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
Patents
The grace period for filing patent applications is extended both in terms of period and scope of disclosure
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:
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:
Some issues from the CPTPP which require guidance/clarification
These include:
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.