New draft on Intellectual Property Law of Vietnam; Important changes on Trademark and Copyrights

Law on Intellectual Property was first approved in Vietnam in 2005 under Law No. 50/2005/QH11 dated 29 November 2005. It was then amended twice, i.e. in 2009 (Law No. 36/2009/QH12) and 2019 (Law No. 42/2019/QH14). For over 15 years of implementation there have been some inadequacies in the Law, along with the must to comply with FTAs that Vietnam has been and will be a party to, a new draft of the Law has been presented to propose amendments on General Provisions, Copyrights and Related Rights, Intellectual Property Rights, Rights on Variety Plant and Enforcement of Rights.

Some major changes made to Trademark area are at the Trademark Examination Procedure as follows:

  • To shorten the duration that an expired mark will be eligible to be a citation which is 5 years according to the current Law and 3 years according to the Draft Amendment (Article 74.2h). This revision will pave the way for new more marks to be registered than current Law as well as harmonize with international practice;
  • To clarify the principle on examining a trademark application at the filing date (Article 74.2), which means the legal status of the cited mark will be judged at the filing date of the sought-to-be-registered mark, other than at the time the mark is examined by the NOIP [i];
  • To add a new regulation on holding on the examination process of an applied mark where there is a request for termination of a prior trademark registration based on non-use ground (Article 117) [ii];
  • To remove the citation of a cancelled mark based on non-use ground (Article 74.2h) [iii];
    In addition to regulation [i], the purpose of regulation [ii] is to suspend the re-examination of a provisionally refused mark if the Applicant finds it possible to terminate the registration of the cited mark, he may submit a request for suspension of the re-examination procedure to earn him time to follow the termination procedure. In case the termination is successful, the NOIP will issue the Termination Decision, remove the cited mark (regulation [iii]) and grant Certificate for the sought-to-be-registered mark.

Some important changes made to Copyrights are as follows:

  • To clarify the definition of “property rights” which includes rights of performance, copy, import for public distribution, transmission, lease and exhaution of rights (Article 20).
  • To modify and add rights of the performers, which amend provisions that performers have the moral rights and property rights regarding the performance, and provisions on the rights of copy, transmission, distribution, import for distribution; provisions on exhaustion of rights; supplement provisions on the rights of public distribution for performance, and agreement between performers and owners for amendment and supplement of the performance (Article 29).
  • To modify and add rights of the producers regarding sound recordings and video recordings, which amend and supplement provisions on the rights of copy, distribution, import for distribution; provisions on exhaustion of rights; provisions on the rights of public distribution for sound recordings and video recordings at a place and time of their own choice (Article 29).
  • To modify and add rights of the broadcasting organizations, which amend and supplement provisions on the rights of copy, distribution, import for distribution; provisions on exhaustion of rights (Article 29).

Below are other changes proposed by the Draft Amendment as to Trademark, Geographical Indication and Copyrights:

  • To modify and add some definitions as follows:

-Modify and add the content of the definition of “copy” (Article 4);

-Apply the definition of “royalty payment” instead of “royalties”, “remuneration”, “material interests” (Article 4);

-Propose a new definition of “homonymous geographical indication” in Article 4.22 of the IP Law;

  • To modify the copyrights to computer programs, data collection, which legalize the regulation regarding the backup copy (Article 22);
  • To modify and add the cases of use of a published work without obtaining the permission of the copyrights owner or paying the royalty payment (Articles 25, 26);
  • To re-define the acts of copyright infringement and other related acts (Article 28);
  • To modify the ownership of the copyrights, in which the owner shall be an individual or organization who owns one, some or all rights as stipulated (Articles 19.3, 20.1, 20.3, 36);
  • To add a new type of trademark which is sound mark to comply with Article 18.18 of the CPTPP but require that the mark must be represented graphically. Since such definition is absent from the current Law of Vietnam, there shall be regulations to detail and guide the implementation in coming time (Article 72.1);
  • To empower the rights to register Geographical Indication to the community manufacturing goods bearing the indication (Article 88);
  • To add new points in Article 95.1 on Termination of validity of Protection Titles, particularly:

-Where the use of a protected mark on goods/services causes misleading to public as to the nature, quality or geographical origin of such goods/services;

-Where the protected mark has become generic name of goods, services for which the mark is registered;

-Where Geographical indications of a foreign country is no longer protected at the country of origin.

  • To add a new ground of Invalidation of a registered trademark where the mark is filed due to the applicant’s dishonesty/bad-faith and some other cases (Article 96);
  • To prescribe the timeframe for filing oppositions which is 05 months from publication of the applied trademark and 03 months from publication of the applied geographical indication. This proposal aims at restraining the third party to utilize the opposition procedure to delay granting process of the applied mark;
  • To revise Article 124.5 on the use of trademark, namely to add the act of “selling”, “display for sale”, and transport of goods. This revision is made in order to conform with Article 18.77.2 of the CPTPP regulating on unlawful activities subject to criminal penalties.

Cao Hong Giang – Director of Trademark Department

Nguyen Truong Thanh – Trademark Specialist