VIETNAM NEW AMENDMENTS OF SOME REGULATIONS OF LAW ON INSURANCE BUSINESS AND LAW ON IP

Relating to intellectual property (IP), the NOIP has recently notified 5 following major issues of this amended Law that applicants should be aware of:

1, Approach of registration of industrial property rights (IPRs)

The method of filing an application for registration of industrial property rights is supplemented in Clause 3 of Article 89, whereby the applications can be filed electronically under the NOIP’s online filing system. 

2, Patent

• Regarding the novelty of the invention (Article 60): extending the exception of the novelty of the invention on applicant/person who disclosed the invention, means and location of disclosure, and extending the grace period for such disclosure (from 6 months to 12 months).
• Regarding the inventive step of the invention (Article 61): adding provision that the inventions which are disclosed as exceptions under Article 60 shall not be used as a basis for examining the inventive step of such inventions.

3, Trademark

• Regarding use obligations of trademark (Article 136): supplementing the regulation that the use of trademark by the assignee under a license agreement is also considered a trademark use by the trademark owner.
• Regarding the validity of license agreement (Article 148): A license agreement does not have to be registered at the NOIP to have legal validity for the third party.

4, Geographical indication

• Regarding the basis of arising, establishing rights of geographical indications (Clause 3 Article 6): Supplementing basis of establishing geographical indications rights according to international treaties which Vietnam is a member.
• Regarding the object shall not be protected as a geographical indication (Article 80):
  • Detailing the basis for determining names or indicators that have become common names of goods based on perceptions of relevant consumers in the Vietnamese territory.
  • Amending and supplementing cases that are not protected for geographical indication which identical with or similar to a trademark with earlier filing date or priority date, if the use of the geographical indication is likely to cause confusion of the commercial origin of the goods.
  • Supplementing provision on handling international proposals on geographical indications (Article 120ª).

5, Protection of IPRs

• Regarding self-protection rights (Article 198): adding two new provisions on:
  • The right to require the Court to force the plaintiff to pay attorneys’ fees or other expenses in an intellectual property infringement lawsuit if the defendant is concluded not to commit infringement rights;
  • The right to claim compensation for the abuse of procedures to protect intellectual property rights of other organizations and individuals.
• Regarding the basis of determining the level of compensation for damage caused by IP infringement of (Article 205): To supplement the determining ground that is based on other calculation methods given by IP right holders.
• Regarding procedures for applying the suspension of customs procedures (Article 218): supplementing the provision on customs authorities’ obligations to provide information to IP right holders within 30 days from the signing date of the decision to apply administrative measures to handle counterfeit goods.

Law on amendments and supplements of some regulations of Law on Insurance Business and Law on IP take effect from November 1, 2019. However, the intellectual property regulations in this Law come into effect from January 14, 2019 for registration applications filed from January 14, 2019, request for cancellation of trademark registration filed from January 14, 2019, lawsuit relating to IP infringement that is accepted for settlement from January 14, 2019, other request relating to protection of IP rights that filed from January 14, 2019.

Compiled by: Banca IP Law Firm