On 16 June 2022, the Vietnamese National Assembly officially approved the amended Intellectual Property Law (“Amended IP Law”). This marks the third time the Vietnamese IP Law has been amended and supplemented since its promulgation in 2005. Its latest update contains revisions and supplements more than 100 articles, marking the most expansive overhaul of this law to date.
The majority of the Amended IP Law took effect as of 1 January 2023, but its new regulations on “sound mark” protection apply retroactively from 14 January 2022. Additionally, the Amended IP Law contains guidance on the protection of test data for agrochemicals, which will take effect next year on 14 January 2024.
This legal update discusses the salient updates brought about by the Amended IP Law.
1. Copyright and related rights
1.1 Definition for authors and co-authors
Article 1.4 of the Amended IP Law sets new criteria for the pivotal terms of “author(s)” and “co-author(s)”. The “author” of a workpiece is the person who directly creates the work (“Authorship”). If two or more people directly co-create the work with the intention that their contributions are combined into a complete work, those people are now defined as “co-authors”. It is essential to distinguish Authorship from mere third-party support, by which another person, e.g., gives suggestions, or simply provides materials for other people to perform creative work without becoming an author of the work in the legal sense.
1.2 Moral rights and economic rights of the authors and the copyright holders
The previous IP Law (effective since 2005,supplemented in 2009 and again in 2019) only allows the transfer of the right to publish a work or authorize other persons to publish a work. Other moral rights – such as the right to choose a workpiece’s title, put a real name or pseudonym in a workpiece, or have a real name or pseudonym announced when such workpiece is published or used, and protect against the integrity of the workpiece from being misrepresented by others – could not be transferred under the previous IP Law. The Amended IP Law introduces the ability to transfer the right to choose a workpiece’s title to organisations (or individuals) who are the recipients of economic rights of such workpiece.
The Amended IP Law also revisits several exceptions and limitations to copyright and related rights, to strike a better balance between the rights of copyright holders and the interests of third parties and the public in exploiting and using copyrighted workpieces. According to the new rules, copyright holders may not prohibit third parties from
- Reproducing a workpiece only to exercise rights stipulated in the Amended IP Law;
- Temporarily reproducing the workpiece according to a technological process through the operation of devices for transmission within a network between third parties through intermediaries, or lawfully using the work without an independent economic purpose, in which copies thereof are automatically deleted and cannot be restored;
- Subsequent distribution or import for distribution of originals or copies of a work that has been performed by the copyright holder or which the copyright holder gave permission to be performed.
1.3 Exercise of moral rights and economic rights by co-authors
One of the most significant changes in the Amended IP Law pertains to the moral and economic rights regarding workpieces that were created by co-authors. Such rights must be exercised with the consent of all co-authors, unless the workpiece was crafted in a fashion whereby parts of it may be separated for independent use without prejudice to the other parts.
2. Industrial Property Rights
2.1 Protection of Sound Marks
The Amended IP Law recognises “sound marks” for the first time as a type of trademark eligible for protection. This must be seen in the context of Vietnam’s accession to international treaties such as the European Vietnam Free Trade Agreement (“EVFTA”) and the Comprehensive and Progressive Agreement for Transpacific Partnership (“CPTPP”), which require s specific IP regulations for soundmarks from treaty signatories. Specifically, Article 1.20 of the Amended IP Law states that a trademark is a visible sign in the form of letters, words, drawings, or images including holograms, or a combination thereof, represented in one or more colors; or is a sound sign represented in graphical representation. If the registered mark is a sound, the related trademark sample provided to the authorities must contain a sound file and a graphical representation of that sound.
2.2 Definition of “well-known trademarks”
Pursuant to the previous IP Law, a “well-known trademark” was defined as a trademark “widely known by consumers throughout the territory of Vietnam”. The Amended IP Law’s evaluation method of a “well-known trademark” has undergone a change in criteria: formerly all eight legal criteria for “well-known trademarks” had to be fulfilled, it is now required to satisfy only some of the eight criteria to qualify a trademark as “well-known”. This amendment makes it easier for the owner/applicant to prove that a specific trademark is “well-known”, better protecting the legitimate rights and interests of the trademark owner.
2.3 Termination of Trademark Registration Certificates
Notably, to reflect Vietnam’s wide-ranging commitments under the EVFTA, Article 1.30 of the Amended IP Law supplements three cases in which the validity of the trademark registration certificate must be terminated:
- The use of a protected trademark for goods or services by the trademark owner or a person authorised by the trademark owner misleads the consumers about the nature, quality, or geographical origin of such goods or services;
- The protected trademark becomes the common name of the goods or services bearing that registered trademark; and
- The geographical indication of a foreign country is no longer protected in the country of origin.
2.4 A New “Bad Faith” principle
Under the previous IP Law, all trademark protection was invalidated if an applicant did not have the capacity to register the trademark, or the trademark object failed to satisfy the protection conditions at the time of approval. However, the Amended IP Law, for the first time, recognises acts of “bad faith” as an independent legal ground to oppose and invalidate a trademark application or registration. Specifically, a protection title is completely invalidated if the applicant applied for the trademark application in bad faith (with malicious intent). Guidance on the interpretation and application of this “bad faith” principle is pending from the Ministry of Science and Technology.
3. Registration of Copyrights and Industrial Property Rights
The Amended IP Law reduces and streamlines administrative procedures for copyright registration and industrial property rights. Some specific amendments include:
- Creating a legal basis for organisations and individuals to register online for copyrights and copyright-related rights;
- Setting hard deadlines for opposition proceedings for each intellectual property right to expedite the application examination process;
- Simplifying the industrial design description;
- Limiting security controls to inventions;
- Granting permission to delay publication of industrial design applications;
- supplementing more provisions on complaint settlement procedures in the field of industrial property.
4.1 Sanctions of Intellectual Property Right Infringements
The Amended IP Law provides for administrative sanctions as one of the measures to handle intellectual property infringements. The trademark owner might be entitled to seek other relief, based on the general laws of Vietnam.
Regarding criminal sanctions for intellectual property infringement, Article 1.79 of the Amended IP Law adds criminal liability of commercial legal entities in infringement cases. This means that criminal prosecution for IP infringement is no longer limited to individuals, if a legal entity’s IP violation constitutes a crime under Vietnamese law. This amendment aims to ensure consistency between the criminal law (i.e., the Penal Code 2015) and the specific regulations of the Amended IP law.
4.2. Proactive Suspension of Customs Management
Unlike the previous IP Law, the Amended IP Law puts potential trademark infringement of goods under the supervision of the customs authority. The relevant customs authority shall proactively suspend customs procedures in cases where goods are suspected of infringing upon intellectual property rights. This will occur in cases where – during the course of customs inspection, supervision and control – there are reasonable grounds to suspect that imported/exported goods are counterfeit. In this case, the customs authority must immediately notify the holder of the potentially infringed IP rights (if contact information is available) and the importer or exporter of the suspension. Within ten working days from the date of notification, if the IP right holder does not initiate a civil lawsuit, the customs authority is responsible for continuing to clear customs for the shipment
The development of Vietnam’s landscape for the protection of trademarks and other IP rights is long overdue. To remain an attractive (and safe) destination for foreign investment, a comprehensive and efficient system of IP registration, protection, prosecution, and enforcement is necessary and required by treaties to which Vietnam is a signatory. The Amended IP Law, as discussed in this article, is a step in the right direction. However, for Vietnam to merge its domestic IP protection mechanisms into international state-of-the-art protections in order to comply with such international treaties there is still room for improvement.
The information provided in this email is for information purposes only and is not intended to constitute legal advice. Legal advice should be obtained from qualified legal counsel for all specific situations.