On 16 June 2022, Vietnam’s National Assembly ratified the amended Intellectual Property Law (Amended IP Law). The Amended IP Law contains revisions and supplementations for more than 100 articles.

The Amended IP Law will take effect on 1 January 2023 (Effective Date) save for some provisions. For example, the provision on sound marks protection takes effect on 14 January 2023 and the provisions on the protection of test data for agricultural chemicals take effect on 14 January 2024.

In this update, we set out some remarkable points of the Amended IP Law in comparison with the current law.

1.  Copyright and Related Rights

The Amended IP Law introduces new definitions for author and co-author which derive from the definitions specified in Decree 22/2018/ND-CP with detailed clarifications. Particularly, an author is a person who directly creates the work. Co-authors are recognized only when there are more than 2 creators directly creating the work, provided that their contributions to the work are combined into a complete whole. This amendment aims to facilitate the transfer or license of copyright ownership and to minimise the disputes relating to the ownership of collaborative works.

The most important point of the Amended IP Law is that moral rights, such as the right to change the work’s title and work modification, can be transferred by an agreement subject to the respective types of copyrights. For example, an author may license their right to name their works to the party acquiring the relevant property economic rights; the author and the copyright holder of a computer program have the right to agree in writing with each other on its repair and upgrade. This would address existing problems relating to the use of moral rights, including but not limited to changing the title of a work, and modifying or upgrading a computer program.

2. Indutrial Property Rights

2.1 Recognition of Sound Marks

Under the Amended IP Law, Vietnam will recognise sound marks as new registrable subject matters (in the form of trademarks) for the very first time. This results from Vietnam’s accession to international treaties such as the European Vietnam Free Trade Agreement (EVFTA) and Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). Specifically,  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 colours; or
• a sound sign is a sign that is graphically represented.

2.2   Terminating the Validity of Registered Trademarks

To protect the interests of consumers and be compliant with the EVFTA, the Amended IP Law also supplements the cases of termination of the validity of the trademark registration certificates. The supplemented cases include:

• the use of a protected trademark for goods or services by the trademark owner or by a party authorized by the trademark owner misleads consumers as to the nature, quality or geographical origin of such goods or services; and
• the protected trademark becomes the common name of goods or services bearing such protected trademark.

2.3  Bad Faith as Ground to Oppose and Cancel Trademarks

Another modern approach of the Amended IP Law is to record bad faith as grounds to cancel the validity of the trademark registration certificates or oppose issuing the trademark registration certificates, which is applied in practice internationally. The interpretation and application of bad faith will be guided by the Ministry of Science and Technology.

3. Copyright Registration and Industrial Property Rights Establishment

To facilitate the process for registration of copyright and related rights, and procedures for establishing industrial property rights, the procedures have been simplified and improved. Below are some examples:

• a legal basis for online registration of copyright and related rights has been created;
• hard deadlines for opposition proceedings for each intellectual property right have been set to speed up the application examination process;
• there are fewer requirements for industrial design descriptions;
• it is permitted to delay the publication of industrial design applications as requested by the applicants;
• more provisions on complaint settlement procedures in the field of industrial property are included.

The simplification of the registration procedures of the IPRs mentioned above will encourage registration activities for the establishment of IPRs, create a solid basis and evidence in identifying intellectual property right holders and protected objects, as well as be a premise for the exploitation of IPRs as well as the enforcement of such rights in the future.

4. Intellectual Property Enforcement

4.1 Administrative Sanctions of IPR Infringements

The Government consulted the National Assembly on sanctioning administrative violations infringing of IPRs. According to the previously published draft of the Amended IP Law in 2021, administrative sanctions will only apply to infringements of copyrights, related rights, trademarks, geographical indications and plant varieties. Infringements of patent rights, industrial designs, layout designs, trade names, business secrets and unfair competition will be handled by civil remedies. However, the officially approved Amended IP Law does not record the mentioned comments from stakeholders and provides that all infringements of the IPRs will be subject to administrative sanctions.

4.2 Proactive Suspension of Customs Management

In addition, based on the Amended IP Law, customs control is proactively applied at the border. If there is a solid ground to convince that importing or exporting goods are counterfeits during the inspection and supervision, customs authority must immediately notify the right holder (if contact information is available) and the importer or exporter of such suspension. Such tighten measures on intellectual property enforcement will ensure the IPRs’ protection schemes are conducted more effectively and transparently.