The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) came into effect in Vietnam on January 14, 2019, with some of its provisions on intellectual property taking effect immediately. (Under the Vietnamese legal system, when the provisions of international treaties such as the CPTPP differ from national law, the international provisions will apply.)
Vietnam intends to amend its laws that are incompatible with the CPTPP, including the Law on Intellectual Property (IP Law), to be in line with the international treaty in the near future. In the meantime, however, provisional measures are necessary. Accordingly, the National Office of Intellectual Property (NOIP) issued Notice 1926 dated 1 February 2019 to provide guidance on IP regulations in the transition period.
The provisions in Notice 1926 are mainly in the nature of clarifying and broadening the existing rules in the IP Law and related regulations, though some provide guidance on newly raised issues. Details of these provisions are presented below.
Please click here to see an English translation of the entire notice.
Recordal of trademark license agreements (Article 18.27 of the CPTPP)
Under the IP Law, a license agreement is effective as agreed by the parties but is only effective to a third party if the agreement is recorded with the NOIP. However, under the CPTPP and Notice 1926, from 14 January 2019, license agreements are valid—between the parties and with third parties—without recordal. The exemption from recordal for license agreements applies to trademark licenses only.
Notice 1926 further clarifies that the use of a trademark by a licensee is also deemed use of the trademark by the holder in a proceeding related to the acquisition, maintenance, or enforcement of trademarks, regardless of whether the license agreement was recorded with the NOIP.
II. Geographical Indications
1. Third-party opposition to geographical indication applications (Article 18.32.1 of the CPTPP)
Under the CPTPP and Notice 1926, opposition to a geographical indication application on the grounds that the geographical indication is “likely to cause confusion” with a protected trademark must be considered (instead of only “will cause confusion,” as under the IP Law), taking into account that a geographical indication is often a pre-existing object that is likely to “be confused” rather than “cause confusion” with a trademark.
2. Protection of translation or transliteration of geographical indication (Article 18.32.5 of the CPTPP)
The CPTPP and Notice 1926 stipulate that applications for geographical indications in the form of transliteration/translation will be handled in the same manner as regular geographical indication applications. The current IP Law is silent on this matter.
3. Determination of whether a term is the common name of goods (Article 18.33 of the CPTPP)
Although this issue has been stipulated in the IP Law, the CPTPP and Notice 1926 provide further details on the methods/criteria for determining whether a term is a common name. These can include: (i) sources of information from dictionaries, newspapers, websites, etc., and (ii) how products are marketed and used in commerce (import and export tariffs, etc.).
4. Non-protection of an individual component of a multi-component term if that individual component is the common name of the related goods (Article 18.34 of the CPTPP)
Under the CPTPP and Notice 1926, if a geographical indication which is a multi-component term contains a component identified as the common name of goods in Vietnam, then when the protection is approved, the component which is the common name of goods will be excluded from the scope of protection (not separately protected). The current IP law is silent on this matter.
Grace period applicable to utility patents (Article 18.38 of the CPTPP)
The CPTPP and Notice 1926 provide an extended grace period for public disclosure of 12 months, rather than the 6-month period in the current law. This grace period is counted from the filing date, rather than the priority date, which had been a matter of confusion under the current law. The grace period also applies to both the novelty and inventive step requirements, rather than only the novelty requirement as in the current law, and includes a very broad scope of disclosures.
IV. Scope of Application
The scope of Notice 1926 is limited to citizens of member countries of the WTO and the Paris Convention. However, as there are 177 contracting parties of the Paris Convention and 164 members of the WTO, the scope of application is very broad.
There are still a number of important issues under the CPTPP that Notice 1926 has not yet provided guidance on, such as the registration of sound/scent marks, the bona fide use of descriptive terms, the recognition of well-known trademarks, the registration of a geographical indication as a trademark, etc. The amendment of IP legislation is expected to clarify these issues.