Reform on Vietnamese Law on Intellectual Property 2019
Editor: TS Nguyen Thai Cuong #vnlawjournal.com #gocnhintsnguyenthaicuong
The amendment of Law on Intellectual Property (Law No. 42/2019 / QH14) has been passed by the XIV National Assembly of the Socialist Republic of Vietnam at its session Saturday, June 14, 2019. This Law was passed by the National Assembly in simplified order and procedures to promptly internalize the obligations that must be implemented immediately in the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) which has entered into force with Vietnam since January 14, 2019. The issues related to intellectual property in this Law focus on five major groups of issues, including: (1) how to apply for registration of industrial property rights; (2) invention; (3) trademark; (4) geographical indications and (5) protection of intellectual property rights.
1.Method of filing industrial property right registration applications
The method of filing industrial property right registration applications is additionally provided in Clause 3, Article 89, which allows the application to be filed electronically under the NOIP’s online filing system.
– In terms of invention novelty (Article 60): extend the exception of the invention in the invention, both the disclosing subject, the form and place of disclosure, and extend the time for enjoying the exception (from 6 month to 12 months).- Regarding the invention’s creativity (Article 61): Additional provisions on disclosures in accordance with Article 60 shall not be used as a basis for assessing the invention’s creativity. .
Regarding the obligation to use the trademark (Article 136): Supplementing the provisions on the use of the trademark by the franchisee under the trademark use contract is also considered as the trademark owner’s use of the trademark. .- Regarding the validity of a trademark use contract (Article 148): a trademark use contract does not need to be registered with the state management agency in charge of industrial property rights in order to have legal validity for a third party.
On the basis of arising, establishing rights to geographical indications (Clause 3, Article 6): Supplementing the basis for establishing the rights to geographical indications under international treaties to which Vietnam is a member.- Regarding objects not protected as geographical indications (Article 80):+ Detailed provisions on the basis of identifying names and indications which have become common names of goods are based on the perceptions of relevant consumers on the Vietnamese territory.+ amend and supplement non-protective cases for geographical indications identical or similar to a trademark already filed under an application with an earlier filing date or priority date, if the use of indications The geography that is taken is likely to cause confusion about the commercial origin of the goods.- Supplement regulations on handling international proposals for geographical indications (Article 120ª).
5. Protection of intellectual property rights
Regarding the right to self-protection (Article 198): To add two new provisions on:+ the right to request the Court to force the plaintiff to pay attorneys’ fees or other expenses in an intellectual property right infringement lawsuit if the defendant is determined by the Court not to commit an infringement of his / her rights;+ The right to claim damages from abuse of procedures to protect intellectual property rights of other organizations and individuals.- Regarding the basis for determining the level of compensation for damage caused by infringement of intellectual property rights (Article 205): additional bases for determination according to other calculation methods provided by the intellectual property right holder.- Regarding procedures for applying the suspension of customs procedures (Article 218): Supplementing the provisions of the customs authorities’ obligations to provide information to intellectual property rights holders within 30 days from the date of issuance of the decision to apply administrative measures to handle goods with counterfeit trademarks and pirated goods.The Law amending and supplementing a number of articles of the Law on Insurance Business and the Law on Intellectual Property takes effect from November 1, 2019. However, the provisions on intellectual property in this Law take effect from January 14, 2019 for cases related to applications for establishment of rights filed from January 14, 2019, require invalidate the Trademark Registration Certificate made from January 14, 2019, intellectual property rights infringement lawsuits accepted by competent authorities from January 14, 2019, other requirements for Intellectual property protection is implemented from January 14, 2019.For patent applications, geographical indications filed before January 14, 2019, intellectual property infringement lawsuits filed before January 14, 2019 but not yet resolved then continue to apply the provisions of the Intellectual Property Law No. 50/2005 / QH11 amended and supplemented by Law No. 36/2009 / QH12 for handling. Contracts for using trademarks that have been signed but not registered before January 14, 2019 are only legally valid to third parties starting from January 14, 2019.