Date: 01-08-2022 by: Banca IP Law Firm
AMENDING AND SUPPLEMENTING A NUMBER OF ARTICLES OF THE LAW ON INTELLECTUAL PROPERTY– Part 1- TRADEMARK AND GEOGRAPHICAL INDICATIONS
In the context that the strong development of science and technology and globalization are becoming the trend, Vietnam needs to amend and supplement the Law on Intellectual Property to suit the actual situation of the country and international commitments, international practice is an inevitable issue.
With 476/477 delegates voting in favor, on the morning of June 16, 2022, the National Assembly passed the Law amending and supplementing a number of articles of the Law on Intellectual Property (hereinafter referred to as the Law on Amendments and Supplements).
This article will focus on the main amendments related to Part 1: Trademarks and Geographical Indications. The next sections related to Copyrights, Industrial Designs, Patents, Plant Varieties will be summarized in other articles. Regarding Trademarks and Geographical Indications, there are following changes:
1.Revised the concept of "well-known trademark": is a mark widely known by the relevant consumers (not general consumers as previously prescribed) in the territory of Vietnam (Clause 20 Article 4);
2.Corrected the concept of "Geographical Indication" to its proper meaning: a sign that indicates the geographical origin of a product from a specific region, locality, territory or country (and not the only products of geographical origin) (Clause 22 Article 4);
3.Added the concept of "homonymous geographical indications": geographical indications having the same pronunciation or spelling." (Clause 22a, Article 4) and provisions related to homonymous geographical indications (Clause 2, Article 79 – conditions for protection, and Point e, Clause 1, Article 106-adding explanatory documents to distinguish between geographical indications);
4.Added “Audio sign” which would be a protected sign in Clause 1, Article 72 and stipulated that the trademark registration form of this mark was an audio file and a graphic representation of that sound (Clause). 2 Article 105);
5.Supplemented regulations on the validity of international registration of marks under the Protocol and Madrid Agreement on international registration of designated marks in Vietnam (Clause 8, Article 93): from the date of being accepted by the IP Office or the following day by the end of the specified 12-month period (whichever is earlier);
6.A trademark registration application, in addition to being published as before, right after the application was filed, it was also be publicized;
7.The refund for the procedure of application withdrawal was omitted (Clause 2, Article 116).
8.Added grounds for terminating the validity of a trademark in Article 95.1.h, i:
-Article 95.1.h) The use of a protected mark for goods or services by the trademark owner or a person authorized by the mark owner to mislead consumers about the nature, quality or source. the geographical origin of the good or service;
-Article 95.1.i) The protected mark becomes the common name of the goods or services registered for the mark itself;
9.Added grounds for cancellation of a trademark in Articles 96.1.a and 96.2.c
-Article 96.1.a) An applicant file a mark with bad faith;
-Article 96.2.c) Amending an industrial property registration that expands the scope of protection or changes the nature of the object of registration stated in the application;
10.Supplemented to Article 112a on the mechanism for opposing against trademark applications. The previous regulation only granted the right to have a third party's opinion. The amended IP Law No. 07/2022/QH15 added a mechanism for opposing against a trademark application in addition to the right to a third party's opinion. Thus, there will be 2 mechanisms to oppose trademark applications:
10a.Mechanism 1: Third party opinion
-As a reference source of information for the examination process of the IP Office.
-Time of submission: from the time the trademark registration application is published in the Industrial Property Official Gazette until before the date of issuance of the decision to grant a trademark protection title.
-The IP Office may not respond to such opinion.
-Fee: No fee is required.
10b.Mechanism 2: Formal third party opposition
-As an independent procedure (not meant to be a reference source of information for the appraisal process of the Department).
-Time of filing: within 5 months from date the trademark application is published.
-The IP Office must answer/resolve
-Fees: An official fee must be paid.
11.Supplemented grounds for objection to trademark registration applications
-Some grounds for trademark protection conditions (Article 74.2)
-Basing on registration rights and filing on bad faith (Article 117.1.b)
Article 117.1.b)…. there are grounds to confirm that the applicant has no right to register an industrial property or register a trademark on the ground of bad faith.
12.Added grounds for refusal of a trademark application
-Grounds on the distinctiveness of the mark (Article 74.2)
-Grounds on signs that were not protected as a trademark (exclusion signs) (Article 73)
-Grounds on registration rights and bad faith (Article 117.1.b)
-The modification or supplementation of the application expanded the scope of protection disclosed or stated in the application or changed the nature of the applied objects stated in the application (Article 117.1.d).
13.Amended and supplemented regulations on distinctiveness of trademarks in Article 74.2
-Added grounds for refusal for signs were "the usual shape of the goods or a part of the goods, the usual shape of the packaging or the container of the goods which had been used regularly and widely recognized before filing date” (Article 74.2.b),
-Adding grounds for refusal in case the mark was "a sign that significantly added value to the goods" (Article 74.2.c)
-Amended grounds for refusal of a sign which was similar to an expired trademark registration: the expiration time was shortened from 5 years to 3 years (Article 74.2.h)
-Added grounds for refusal of a sign which was identical or confusingly similar to the name of a plant variety that was protected or being protected in Vietnam if such sign was applied for the goods was a plant variety of the same or similar species, or products harvested from plant varieties (Article 74.2.o)
-Added grounds for refusal of a sign which was identical or confusingly similar to the names and images of characters and images in widely known works under copyright protection of others that had been widely known before the filing date of the sign, except with the permission of the owner of the work (Article 74.2.p).
14.Supplemented the grounds for signs that were not protected as trademarks (exclusion signs) in Article 73. Added signs which were not protected as a trademark:
-Article 73.1: National anthem of the Socialist Republic of Vietnam and of other countries and international anthems;
-Article 73.6: The sign was the inherent shape of the goods or was required by the technical characteristics of the goods;
-Article 73.7: A sign contained a copy of a work, unless authorized by the owner of the work.
15.Amended and supplemented the concept of trademark use in Article 124.5.b
-No longer consider "circulation" as an act of using the mark.
-Adding "delivery" is the act of using the mark.
The revised law takes effect from January 1, 2023, except for the above provisions on sound protection.