Vietnam Issues Amended Intellectual Property Law to implement CPTPP

At the 33rd session of the National Assembly Standing Committee in June 2019, the Vietnamese National Assembly ratified the Law amending and supplementing the Intellectual Property Law (issued in 2005 and amended and supplemented in 2009) (“the amended IP Law”). The amended IP Law includes 11 points of amendment/supplementation relating to patents, trade marks, geographical indications and enforcement. The amendment/supplementation aims to make the current laws and regulations comply with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) that took effect in Vietnam on 14 January 2019 in which Vietnam is one of the contract parties. Some major amendments/supplementation in the amended IP Law are provided below:

General matters

  • E-filing of applications for establishing industrial property rights is officially provided in the amended IP Law in addition to the traditional paper filing route.

Patents

The grace period for filing patent applications is extended both in terms of period and scope of disclosure

  • The current grace period is six months from the date of disclosure to the filing date and is extended to 12 months under the amended Law.
  • The IP Law only mentions the disclosure in the grace period does not lose novelty of invention/utility solution while the amended Law clearly indicates the disclosure in the grace period will not be used for assessment of both novelty and inventive step.
  • In term of disclosure scope, the 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 the amended Law provides a more general definition of disclosure, specifically disclosure is made by the applicant or person obtained the information directly or indirectly from the applicant. It is also acceptable when the disclosure is in the published industrial patent applications/granted patents by an industrial property office in case of mistaken publication or if the application is filed by a person having no right to file the application.

Trade Marks

Use of a trade mark by a licensee constitutes use of this trade mark by the holder.  This is a valid defense against non-use cancellation filed by third parties.

A trade mark license agreement is no longer required to be registered with IP Vietnam.

Geographical Indications (GI)

Rights over GIs can be established pursuant to an international treaty of which the Social Republic of Vietnam is a contracting party, in addition to the current application process before IP Vietnam. For a request for recognition and protection of a GI under international agreements, the procedure for publication, opposition, assessment of registrability and determination of the scope of protection for that GI will be implemented similarly to the procedures applied for an application for GI registration filed before IP Vietnam. This provision paves the way for protection of GIs from the European Union according to the bilateral trade agreement to be signed between Vietnam and European Union (EVFTA) in June 2019 as well as other agreements Vietnam may have with other countries in the future

Under the amended IP Law, a sign shall be ineligible for protection as a GI if it has become a generic name of goods in Vietnam, based on the awareness of the relevant consumers in Vietnam.

In addition, if a GI  is identical with or similar to a protected mark, or a pending trade mark application which has a prior filing date, and where the use of such a GI is likely to cause confusion as to the origin of products, then such a GI will be ineligible for protection in Vietnam.

Enforcement

The amended Law supplements the rights for:  

  • Defendant to request the Court to demand the Plaintiff to pay their reasonable legal fees if the Court concludes that the Defendant has not committed any act of infringement of the Plaintiff’s IPRs.
  • Organizations and individuals who suffer loss and damage derived from the act of abusing the procedures of IPR protection to request the Court to demand the IPR Owner pays their legal fees and compensation for the loss and damage.

With respect to the bases for determining amount of damages for loss and damage caused by an infringement of IPRs, an IPR Owner is entitled to apply other methods (in addition to the two bases as defined in the current IP Law) to determine the amount of damages for loss.

In the procedures for application of the measure of suspension of customs procedures, Customs now have the obligations of providing to an IPR Owner the details of the consignment, including name, address of the consigner, exporter, consignee, importer, details and quantity of the goods, country of origin (if any) within 30 days from the date of issuance of the Decision on applying administrative measures.

Effectiveness

The amended Law will be effective from 1 November 2019, however, it will retroactively apply from 14 January 2019 (the date of CPTPP in Vietnam). As such, the amend Law will apply to:

  • Industrial property applications filed from 14 January 2019;
  • Procedures for cancellation of patents for invention, patents for utility solutions, and certificates of geographical indication which are based on the applications with filing date from 14 January 2019;
  • Procedures for invalidation of certificates of trade mark registration implemented from 14 January 2019; and
  • Procedures for enforcement of intellectual property rights requested from 14 January 2019.

Some issues from the CPTPP which require guidance/clarification

These include:

  • Protection of non-traditional marks, including sound and scent marks; and
  • IP issues related to the pharmaceutical industry for example, protection of undisclosed test or other data (CPTPP Article 18.47) and patent linkage (CPTPP Article 53)

The Government has plans to further revise its IP Law in time to fully implement the country’s obligations under CPTPP and EVFTA once the latter is signed.  We expect some major changes to the Vietnamese IP laws and systems in the next few years to develop it into a regional centre for innovation.