The Law on amendments, supplements of Trading Insurance Law and Intellectual Property Law (No. 42/2019/QH14) was approved by the National Assembly of Vietnam on June 14, 2019.
According to this Law, the amendments and/or supplements relating to IP focus on 5 main matters, namely (1) method of filing application for registration of industrial property rights; (2) patents; (3) trademarks; (4) geographical indications and (5) protecting IP rights.
The summary of these contents are as follows:
1. Method of filing application for registration of industrial property rights
[Supplement] A new method of filing application for registration of industrial property rights is now added under Point 3 of Article 89. Accordingly, the application can be filed in electronic form under the online filing system of Intellectual Property Office of Vietnam.
a. With regards to the “novelty” of patent (Article 60): [Supplement] the exception of patent’s novelty is expanded to not only the objects, methods and places of disclosure, but also the term for applying this exception ([Amendment] from 6 months to 12 months).
b. With regards to the “creativity” of patent (Article 61): [Supplement] if a technical solution is disclosed under exceptions under Article 60, the disclosed technical solution shall not be used as prior art in the examination of patent’s creativity.
a. With regards to the “Obligation to use trademarks” (Article 136): [Supplement] if a trademark is used by the licensee under a license agreement, this use shall also be considered as the use by its owner – the licensor.
b. With regards to the effect of the trademark license agreement (Article 148): [Amendment] it is not required to register a trademark license agreement at the government office for taking effect to a third party.
4. Geographical indications (GIs)
a. With regards to the “Grounds for the generation and establishment of GIs” (Point 3 Article 6): [Supplement] Grounds for the generation and establishment of GIs is under International treaty of which the Socialist Republic of Vietnam is a member.
b. With regards to “Objects ineligible to be treated as a protected GI” (Article 80):
(i) [Amendment] ground for determining the names, indications which have become generic names of goods is based on the knowledge of related consumers in Vietnam territory.
(ii) [Supplement] [Amendment] A GI shall not be protected if it is identical or similar to a trademark which has a prior filing date or priority date since the use of this similar/identical GI can cause confusion of the commercial originality of goods.
(iii) [Supplement] regulations on handling international request for GI (Article 120a)
5. Protection of IP rights
a. With regards to the “self-protection right” (Article 198):
(i) [Supplement] the right to request the Court to force the plaintiff to pay the lawyer fees or other fees in an IP infringement lawsuit case if the Court concludes that the accused does not infringe IP rights.
(ii) [Supplement] the right to request for damages due to the abuse of procedures to protect IP rights by other organizations and individuals.
b. With regards to the “Grounds for determining amount of damages incurred by an infringement of IP rights” (Article 205): [Supplement] ground for determining damages under other methods provided by the owner of IP rights can be acceptable.
c. With regards to the “Procedures for application of the measure in suspending customs procedures” (Article 218): [Supplement] Customs has the objective for providing information to the owner of IP rights within 30 days from the date of decision of applying administrative method for handling fake trademark products and unauthorized copy products.
6. Effect of the Law
a. The Law No. 42/2019/QH14 shall take effect on November 01, 2019. However, regulations regarding to IP have taken effect since January 14, 2019 for the following cases:
(i) Applications for registration of industrial property rights having filing date since January 14, 2019;
(ii) Requests for cancellation of trademark registrations since January 14, 2019;
(iii) IP infringement lawsuit cases having acceptance date since January 14, 2019;
(iv) Other requests for IP right protection since January 14, 2019.
b. With regards to patent and/or GI applications filed before January 14, 2019 and/or pending IP infringement lawsuit cases having acceptance date before January 14, 2019, the IP Law No. 50/2005/QH11 amended under Law No. 36/2009/QH12 shall be applied.
c. Trademark license agreements signed without registered before January 14, 2019 shall take legal effect to third parties since January 14, 2019.
Intellectual Property Office of Vietnam