of unfair competition; to amend paragraph 1 under two options: (i) still maintain administrative measures but limit them to acts of infringing on IP right with respect to copyrights, related rights, trademarks, geographical indications, new plant varieties; or (ii) keep current regulations.

- Amending Article 213 (IP counterfeit goods), specifically separating regulations on counterfeit mark goods and counterfeit GI goods (inserting paragraph 2a on the concept of counterfeit GI goods) and at the same time, the description of counterfeit goods is changed from “difficult to distinguish” to “so similar that it is difficult to distinguish”.

- Removing Article 215 (Application of preventative measures) because it coincides with the provisions of the Law on Handling of Administrative Violations./.

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