Vietnam – The Regional Comprehensive Economic Partnership (RCEP) – Some Intellectual Property (IP) issues

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The RCEP was signed on 15 November 2020 by the 10 members of the Association of Southeast Asian Nations (ASEAN) – Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, the Philippines, Singapore, Thailand, and Vietnam – and its five partners – Australia, China, Japan, Republic of Korea, and New Zealand.

This agreement will officially enter into force within 60 days from the date of its ratification by at least six ASEAN member countries and three non-ASEAN member countries. It is expected that the RCEP will take effect in 2022.

Chapter 11 of the RCEP contains IP provisions. Some IP issues between the RCEP and domestic law of Vietnam are discussed below.

DESIGN

Vietnam is a member of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). Article 18.55.1 of the CPTPP is:

“Each Party shall ensure adequate and effective protection of industrial designs and also confirms that protection for industrial designs is available for designs:

(a) embodied in a part of an article; or, alternatively,

(b) having a particular regard, where appropriate, to a part of an article in the context of the article as a whole.”

When the provisions of the CPTPP were finalized, some design experts in Vietnam believed that this article required the members to protect partial designs, and if so, partial designs would be patentable in Vietnam. (Under Vietnamese law, if said Article 18.55.1 for instance requires the members to protect partial designs, then Vietnam will have to protect the same regardless of the domestic law – international treaties prevail).

When the CPTPP came into effect in Vietnam on 14 January 2019, it was realized that Vietnam’s interpretation of the article (understanding of the contents of the article from its wording) was different from the above. Thus, Vietnam did not amend its law to protect partial designs and there has been no partial design protection in Vietnam so far.

Article 11.49.5 of the RCEP is:

“Each Party confirms that protection for industrial designs is available for designs:

(a) embodied in a part of an article; or, alternatively,

(b) having a particular regard, where appropriate, to a part of an article in the context of the article as a whole, in accordance with its laws and regulations.”

The differences between the two articles are (i) the CPTPP additionally comprises the above text in italic and (ii) the RCEP additionally comprises the above text underlined.

The article of the CPTPP has been understood as not requiring to protect. An open question is will the article of the CPTPP with said two differences be requiring the members to protect as well as will Vietnam protect partial designs as obligated under the RCEP?

PATENT AND GENETIC RESOURCES

Vietnam is currently one of 16 countries in the world that are assessed as having the highest biodiversity, especially in terms of genetic resources. Almost all international treaties Vietnam has joined do not have provisions of genetic resources. This time, Article 11.53 of the RCEP specifies this issue.

Article 11.53.1: Subject to its international obligations, each Party may establish appropriate measures (such “appropriate measures” are a matter for each Party to determine and may not necessarily involve its intellectual property system) to protect genetic resources, traditional knowledge, and folklore.

Genetic resources are being conserved under the Biodiversity Law and its regulations in Vietnam with very general provisions relating to registrations for IP rights for innovative results based on the utilization of genetic resources and their derivatives.

The IP Law currently does not have specific regulations of protection of inventions based on the utilization of genetic resources. However, in a draft of amended IP law (amended IP Law Draft) published in November 2020 for public comments, such regulations were introduced; accordingly, entities administering genetic resources and traditional knowledge associated with genetic resources can invest to create a relevant invention by means of a contract of accessing and benefit sharing for genetic resources and associated traditional knowledge; as a result, then the entities will gain from the invention.

Article 11.53.2: Where a Party has disclosure requirements relating to the source or origin of genetic resources as part of its patent system, that Party shall endeavour to make available its laws, regulations, and procedures with respect to such requirements, including on the internet where feasible, in such a manner as to enable interested persons and other Parties to become acquainted with them.

Current regulations require disclosure of the source or origin of genetic resources in a patent application for an invention concerning genetic resources or traditional knowledge. However, there is no sanction for failure to disclose specified. Under the amended IP Law Draft, a failure to disclose or an incorrect disclosure of the origin of genetic resources or traditional knowledge associated with genetic resources will result in a refusal to grant a patent or an invalidation of a granted patent.

Article 11.53.3: Each Party shall endeavour to pursue quality patent examination, which may include:

(a) that when determining prior art, relevant publicly available documented information related to traditional knowledge associated with genetic resources may be taken into account;

(b) an opportunity for third parties to cite, in writing, to the competent examining authority, prior art disclosures that may have a bearing on patentability, including prior art disclosures related to traditional knowledge associated with genetic resources; and

(c) if applicable and appropriate, the use of databases or digital libraries which contain relevant information on traditional knowledge associated with genetic resources.

As to Item (a) above: According to Article 60.1 of the IP Law, an invention is considered novel if it has not yet been publicly disclosed, in the forms of use, written description or in any other forms in Vietnam or in foreign countries, before the filing date of the application or before the priority date in case the application benefits a priority right. Accordingly, the prior art definition is quite wide and the “documented information” in the RCEP will be taken into account.

As to Item (b): Under Article 112 of the IP Law, during the period from the publication date of a patent application to prior to its granting date, a third party can file a written opinion to contest the grant. As mentioned above, the prior art definition is quite wide and does include “prior art disclosures” in the RCEP. Accordingly, these current regulations are consistent with Item (b).

As to Item (c): To date, some available databases comprising information on genetic resources are: (i) the Vietnamese National Database System on Biodiversity at http://nbds.ceid.gov.vn/; (ii) Plant Genetic Information Database of Plant Resources Center at http://csdl.prc.org.vn/; and (iii) the database of genetic resources in Lao Cai province at http://abs.ceid.gov.vn/. However, the databases are not complete. In addition, normal users can only find the overview information on genetic resources such as the name of genetic resources, the origin of genetic resources in the databases. For authorities like the Intellectual Property Office of Vietnam (IPVN), there is no regulation stating that they are able to fully access the databases for detailed information other than said overview information; and, the amended IP Law Draft is also silent on this issue. The foreign entities are only entitled to engage in access to genetic resources after getting permission from the competent authorities specified in Decree 59/2017/ND-CP on the management of access to genetic resources and benefit sharing arising from their utilization.

TRADEMARK

Trademark Protection: Similar to the CPTPP, the RCEP provides each Party not to require, as a condition of registration of a trademark, that signs be visually perceptible. In addition, the RCEP clearly asks for protection of three-dimensional marks which, though, is covered by the IP Law, there is still a lack of explicit regulations and guides on the examination of this object even in the amended IP Law Draft. Recently, the IPVN has provided some guidelines on the examination of three-dimensional marks as follows:

– For both national and international trademark registration applications, in case the sign therein is the shape or container of products listed in the specification of goods/services (even if it combines with another distinctive element), such trademark registration application will be rejected for protection;

– For an international trademark registration application, if the sign therein is not the shape or container of products listed in the specification of goods/services, and this sign satisfies the protection criteria under the IP Law, it will be protected as a three-dimensional mark;

– For a national trademark registration application that seeks to register such trademark as a two-dimensional mark, if the sign therein is the shape or container of products listed in the specification of goods/services, however, such sign is further combined with other distinctive elements, the trademark will be protected in its entirety, while the sign being the shape or container of such products will be disclaimed.

Where signs are not inherently capable of distinguishing the relevant goods or services, the IP Law has a regulation on distinctiveness acquired through use that satisfies the agreement’s commitment.

Bad Faith Trademarks: In accordance with the RCEP, each Party shall provide that its competent authority has the authority to refuse an application or cancel a registration where the application to register the trademark was made in bad faith in accordance with its laws and regulations. Whereas, even the amended IP Law Draft has added a regulation on the invalidation of a registered trademark where the mark is filed with the applicant’s dishonesty or bad-faith, there is still the lack on the refusal of a pending trademark application filed based on such ground, which so far has caused much of difficulty in the opposition proceeding for legitimate owners.

COPYRIGHT

Rights of Authors, Performers, and Producers of Phonograms: The IP Law specifies the rights of Authors, Performers, and Producers of Phonograms. However, these rights have not yet been clarified.

Similar to the European Union – Vietnam Free Trade Agreement (EVFTA) and the CPTPP, the RCEP also provides exclusive rights of Authors, Performers, and Producers of Phonograms, including making available to the public of their works, performances in such a way that members of the public may access these works from a place and at a time individually chosen by them; and authorization and prohibition of their works, performances fixed in phonograms, and phonograms in any manner or form.

However, there are limitations or exceptions to exclusive rights in certain special cases which do not conflict with a normal exploitation of the works, performance, or phonograms, and do not unreasonably prejudice the legitimate interests of the right holder.

In addition, performers and producers of phonograms shall receive a single equitable remuneration or royalties for the direct or indirect use of phonograms published for commercial purposes for broadcasting.

These matters were also introduced in the amended IP Law Draft.

Collective Management Organizations: Article 56 of the IP Law specifies organizations for the collective management of copyright and related rights. However, this definition shall confuse the functions of these organizations with the ones of state management of the Ministry of Culture, Sports and Tourism.

The RCEP requires each Party to establish appropriate organizations for the collective management of copyright and related rights, which shall proceed with many different works including open and record of collection and distribution of royalties.

In the amended IP Law Draft, this definition was changed into organizations for the collective representation of copyright and related rights.

Protection and remedies for Technological Measures and Electronic Rights Management Information (RMI): These requirements have not yet been specified before in Vietnam. Pursuant to the RCEP, each Party shall provide adequate and effective legal remedies against the following objects:

– Circumvention of effective technological measures that are used by authors, performers, or producers of phonograms;

– Restrict acts which are not authorized by authors, the performers, or producers of phonograms in respect of their works, performance, or phonograms concerned, or are not permitted by the laws and regulations;

– Any person who performs without authority, or perform with reasonable grounds to know about the civil remedies, that it will induce, enable, facilitate, or conceal an infringement of any copyrights or related rights.

There are limitations or exceptions to mentioned measures, and the obligations set forth are without prejudice to the rights, limitations, exceptions, or defenses to infringement of any copyright or related right under a Party’s laws and regulations.

INTERNATIONAL TREATIES

While Vietnam is in completion of dossiers to accede to the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty to comply with the EVFTA, the fact that RCEP further requires each Party to ratify or accede to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired, or Otherwise Print Disabled adopted in Marrakesh on 27 June 2013 shall push up the Vietnamese Government in the ratification of the treaties in the coming time.

OVERVIEW

As mentioned above, under Vietnamese law, international treaties prevail. When Vietnam joins an international treaty, it would have to amend its law to comply with the treaty. In recent years, Vietnam has joined various treaties with IP provisions: the CPTPP (January 2019), the Hague Agreement Concerning the International Registration of Industrial Designs – Geneva Act of 2 July 1999 (January 2020), the EVFTA (August 2020), the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (June 2021), and the RCEP (expected in 2022). The treaties are making the Vietnamese IP Law step-by-step amended towards international IP practice.

Cao Hong Giang, Nguyen Duc Thang

Do Tuyet Nhung, Nguyen Truong Thanh

INVESTIP IP LAW FIRM