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Notice of the Vietnam Intellectual Property Office on the implementation of some articles of the CPTPP
From 14 January 2019, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership ("CPTPP") relating to the various requirements for Vietnamese intellectual property ("IP") legal framework took effect. One of the most notable changes is the removal of requirement for the trademark license agreement to be effective against a third party.
On 01 February 2019, the Vietnam Intellectual Property Office ("VNIPO") issued Notice No. 1926/TB-SHTT ("Notice No. 1926") providing for the implementation of a number of articles of the CPTPP. The guidance under Notice No. 1926 applies to applications for utility solution/patent/geographical indication filed from 14 January 2019 by citizens of members of the WTO or parties to the Paris Convention.
We set out below the main content of Notice No. 1926:
1. Trademarks - Recordal of a Trademark License no longer affects the validity of the License (Art. 18.27 CPTPP)
Trademark license agreements are effective against third parties, regardless of the recordal status at the VNIPO. This regulation replaces the requirement for recordal provided under Article 148.2 of the IP Law.
Additionally, the use of a trademark by the licensees will be considered as the use of that trademark by the trademark holder, regardless of the recordal status at the VNIPO.
Notice No. 1926 only applies to applications filed by citizens of members of the WTO or parties to the Paris Convention. Therefore, it is unclear whether or not the guidance on exemption from recordal for trademark license agreements will apply to applicants from CPTPP's members only, or if it will have a general application. Additionally, since this is only a notice from the VNIPO, it is unclear how the other state authorities, including tax offices and enforcement bodies, will interpret and apply the regulation while the recordal requirement is still regulated under Vietnamese IP Law.
2. Geographical Indications
a. Refusal of granting protection to a geographical indication on grounds of likelihood of confusion with protected trademarks (Art. 18.32.1b CPTPP)
Opposition to a geographical indication on the grounds of "likelihood of confusion" with trademarks will be considered, in place of the grounds of "will confuse" provided under Article 80.3 of the IP Law.
Geographical indications are usually pre-existing (regardless of the registration procedures) and known by many people, and even famous. Thus, the likelihood of "being confused" is higher than the possibility of "causing confusion" with a trademark.
b. Procedures for examination of an application for a geographical indication in the form of the translation or transliteration of that geographical indication (Art. 18.32.5 CPTPP)
The VNIPO will examine an application for a geographical indication in the form of the translation or transliteration of that geographical indication under the procedures adopted for an application for a normal geographical indication.
c. Examination of whether or not a term is the common name for goods in Vietnam (Art. 18.33 CPTPP)
When examining an application for a geographical indication, the VNIPO will consider how the Vietnamese consumers understand the term, possibly including the following criteria:
(i) whether or not the term is used to refer to the goods at issue in information sources such as dictionaries, press, market survey reports, relevant websites; and
(ii) how the goods denoted by the term are marketed and used in commerce in Vietnam (used in recognized international standards for referring to a kind or group of goods, for example: tariff rate schedule, etc.).
d. No protection to an individual component of a multicomponent term that is protected as a geographical indication if that individual component is the common name for the associated goods (Article 18.34 CPTPP)
If the VNIPO accepts to grant protection to an application for a geographical indication composed of multi components, and that multi-component term contains an individual component which is the common name for the associated goods in Vietnam, the VNIPO will reserve a disclaimer (not exclusively protected) over that individual component.
3. Patents - Disregard of public disclosures resulting in possible loss of novelty or inventive step for invention protection (Article 18.38 CPTPP)
The VNIPO will not consider a public disclosure of invention as a loss of novelty if that public disclosure:
(i) is made by the person having the right to register the invention or by a person that obtained the information directly or indirectly from the person having the right to register the invention (with or without consent from the person having the right to register the invention); and
(ii) occurred within 12 months prior to the filing date of the application to the VNIPO.
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Mentioned public disclosures will not be cited to determine the novelty or inventive step of the relevant invention application.
Notice No. 1926 should be considered as temporary guidance from the VNIPO while Vietnam has not amended its current intellectual property law yet. Amendment to Vietnam's intellectual property law reflecting certain CPTPP provisions is expected to be issued by May or June 2019.
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