The Amended IP Law introduces comprehensive revisions, supplementations and/or repeals of more than 100 articles, which is nearly half of the provisions of the existing IP Law of Vietnam. These figures may be a vivid illustration in denoting the importance and necessity for in-house IP legal counsels to have a look at the new legal framework and update their brand protection strategies in Vietnam. While there is no one-size-fits-all approach, we discuss below some major changes as delivered by the Amended IP Law that could be of concern to in-house IP legal counsels.
1. Brand management
1.1. Sound marks
The Amended IP Law opens a new framework for the protection of sound marks, and it technically takes effect as from 14 January 2022 to comply with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). That said, the Vietnam IP Office would have to wait for a guidance decree or circular before it could actually start receiving new applications for sound marks.
If your firms have had a sonic branding in place, be prepared for upcoming new filings of sound marks, bearing in mind that Vietnam applies the First-to-File system.
1.2. More refusal grounds for trademarks
You may need to update your strategies on clearance and prosecution of trademarks because your trademarks may encounter more obstacles after the Amended IP Law takes effect on 1 January 2023.
Your trademarks of interest will be deemed ineligible for trademark protection if (i) they are considered inherent shapes/forms of products or defined by technical characteristics of products, or (ii) they comprise copyrighted works without permission from copyright owners.
You may need to run additional checks on relevant databases of industrial design, plant variety and copyright (catalog search) when you clear your trademarks if your current trademark searching platforms do not feature such data. The Amended IP Law gives out new paths to block a trademark from maturing into registrations by possible citation of prior industrial designs, names of prior plant varieties, and names/images of characters in/of prior copyrighted works.
1.3. Early disclosure of trademark applications
The Amended IP Law requires that all applications be disclosed to the public as soon as they are duly filed with the Vietnam IP Office.
The routine publication of trademark applications on the Vietnam IP Gazette, which is two months after such applications have passed their formalities examination, remains unchanged.
As such, it will be necessary to do the timing calculation again in case you want to continue the tactics of withholding new trademark applications of your firms before the actual launching of equivalent new brands on the market.
The scope, time frame and platforms for such early disclosure of applications still remain unclear and would need a guidance decree/circular.
2. Brand disputes – admin and registry
2.1. Trademark opposition
Currently, there is neither a strict opposition deadline nor fixed opposition procedures in Vietnam. The so-called opposition runs in parallel with substantive examination of a trademark, which is nine months from the publication date of the application at issue. This time frame tends to prolong substantially as the actual pending period of a trademark application may take up to 24 months.
We are glad to see that the Amended IP Law introduces two separate frameworks for third-party observation and opposition. While the third-party observation will likely play a similar role with the current opposition, the new trademark opposition will have a strict five-month deadline and explicit fixed procedures, which will be issued in due course via a guidance decree/circular.
You may need to update your trademark watch service and/or docketing system to catch up on the new opposition deadline in Vietnam when the Amended IP Law takes effect.
2.2. Trademark cancelation/invalidation
Besides a yearly audit of trademark portfolio for checking whether or not any of your trademarks have become vulnerable to nonuse cancelation, counsels should extend the audit by covering trademark genericide risks. Starting next year, a third party may cancel your trademark registrations if they successfully demonstrate that your trademarks have become common names of products/services.
There is more room to combat problematic trademarks in the post-registration stage if you do not or fail to prevent them from maturing into registrations. Thanks to the Amended IP Law, you can initiate a cancelation against these trademarks by demonstrating that they are improperly used in a way that misleads/deceives consumers as to the nature, quality or place of origin of products/services. In addition, "bad faith filing act" will become a direct and formal ground for trademark invalidation.
3. Brand enforcement
3.1. Unlike the current IP Law, the Amended IP Law sets out trademark counterfeit goods and geographical indication counterfeit goods in separate provisions. The Amended IP Law also includes "stamps" and "labels" as additional features for identification of trademark counterfeit goods, in addition to existing "goods, packaging of goods bearing trademarks or signs." The better definition of trademark counterfeit goods hopefully facilitate and highlight Vietnam's efforts in combatting counterfeit goods in the local market.
3.2. The Amended IP Law has repealed and simplified a couple of provisions on administrative measures. Particularly, there is no longer a limited list of applicable administrative remedies. Instead, the Amended IP Law leaves out these rooms generally for "being in line with relevant laws and regulations on administrative violations handling and sanctions." Of note, the initial draft amendment of the IP Law aimed to reduce administrative measures and transfer most of the actions to local courts in an effort to push for the establishment of the Vietnam IP Court; however, this move did not receive positive support from right holders and local IP practitioners during the public consultation period of the draft law.
3.3. Customs measures will not only be taken at the request of right holders going forward. The customs authority shall proactively take action as well. To this end, counsels may consider actively joining annual technical training programs with the customs authority to encourage them to take more ex officio customs actions during their course of inspection, supervision and control of import and export activities.
3.4. It will be more challenging to tackle squatted domain names because the Amended IP Law will limit the domain name related problematic acts to "possess" and "use" only while the current IP Law covers more acts of "register, possess the rights to use, or use." The Amended IP Law also requires you to demonstrate that the domain name squatters (i) have "bad faith," (ii) "take advantage of reputation and fame" of your trademarks, and (iii) "gain illicit profits" from their squatting acts.
In a nutshell, we suggest you revisit your brand protection strategies, from routine tasks through to more contentious and substantial affairs. You may add one more layer to your post-registration and maintenance work to ensure effective management of your portfolio. If possible, you should also double-check with your trademark docketing, trademark clearance, and trademark watch services to ensure they reflect relevant changes of the Amended IP Law of Vietnam.
The Amended IP Law will come into effect on 1 January 2023, with exceptions saved for sound mark protection (14 January 2022) and protection of test data for agrochemicals (14 January 2024).
The Amended IP Law seems to leave various provisions for the government to further detail. This indeed raises concerns as to whether or not the Amended IP Law can be implemented as soon as it takes effect at the beginning of 2023.
