A comparison of trademark law: Vietnam

Vietnam is one of Southeast Asia’s fastest growing digital economies, expected to reach USD49 billion by 2025, according to the latest annual e-Conomy SEA joint research report from Google, Temasek and Bain & Co. The transformation from such rapid internet economy and trade growth has required changes and updates to the country’s government policy and legal environment, including the Intellectual Property Law.

Looking back on the past 16 years of practice, the IP Law has played a great role in creating a wide and intensive legal path for the creation and protection of IP rights in Vietnam, strengthening the country’s socioeconomic development.

Taking effect on 1 January 2023, the IP Law has been amended and supplemented to leverage the existing provisions on the protection of IP rights towards the protection of IP rights under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and the EU-Vietnam Free Trade Agreement (EVFTA), and to be ready to face the “industry 4.0” era.

Clearer guidance

As part of the effort to bring its IP Law into line with international standards of protection of the CPTPP and the EVFTA, from 14 January 2023, Vietnam has begun to accept applications for the registration of sound marks. This is the first time for Vietnam to register this type of non-traditional mark. Apart from documents required for the applications for registering traditional marks, a sonic file and a graphical representation of the sound mark shall be attached to the applications for registering sound marks.

A well-known mark under the amended IP Law is redefined as a mark widely known by relevant parts of the public in the territory of Vietnam, which is consistent with the system of criteria of a well-known mark as defined in article 75 of the IP Law, and other international regulations. This redefinition amends the previous IP law in which a well-known mark was required to be extensively known by all consumers in general. Besides, a mark may be accepted as a well-known mark if it meets some or all of the criteria in article 75.

The possibility of refusal of an application or cancellation of a registered mark on the grounds of bad intention has been explicitly recognised, with the definition of bad intention referred to in articles 96 and 117 of the amended IP Law needing to be clarified.

In addition, the amended IP Law has outlined two new absolute grounds on which applications for marks can be rejected. Marks may be deemed ineligible for protection if they are considered to take the inherent shape or form of the goods, or are defined by technical characteristics of the goods required, or comprise copyrighted works without permission from copyright owners.

Practical, specific instructions

Legal definitions of the terms “author” and “co-author” have been updated under the amended IP Law. Accordingly, an author is the person who directly creates the work, and a co-author is clarified as one of the two or more authors who work together directly on creating the work, with the intention that their contributions will be combined into a complete whole.

Someone who only supports, consults or provides material for other people’s creations shall not be considered the author or co-author.

The amended IP Law also establishes new definitions of terms, including royalties, rights management information, and communicating with the public, as well as revisions of other definitions that make them consistent with the existing terms of the IP Law, namely derivative work, published works, phonograms, video recordings and reproductions, among others.

The amended IP Law entitles authors to transfer the right to give titles to their works to organisations or individuals as the transferees of property rights related to the works.

The IP Law also clarifies some exceptions to the infringement of copyright and related rights, consistent with the act of reproductions and use as mentioned in the previous terms. Article 25(a) sets out that other certain exemptions from copyright infringement apply to persons with disabilities, their caregivers and authorised entities founded and operating for the benefit of such individuals as prescribed by law.

Such exceptions aim to develop disability-sensitive legislation and to ensure harmony of interests between the copyright holder and organisations or individuals accessing and exploiting the work.

Infringements of copyright and related rights are further revised and specified as a legal basis for identifying IP-related violations to strengthen the mechanism to deal with copyright infringement when resolving disputes in the IP field.

Intermediary service providers, according to the amended regulations, shall have legal responsibilities in connection with the protection of copyright and related rights on the internet and telecommunication networks.

For example, intermediary service providers must set up a system of checking, monitoring, information processing and co-ordination to prevent acts that infringe copyright and related rights. Besides, such providers may be exempted from liability in some cases.

The related decree to guide the amended IP Law will replace Decree 22/2018, which provides guidelines for a certain number of articles of the previous version of the law. The third draft of the new decree is now available to the public and will be officially released in 2023.

Tightening patent provisions

Regulations related to secret invention and patent security control, which are previously stipulated in Decree No. 122/2010 and supplementing Decree No. 103/2006 to guide the implementation of the IP Law, are officially introduced in the amended IP Law for the first time.

This development will encourage early filing abroad, especially for those enterprises that do not intend to exploit their inventions in Vietnam.

Under the amended IP Law, there is another type of patent that relates to disclosure of an invention, where such invention shall be deemed to have lost its novelty. Specifically, an invention may not meet the novelty requirement if it is disclosed in another patent application with an earlier filing or priority date, but published on or after the filing date or priority date of such patent application.

The cancellation of a patent protection title’s validity is clearly and distinctly established in the amended IP Law by listing certain cases under which the registered patent may be cancelled in whole or in part. This revision makes it easier for the concerned parties to exercise their rights to cancel the validity of a patent protection title.

Industrial design

The amended IP Law redefines an industrial design by adding signs such as component parts of complex products and a feature visible during the process of exploiting the use of such products and complex products in compliance with the EVFTA.

One crucial aspect of industrial design registration that must not be overlooked in the new IP Law is, for the first time, that an applicant is allowed to publish an industrial design application at a later date, but no later than seven months from the filing date, provided that the applicant has filed a duly requested letter for delay at the time of filing the application.

The outlook

The amended IP Law remains vague and unclear over some points, and further IP-related guidelines, including four decrees and two circulars, need to be revised, amended or replaced. Still, the adjustments and supplements under the amended IP Law bring Vietnam into broad and general compliance with international treaties and common practices, and as such are to be welcomed.