The Vietnamese government has just proposed to the National Assembly seven groups of policies on intellectual property law. As a result, if approved, the amendments will result in a significant change in Vietnam’s intellectual property law. The following are the highlighted issues addressed by the revised Vietnam intellectual property law.
Trademark
Article 72 Regulations amending and supplementing Clause 1: Trademarks are protected if the following conditions are met: “1. A visible sign in the form of letters, words, drawings, pictures, holograms, or a combination thereof; or a graphical representation of sound.”
When it comes to recognizing sound as a type of trademark, state agencies face a significant challenge in terms of trademark evaluation and recognition. Can sounds that are too simple, such as alarm bells, birdsong, and so on, be protected as trademarks because it is necessary to clearly determine what type of sound is eligible for registration?
In addition, the concept of “bad intentions” was mentioned in Article 96 as a basis for the invalidation of a trademark protection title at Point a, Clause 1, Article 96, Vietnam IP Law. The Draft specifically provides the following:
“43. To amend and supplement several clauses of Article 96 as follows:
a) To amend Clause 1 and add Clause 1a as follows:
“1. A protection title shall be completely invalidated in the following cases:
a) The applicant for registration of a mark with malicious intent;”
Regarding the recognition of “copyright” as a basis for rejecting a registered trademark, copyright was initially recognized as a basis for trademark refusal in the draft Intellectual Property Law. The draft specifically provides the following:
“33. Amending and supplementing a number of contents of Clause 2, Article 74 as follows:
[…]
h) Add point o, point p as follows:
[…]
p) Signs identical or confusingly similar to names and images of characters and images in works covered by copyright protection of others that were widely known before the filing date, except with the permission of the owner of that work.”
Inventions and Designs
Add some regulations to control inventions using genetic resources and traditional knowledge about genetic resources to encourage the creation, exploitation, and dissemination of inventions (patent), industrial designs, and layout designs created from the State budget. The changes are listed as follows:
- Amending Clause 1, Article 60 (Novelty of Inventions) to clarify that an invention disclosed in a patent application with a later filing date or priority date is also considered to have lost its novelty if it was previously disclosed in a patent application with an earlier filing or priority date but published on or after that patent application’s filing or priority date.
- Changes to Article 86 (Rights to register inventions, industrial designs, and layout designs) to align with Article 86a; explicitly state that organizations and individuals managing genetic resources are also considered investment organizations.
- Article 86a is supplemented with regulations on the State assigning registration rights to other organizations or individuals or making public announcements to prevent others from registering inventions, industrial designs, and layout designs that are the results of a science and technology task using the State budget; and Article 133a is supplemented with regulations on the State assigning registration rights to other organizations or individuals or making public announcements to prevent others from registering (obligation of the lead organization; supplementing Clause 6, Article 139 on conditions restricting the transfer of industrial property rights).
- Supplementing Article 89a states that inventions created entirely in Vietnam by Vietnamese organizations and individuals may only file a patent application abroad if they have filed a patent application in Vietnam and it is not determined to be a secret invention or if the invention is determined to be a secret invention after the expiry of 6 months from the date of filing the application.
- Completing Article 131a on the mechanism of compensating the patent owner for the delay in the issuance of the marketing authorization of pharmaceutical products through the mechanism of not having to pay the fee for using the patent for the delayed period, as stated in Resolution 102/2020/QH14 on the ratification of the EVFTA Agreement.
- In addition to point d, clause 1 of Article 145 (Bases for compulsory licensing of inventions), compulsory licensing of inventions can be requested to meet the needs of the importing country eligible under the TRIPS Agreement.
- Amending and supplementing Clause 1, Article 146 (Conditions to restrict the right to use inventions transferred under compulsory decisions) in accordance with the TRIPS Agreement’s mechanism of Article 31bis.
- Adding the case specified in Point dd, Clause 1, Article 145 of this Law to Clause 1, Article 147 (Jurisdiction and procedures for licensing the right to use inventions under compulsory decisions).