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Notice On the agreement on the application of certain provisions of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP)

Việt Á

11/03/2019 15:29

On November 12, 2018, the 14th National Assembly, the 6th Meeting ratified the CPTPP Agreement under Resolution No. 72/2018 / QH14. The CPTPP Agreement comes into effect for Vietnam on January 14, 2019, under document No. LGL / CPTPPD / 2018-15 by the New Zealand Ministry of Foreign Affairs and Trade on November 26, 2018.
 
On the basis of the regulations of Clause 1 Article 6 of the 2016 Law of Treaties and Clause 3 Article 5 of the Intellectual Property Law, the National Office of Intellectual Property (NOIP) issued the Notice No. 1926 / TB-SHTT dated February 1, 2019, on the disparity in the agreement on application of certain intellectual property obligations between the CPTPP Agreement and the Intellectual Property Law as well as other related legal documents prior to their stipulation in the  Legal normative documents, as following:
 
I. Content of Obligations and Method for Application
1. Article 18.27
Obligation: Registration of trademark license must not be used to request: (i) to establish validity of the trademark license; and (ii) to become a condition for the regard of the utilization of the licensee as the use of the owner in the procedure relating to the acquisition, maintenance or enforcement of trademarks.
 
Method of application:
 
From the effective date of the CPTPP Agreement, all of the contracts of the trademark license shall be valid to the third party without regard to their registration at the National Office of Intellectual Property (in lieu of the regulation under Clause 1 Article 148 of the Intellectual Property Law)
2. Article 18.32.1.b
Obligation: In the procedures for protection or recognition of the geographical indication, there must be the regulation of the refusal possibility of such protection or the recognition of the geographical indication on the ground that this geographical indication seems to be confused with the trademark being under the protection in Vietnam.
Method of application:
 
In case of presence of the opinion of the third party in relation with the application for the geographical indication, the National Office of Intellectual Property shall receive and handle it under regulation in Point 6 Circular No. 01/2007/TT-BKHCN by the Ministry of Science and Technology dated February 14, 2007 for the implementation instruction of Decree No. 103/2006/ND-CP by the Government on September 22, 2006 on the detailed regulation and the enforcement guide to several articles of the Intellectual Property Law on industrial property, as amended and supplemented in accordance with Circular No. 13/2010/TT-BKHCN dated July 30, 2010, Circular No. 18/2011/TT-BKHCN dated July 22, 2011, Circular No. 05/2013/TT-BKHCN dated February 20, 2013, and Circular No. 16/2016/TT-BKHCN dated June 30, 2016.
 
Opinion about the opposition of the application for the geographical indication by the third party for the reason that such geographical indication “is likely to cause confusion” in comparison with the trademark being under protection must be considered in lieu of “will cause confusion” under the regulation in Clause 3 Article 80 of the Intellectual Property Law.
 
The assessment of the possibility of the causes of confusion must take into account for the fact that the geographical indications shall be the existing objects (regardless of the registration) and become popular, even well-known to the public; hence, such geographical indication has a high chance of “being in confusion” rather than “causing confusion” to the trademark.
 
3. Article 18.32.5
Obligation: In case of the protection or the recognition of the form of translation or transliteration of a geographical indication under the official procedures, such procedures and the grounds for the protection/cancellation must be equivalent/identical to those which are applicable for the regular geographical indications.
 
Method of application:
 
Applications for geographical indications in the form of translation or transliteration filed as from the effective date of CPTPP Agreement shall be handled similarly as the regular applications for the geographical indications.
 
4. Article 18.33
 
Obligation: In case of the implementation of the assessment of the term to determine whether it is a popular name of goods in Vietnam, authorities are entitled to take the understandings of the consumers about such term in Vietnam under consideration.
Method of application:
 
In the progress of the examination of applications for geographical indication, regarding to those filed as from the effective date of CPTPP Agreement, the assessment of whether one term is a common name of goods in Vietnam under regulation in Clause 1 Article 30 of the Intellectual Property Law must be based on the understandings of the consumers about such term in Vietnam, which might encompass some criteria as following: (i) whether the term is in reference to the type of goods under consideration in sources of information such as dictionaries, press, market research reports, and relevant websites; (ii) how the goods referred by the term are launched into the market and utilized in trade in Vietnam (i.e., being used in the recognized international standard to relate to one category or a group of goods, e.g., import and export tax, etc.).
 
5. Article 18.34
Obligation: A single component of one multi-component term under the protection in the formality of the geographical indication shall not be protected providing that such individual component is the common name of the associated goods.
Method of application:
 
In terms of applications filed as from the effective date of CPTPP Agreement, providing that a geographical indication is determined a multi-component term which involves a certain component identified as a popular name of goods in Vietnam, that component shall be excluded from the scope of protection (without an individual protection) in case of the approval of such geographical indication.
 
6. Article 18.38
 
Obligation: In respect to the examination of the novelty or the inventive step of the invention, each Party shall disregard at least information included in the public disclosure providing that such disclosure: (i) is made by the patent applicant or the one who gains the information in either direct or indirect ways from the patent applicant; and (ii) takes place within 12 months prior to the application date in the country of the Party.
 
Method of application:
 
Since CPTPP Agreement came into effect, regulations in Clause 3 Article 60 of the Intellectual Property Law about the circumstances in which the invention is regarded to remain its novelty as follows:
- The invention is disclosed publicly by the person entitled to the patent registration or the one who obtains the information either in direct or indirect ways from the person entitled to the patent registration (regardless of with permission or without permission to gain the information from the one who has rights to such registration); and
- The public disclosure as mentioned above takes place in a period no more than 12 months prior to the application date at the National Office of Intellectual Property (with the exclusion of the Priority date).
The publicly disclosed information in the mentioned-above case shall not be considered as reference documents (excluded from “state of the art”) to identify the novelty or the inventive step of the associated invention.
 
II. Subjects of application
 
In accordance with the National Treatment and Most Favoured Nation principles by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the principle of National Treatment in the Paris Convention for the Protection of Industrial Property, the instructions as mentioned above are applicable to applications filed by organizations and individuals who are citizens from the member countries of the World Trade Organization (WTO) or the Paris Convention, and:
- Applications for the Invention Patents/the Utility Patents whose filing date is as from January 14, 2019, onwards; or
- Applications for geographical indications whose filing date is as from January 14, 2019, onwards.         
 
Should any query during the process of implementation, please report timely to the National Office of Intellectual Property (through the Legal and Policy Department) for consideration, and solution.