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.
6. New Grounds to Refuse Pending Trademark and Termination/Invalidation of Registered Marks
The Amended IP Law adds two more grounds to refuse pending applications: (i) the use of the name of a plant variety that has been or is being protected in Vietnam if such sign is registered for goods that are a plant variety of the same or similar species or a product of the same species harvested from plant varieties; and (ii) the use of names and images of characters or figures in works covered by copyright protection of others that were widely known before the filing date of the application.
The Amended IP Law also adds two more grounds for termination of the validity of a registered trademark: (i) such registered trademark has become the common (generic) name of goods or services bearing that registered trademark; and (ii) the use of a protected trademark by the owner of the trademark or by a person authorized by the owner misleads consumers as to the nature, quality, or geographical origin of the goods or services. This amendment reflects Vietnam’s commitments under the EVFTA.
There are two new legal grounds for invalidating a registered trademark in the Amended IP Law: (i) a registered trademark may be partly or entirely cancelled if the applicant for that trademark is ruled to have bad faith; and (ii) the revision or modification of a trademark application has broadened or changed the nature of the originally filed trademark.
7. More Detailed Reasons to Refuse Three-Dimensional Trademarks
The Amended IP Law provides additional grounds and clarifies the grounds for refusal of three-dimensional trademarks:
The three-dimensional mark is the generic shape of the goods.
The three-dimensional mark is merely a representation of the necessary technical (functional) characteristics of the goods.
The three-dimensional mark substantially increases the value of the goods.
While the first two grounds are common and clear, the third ground is quite new and vague, and further guidance on how to interpret and apply this provision is needed.
8. Parallel Procedures of Trademark Opposition and Third-Party Opinions
The Amended IP Law introduces a new mechanism allowing a third party to oppose a trademark application, in addition to the long-available mechanism for third parties to share written opinions during the examination procedures, which remains unchanged. It is worth noting that a third party’s written opinion only serves as a reference source for examining a trademark application, and can be filed at any time from the publication date of the mark in question until prior to the date of the decision on the grant of protection title of such mark. Meanwhile, the opposition is an independent scheme that allows any third party to file an opposition against a trademark application within five months from the publication date of the trademark application.
Although there are still some unclear provisions, in general, the Amended IP Law is a progressive step that makes trademark prosecution easier, secures rights in a better way, and moves Vietnam closer to the world’s treaties and common practices.
Source: CCIPV / Linh Thi Mai Nguyen / Chi Lan Dang / Tilleke & Gibbins