Comprehensive and Progressive Agreement for Trans-Pacific Partnership introduced in Vietnam
The impact on current Vietnam IP regulations
The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) came into effect in Vietnam on January 14, 2019. There are some differences in IP matters in the CPTPP from those in the current Vietnam Intellectual Property Law (issued in 2005 and amended/supplemented in 2009) (the IP Law). While waiting for amendment of the IP Law adapting to CPTTP, the Intellectual Property Office of Vietnam (IP Vietnam) issued a notification No. 1926/TB-SHTT dated 01 February 2019 (Notification) with guidance of some IP matters under CPTPP. The Notice aims to bridge the gaps between current Vietnam IP regulations and those provided under CPTPP. These:
Formality requirement for trademark license agreement (Article 18.27)
Currently a trademark license agreement is required to be registered to take effect against third parties. It has been the subject of debate as there is no clear definition of “third parties”, which can potentially impede the right holders in legal proceedings such as IP prosecution or enforcement.
However, this requirement has to be amended to comply with Article 18.27 of CPTPP and will be removed. Therefore, use of a trademark by a licensee will be deemed to constitute use by the holder in a proceeding that relates to the acquisition, maintenance or enforcement of trademarks.
Geographical Indications (GI)
Grounds for third-party opposition to GI application (Article 18.32.1b)
Under Article 80.3 of Vietnam IP Law, a GI cannot be protected if it is identical with or similar to a protected mark, where the use of such GI will cause confusion as to the origin of products.
However, in compliance with Article 18.32.1b of CPTPP, it is now confirmed that the registration of a GI can be objected if it is likely to cause confusion with a preexisting trademark in Vietnam. The Notification also remarks, in favour of GIs, that since a GI normally predates trademarks and can be well-known amongst consumers, it is likely to “be confused” rather than “cause confusion” with a trademark.
Registration of translation or transliteration of GI (Article 18.32.5)
Since the effective date of CPTPP, all the applications for GI under translated or transliterated form shall be handled under the same manner as those applied to normal GI applications.
Examination of whether a term is the common name of goods (Article 18.33)
In compliance with Article 18.33 of CPTPP, the Notification has set out the following criteria, which helps clarify the practice of competent authorities i.e. IP Vietnam in examining whether a term is the common name of a type of goods in Vietnam:
- Whether such term has been used to refer to the concerned goods in sources such as dictionaries, newspapers, market survey reports and other relevant sources;
- How the concerned goods referred to by such term are commercialized in Vietnam e.g. the term has been used in a recognized international standard to refer to a certain type of goods.
Non-protection of an individual component of a GI if it is the common name of goods (Article 18.34)
With respect to GI application filed since the effective date of CPTPP, any component of a multicomponent term that has become customary when referring to the concerned goods in Vietnam has to be disclaimed from separate protection once such term is accepted protected as a GI in Vietnam.
The grace period for filing patent applications is extended in term of period and scope of disclosure. Currently, it is 6 months under IP Law Article 60.3, while it is 12 months under CPTTP Article 18.38. In addition, the IP Law only mentions the disclosure in the grace period does not lose novelty of invention/utility solution while CPTTP clearly indicates the disclosure in the grace period will not be used for assessment of novelty and inventive step.
In term of disclosure scope, the current IP Law permits limited circumstances of disclosure, specifically:
- The invention/utility solution was disclosed by another person without permission of the person entitled to file the application;
- The invention/utility solution was disclosed in the form of a scientific presentation by the person entitled to file the application; or
- The invention/utility solution was displayed at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the person entitled to file the application.
while CPTTP provides more general definition of disclosure, specifically disclosure is made by the applicant or person obtained the information directly or indirectly from the applicant (regardless of permission or not of the applicant).
Scope of Application
The above guidelines apply to individuals, organizations from countries that are members of the WTO or Paris Convention.
They also apply to patent/petty patent and GI applications filed as from January 14, 2019.
Some IP issues from CPTTP which need guidance/clarification
There are some IP issues in the CPTPP which need further clarification. These include:
- IP enforcement (for example, CPTTP Articles 18.72, 18.74, 18.76);
- IP issues related to the pharmaceutical industry for example, protection of undisclosed test or other data (CPTTP Article 18.47) and patent linkage (CPTTP Article 18.53);
- the recognition of well-known trademarks (CPTTP Article 18.22);
- the protection of sound/scent trademarks (CPTPP Article 18.18).
Should further guidance be issued on these points, we will share them with you in a later update.