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Vietnam’s IP Law Amended to comply with CPTPP

20/06/2019
Draft Law amending and supplementing the Law on Insurance Business and the Law on Intellectual Property was passed with 100% votes...


During the 7th working session of the 14th National Assembly of Vietnam, on June 14, 2019 the National Assembly discussed and approved seven draft laws: Law on Education (revised), Law on Architecture (revised), Law on Tax Management (revised), Law on Public Investment (revised), Law on Criminal Judgements Enforcement (revised), Law on Alcohol Harm Prevention and Control, and Law on amending and supplementing some articles of Law on Insurance Business and Law on Intellectual Property Rights.

The Draft Law on amending and supplementing the Law on Insurance Business and the Law on Intellectual Property was passed with 428/428 (100%) votes. The primary purpose of this draft law is to bring the existing Law on Intellectual Property in line with the terms of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which came into effect in Vietnam on January 14, 2019.

Below are the amendments and supplements to the Law on Intellectual Property:

(Excerpt from Law amending and  supplementing some articles of the Law on Insurance Business and the Law on Intellectual Property which was approved by the National Assembly of Vietnam on June 14, 2019. Underlined words are content amended or supplemented)

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Article 2. Amending and supplementing a number of articles of the IP Law as follows:

1. To amend Clause 3 and supplement Clause 4 of Article 60 as follows:

"3. An invention shall not be considered as lacking of novelty if it is disclosed by the person entitled to registration as stipulated in Article 86 of this Law or by a person that obtained the information directly or indirectly from such entitled-to-registration person provided that the patent application is filed within twelve months from the date of disclosure.”

4. The provision of clause 3 of this Article shall not be applied to case  where an invention is disclosed in applications for, or registrations of, intellectual property rights made available to the public by the   intellectual property agency, unless erroneously published or unless the application was filed  without the consent of the person entitled to registration as stipulated in Article 86 of this Law, by a third person who obtained the information directly or indirectly from such entitled-to-registration person. 

2. To amend Clause 1 and Clause 3 of Article 80 as follows:

"1. Designations, indications having become generic name of goods as per the perception of relevant consumers in Vietnam”.

"3. Geographical indications identical with or similar to a mark having been protected if their

use is likely to cause confusion as to the origin of the products;"

3. To supplement Clause 3 to Article 89 as follows:

"3. Applications for registration of industrial property rights shall be submitted in written form to the state management agency of industrial property rights or to other application-receiving locations established by this agency or in electronic form according to the online filing system set up by the state management agency of industrial property rights.”

4. To supplement Article 120a  after Article 120 as follows:

"Article 120a. Recognizing and protecting geographical indications according to international treaties

The publication, processing of opinions of a third person, assessment of the protection ability and determination of  the protection scope for geographical indications that are required to recognize and protect according to international treaties to which the Social Republic of Vietnam is a member shall be made in accordance with the relevant provisions of this Law for geographical indications in the application submitted to the state management agency of industrial property rights. "

5. Amend Clause 2 of Article 136 as follows:

"2. Trademark owners are obliged to use the trademark continuously. The use of a trademark by the trademark licensee under a licensing agreement shall also be considered a trademark use by the trademark owner. In case the trademark is not used continuously for five years or more, the trademark registration certificate shall be invalidated in accordance with Article 95 of this Law. ”

6. To amend Clause 2, supplement Clause 3 of Article 148 as follows:

2. For the industrial property rights established on the basis of registration as referred to in

Article 6.3(a) of this Law, a licensing contract of industrial property object shall be effective

as agreed by the parties.

3. The licensing contract of industrial property objects in Clause 2 of this Article shall only be effective to a third party upon registration with the state administration agency of industrial property rights except for the licensing contract of trademark. ”

7. To supplement Clause 4 and Clause 5 of Article 198 as follows:

"4. Organizations, individuals who are defendants in intellectual property disputes, if the Court concludes that they do not commit acts of infringement, may request the Court to force the plaintiffs to pay them reasonable fee to hire a lawyer.

5. Organizations, individuals that suffer from acts of abusing other people's intellectual property protection procedures may request the Court to force the abusers to compensate for damage caused by the abuse, including reasonable costs to hire a lawyer. ”

8. To amend Clause 1 of Article 205 as follows:

1. In case the plaintiff succeeds in proving that an infringement of intellectual property rights has caused physical damages to him/her, he/she shall have the right to request the court to determine the rate of compensation on one of the following bases:

a) The total physical damage determined in an amount of money plus the profits gained by

the dependant as a result of infringement if reduced profits of the plaintiff have not yet been included in the total physical damage;

b) The value of the transfer of the right to use the intellectual property subject matter with the presumption that the defendant has been transferred by the plaintiff with the right to use that intellectual property subject matter under an agreement for using such intellectual property subject matter to the extent equivalent to the act of infringement committed; or

c) Other legal bases given by the right holder;

d) Where it is impossible to determine the rate of compensation in accordance with

subparagraphs a) and b) of this clause, that rate shall be fixed by the court depending on the loss level but not exceeding VND 500 million.

 9. Modify clause 1 Article 218 as follows:

When a person who requests for the suspension of customs procedures has properly

performed his/her obligations provided for in Article 217 of this Law, the customs office

shall issue the decision on suspension of customs procedures with regard to relevant lots of goods. Within 30 days from the date of the suspension decision, the customs office provides information on the name and address of the shipper, exporter, consignee, or importer; a description of the goods, the quantity of goods, and the country of origin of the goods (if known) to the right holder.".

Article 3. Transitional provisions

1. Activities covered by this Law, arising from January 14, 2019 to the date this Law comes into effect shall be implemented in accordance with the Comprehensive and Progresive Trans-Pacific Partnership Agreement

Article 4. Effectiveness

1. This law takes effect from November 1, 2019.

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4. Regulations regarding intellectual property in this Law apply to:

a) An application for registration of an invention, utility solution, industrial design, trademark, layout design or geographical indication shall be submitted to the state management agency of industrial property rights from January 14, 2019.

b) Procedures for canceling the validity of Patents for inventions, Patents for utility solutions, Certificates of registration of geographical indications of the applications filed from January 14, 2019;

c) Procedures for invalidation of trademark registration certificates shall be carried out from January 14, 2019;

d) Procedures for protection of intellectual property rights are required from January 14, 2019.

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