[what you need to know] How Vietnam’s Amended IP Law Will Impact Trademarks

The recently approved comprehensive revisions to Vietnam’s Law on Intellectual Property (“Amended IP Law”) mark the most significant changes to Vietnam’s intellectual property regime since the last time the IP Law was revised more than a decade ago, in 2009, affecting 80 out of 222 articles and introducing 12 new ones.

 

The National Assembly of Vietnam approved the Amended IP Law on June 16, 2022, and, except for a few provisions, it will take effect on January 1, 2023.


Some notable points of the revised law regarding trademark matters include:


1. Protection of Sound Marks


To fulfil Vietnam’s commitments as part of the CPTPP, the Amended IP Law adds sound marks to the list of signs eligible for protection as trademarks. However, to more easily examine these non-traditional marks, the law provides that sound marks must be able to be presented in graphical representations.


Article 73.7 was also supplemented to include a ground for refusal of sound marks that comprise “copies [in whole or part] of copyrighted works, unless with consent from the copyright holders”. This provision is wide-reaching and may be used in many cases apart from those involving sound marks, and it is expected to better secure copyright in broad terms.


2. Definition of Well-Known Mark


Article 4.20 modifies the definition of a well-known mark to mean one that is “widely known by the relevant sectors of the public in the territory of Vietnam” instead of the old general definition of “widely known by consumers throughout the territory of Vietnam”. This new definition is in line with international standards, and with this positive step, the chances of trademark owners having their marks recognized as well-known marks in Vietnam should increase.


The Amended IP Law also clarifies that well-known status must be acquired before the filing date of a later trademark to serve as grounds for refusal of such later mark. Furthermore, the Amended IP Law confirms that the recognition of a trademark as well-known might be determined based on either several or all of the eight criteria indicated in Article 75.


3. Reduction of Time Limit for Expired Mark to Be Used to Refuse Later Marks


Given the shorter life cycles of products nowadays, and to make Vietnam’s regulations more compatible with the laws and practices of other jurisdictions, the time limit for an expired mark to be used to prevent a later-filed trademark from being protected has been shortened to three years (instead of five years under the previous provision).


4. Stay of Trademark Prosecution Pending Cancellation or Invalidation Proceedings


In the past, due to the lack of regulations, trademark applicants often faced a dilemma when the prosecution of a trademark was not compatible with the cancellation or invalidation proceedings against cited marks. However, under the Amended IP Law, applicants are entitled to request Vietnam’s IP Office to halt trademark examination procedures of their marks to wait for the outcome of the related non-use cancellation or invalidation proceedings. This is a small step that may have a major impact on one’s trademark destiny.


5. “Bad Faith” Officially Available as Ground for Opposition and Invalidation


The lack of bad-faith grounds has long been a huge difficulty for trademark holders, especially for those without trademark registration in Vietnam, to fight against trademark squatters. For the first time, the Amended IP Law recognizes the act of “bad faith” as an independent legal ground to oppose and invalidate a trademark application or registration.