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Vietnam amends intellectual law following big trade pacts
Linh Pham 08:04, 2020/11/29
The signing of big trade pacts has prompted the comprehensive amendment of the law that enacted in 2005.

The Vietnamese government has just released another draft amendment of its 2005 Law on Intellectual Property (IP Law) following the recent signing of the Regional Comprehensive Economic Partnership (RCEP), the world’s largest trading bloc.

Tran Manh Hung and Vo Chi Dung at multinational law firm Baker McKenzie provide guidance to the issue.

The Regional Comprehensive Economic Partnership (RCEP) was signed on the occasion of the 37th ASEAN Summit held in mid-November. Photo: Giang Huy

In brief

The 2005 IP Law was amended in 2009 after Vietnam had become a member of WTO in 2007; and it was later amended in 2019 after Vietnam signed big trade pacts, such as the European Vietnam Free Trade Agreement (EVFTA) and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).

The 2020 draft amendment includes comprehensive revision and/or supplement of 80 articles (including 13 new articles added to the current IP Law), covering the following: (1) General regulations; (2) Copyright and related rights; (3) Industrial property (patent, design, trademark, geographical indication); (4) Plant variety; and (4) Enforcement.

Key takeaways

1. General regulations

The draft amendment proposed new legal definitions of the following terms, which are either absent or differently defined in the current IP Law:

(1) Plant variety: Broaden the scope of protection applicable to plant variety rights.

(2) Copyright and related rights: Propose new definition of “author”, “technology measures for rights protection” and “rights management information”; revise the definition of "reproduction"; propose definition of the word "royalties" (Tiền bản quyền in Vietnamese) as replacement of the inconsistent use of the terms Thù lao and Nhuận bút (literally translated as remuneration, or interchangeably translated as royalty).

(3) Industrial design: Broaden the definition of industrial design to allow protection for the component part of a complex product – in compliance with EVFTA’s requirements.

(4) Trademark: Remove the definition of associated trademark; and revise the definition of well-known trademark.

(5) Geographical indication: Propose a better definition of geographical indication, including a new definition of homonymous geographical indication.

2. Copyright, related rights

The draft amendment comprehensively proposes the following revisions and/or supplements to the current IP Law:

(1) Revise Article 20 on economic rights to specify rights to performing, reproduction, distribution, import for public distribution, communicating, renting and notably provisions on exhaustion of rights.

(2) Revise Article 21 on copyright in connection with cinematographic works and theatrical works by removing moral rights of some subjects.

(3) Revise Article 22 on copyright in connection with computer programs, data collection.

(4) Revise Articles 25 and 26, respectively on use of published art works without seeking approval and without payment of royalties; and without seeking approval but with payment of royalties.

(5) Revise Articles 28 and 35, respectively on acts of copyright infringement; and related rights infringement.

(6) Revise Article 29 on rights of performers.

(7) Revise Article 30 on rights of producers of sounds recordings and video recordings.

(8) Revise Article 31 on rights of broadcasting organizations.

(9) Revise Articles 32 and 33, respectively on use of objects of related rights without seeking approval and without payment of royalties; and without seeking approval but with payment of royalties.

(10) Revise Article 36 on copyright owner.

(11) Revise Articles 49, 50, 52, 55 to facilitate better formalities for copyright registration.

(12) Revise Article 56 on collective management organization of copyright and related rights.

(13) Propose new Article 56a on principles on determination, and collection and distribution of royalties upon exploiting and using art works and objects of related right.

3. Industrial property

In terms of general regulations on industrial property, the draft amendment proposes the followings:

(1) Revise Article 86 on rights to registration of invention, industrial design, and integrated circuit design; and propose new Articles 86a, 133a, 136a and 139.6 in relation to such proposed revision.

(2) Revise Article 95 on Cancellation of registrations, covering the following:

(a) Propose new Articles 95.1.(h, i, k) on new grounds for cancellation of trademark registrations, such as use of trademark causing consumer confusion, trademark genericide; and cancellation of geographical indication upon cancellation in its country of origin.

(b) Revise Article 95.2 on cancellation of registrations due to non-payment of renewal/annuity fees.

(c) Propose new Article 95.3a and revise Article 95.4 to define the time of cancellation of registrations.

(3) Revise Article 96 on invalidation of registrations.

(4) Revise Articles 97.1 and 97.2 on amendment of registrations.

(5) Revise Article 100 on general requirements for applications for registration of industrial property.

(6) Revise Article 109 on examination of industrial property applications as to formalities.

(7) Revise Article 112 and propose Article 112a on oppositions against industrial property applications with two options of revision in relation to deadlines, and opposition grounds.

(8) Revise Article 117 on refusal of protection.

(9) Propose new Article 119a on appeal and appeal settlement for industrial property-related procedures.

(10) Revise Articles 121.4 and 123.2, respectively on proprietor of industrial property objects, and rights of proprietor of industrial property objects.
(11) Revise Article 124.5.(b) on use of industrial property objects in compliance with CPTPP.

(12) Revise Article 125.1 and Article 125.2 on rights to prevent others from using industrial property objects.

(13) Revise Article 130.1.(d) on acts of unfair competition by adding the condition of “bad faith” in domain name squatting acts.

(14) Revise Articles 151.1, 153.1, 154.2, 155 on industrial property agency services.

Patent

(1) Revise Article 60.1 on novelty of invention.

(2) Propose new articles on confidential invention (with two options of supplement).

(3) Propose new articles for protection of agrochemicals testing data, and information ensuring patent holders can exercise their rights in drug registration procedures – in compliance with CPTPP.

(4) Propose new Article 131a on compensation for patent holders due to delay in granting approval for circulation of drugs – in compliance with EVFTA.
(5) Propose new Article 145.1.(d) and Article 146.1 on compulsory licensing of patents.

Industrial design

(1) Revise Article 103 on requirements for application for registration of industrial design (with two options of revision in relation to specifications of industrial design).

(2) Revise Article 109.3 on publication of industrial design application with a possible option for delay of publication upon applicant’s request.

Trademark

(1) Revise Article 72.1 on general conditions for signs to be eligible for trademark protection to allow protection of sound marks – in compliance with CPTPP.

(2) Revise Article 73.1 on signs ineligible for trademark protection to cover sound mark exception, particularly national anthems of Vietnam and other countries, and The Internationals shall be ineligible for protection as sound marks.

(3) Revise Article 74.2 on distinctiveness of trademark to cover the following:

(a) Principles of assessing eligibility for trademark protection at the filing time

(b) Removal of associated trademark

(c) Citation of an expired mark within five years of its expiry date (with proposal of two options for revision)

(d) Addition of name of plant variety as a ground for trademark refusal

(4) Revise Article 75 on criteria for assessment of well-known trademark (with proposal of two options for revision).

Geographical indication

(1) Revise Article 79 to allow protection for homonymous geographical indication.

(2) Revise Article 80 on objects ineligible for geographical indication protection (with proposal of two options for revision).

(3) Revise Article 88 on right to registration of geographical indication.

(4) Revise Article 92.2 to remove requirements of endorsing certificates of registration of geographical indication with organizations and individuals who have rights to use of geographical indication.

(5) Revise Article 106 on requirements for applications for registration of geographical design to include homonymous geographical indication and comply with requirements of EVFTA.

4. Plant variety

The draft amendment broadens the plant variety objects that are eligible for protection in accordance with the roadmap (10 years) provided in the International Convention for the Protection of New Varieties of Plants (UPOV). Particularly, Article 3.2 of the UPOV Convention states: "Each Contracting Party shall apply protection to all plant genera and species no later than the expiration of a period of 10 years from the said date [date of accession]". Vietnam acceded to the UPOV Convention on December 24, 2006, as of December 25, 2016, has the right and obligation to protect all plant genera and species.

5. Enforcement of IP rights

The draft amendment proposes revisions and/or supplements to a number of provisions to strengthen the enforcement of IP rights, especially in cyberspace – in compliance with CPTPP and EVFTA:

(1) Revise Article 198 on right to self-protection to include technology measures.

(2) Revise Article 198a on assumption on copyright and related rights for better specifications of author, performer, producer, broadcasting organization and publishing house.

(3) Revise Article 198b on rights and obligations of intermediary service providers in connection with the protection of copyright, related rights on the Internet and telecommunication networks.

(4) Revise Article 201 on expertise assessment of IP.

(5) Revise Article 211 on acts of IP rights infringement subject to administrative sanctions (with two options for revision).

(6) Revise Article 213 on IP counterfeit goods, by specifying trademark counterfeit goods and geographical indication counterfeit goods.

(7) Revise Article 216 on customs measures, with two options for revisions.

(8) Propose new Article 218.4 on application of measures of suspension of customs procedures.

Next steps

As the 2020 draft amendment of IP Law has been out for public consultation, IP organizations and private practices are collecting opinions and contributions to submit to the government.

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