On 14 June 2019, the National Assembly of Vietnam promulgated the Law No. 42/2019/QH14 amending the Law on Intellectual Property, promulgated in 2005 and amended in 2009 (the existing IP Law). The amendments are aimed at making the existing Vietnam IP law comply with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which took effect in Vietnam on 14 January 2019.

Some main amendments in the Law on Intellectual Property as amended in 2019 (the amended IP Law) are summarized below.

Grace Period For Patent Filing

Grace period under the amended IP Law is extended beyond the limited period and scope of disclosure as provided for in the existing IP law.

The amended IP Law provides that public disclosures of an invention, made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant, in the twelve (12) months before a patent application is filed in Vietnam will be disregarded when determining whether the invention is novel or has an inventive step.

Under the amended IP Law, the examiner will also disregard the disclosure in applications for, or registrations of, industrial property rights which were published erroneously by an industrial property office, or if the application was filed by a person having no right to file the application.

Under existing IP Vietnam law, such disclosures would mean that the invention would not be considered novel and therefore a patent would not be granted.

Requirement of Trademark Use

Use of a trademark by a licensee shall be recognized under the amended IP Law as use by the trademark owner of the trademark for the purpose of maintaining the registration.

Recording of Trademark License

A trademark license contract is no longer required to be recorded in the Intellectual Property Office of Vietnam in order to have effect against third parties.

Geographical Indications Inadmissible

Under the amended IP Law, a sign shall be ineligible to be protected as a geographical indication (GI) if it has become a common name, based on “the perception of the relevant consumers in the territory of Vietnam” (that is a new concept inserted into Article 80.1 of the existing IP Law).

Additionally, a GI shall be ineligible for protection in Vietnam if such a GI is identical with or similar to a protected trademark, or an earlier pending trademark, and where the use of such a GI is “likely to cause confusion about the commercial source” of products.

Acquisition of Geographical Indication Rights

In addition to the current registration process before the Intellectual Property Office of Vietnam, rights in a GI may be obtained through an international treaty to which Vietnam is a contracting party.

With regard to a request for recognition and protection of a GI under international treaties, the procedures for publication, opposition, examination of that GI as to its conformity with the protection requirements shall be carried out according to the corresponding (similar) procedures applied for a GI filed with the Intellectual Property Office of Vietnam.

Enforcement of IP Rights

The amended IP Law allows a defendant to request the court to order a plaintiff to pay their reasonable attorneys’ fees or any other expenses as provided for under the law of Vietnam if the court finds that the defendant has not infringed the plaintiff’s IP rights. The amended IP Law also allows a party who suffers injury because of an abuse of the IPR enforcement procedure to request the court to order a party who has committed such abuse to compensate.

With regard to the bases for quantifying damages as result of an IPR infringement, in addition to the plaintiff’s lost sales/profits plus defendant’s profits (but no double recovery), the reasonable royalty, and statutory damages methods available under the existing IP law, the IPR holder is entitled to recover damages based on other methods.

In the suspension of release by Customs procedures, Customs are obliged under the amended IP Law to inform the IPR holder of the name and address of the consignor, exporter, consignee, importer, the description, quantity and country of origin (if any) of the goods in question within 30 days from the date on which the decision on imposing administrative measures is issued.

Effectiveness

The amended IP Law, though being effective from 1 November 2019, was retroactive to 14 January 2019 (the date of entry into force of CPTPP in Vietnam).

Specifically, the amended IP Law will apply to:

• Industrial property applications filed from 14 January 2019;
• Requests for invalidating patents, GI registrations based on the applications which were filed from 14 January 2019;
• Requests for cancelling trademark registrations, submitted from 14 January 2019;
• Proceedings against IPR infringements, initiated from 14 January 2019

If you have any further question, please do not hesitate to let us know.