Vietnam’s New Decree on Industrial Property Rights
The Vietnamese government recently introduced a new decree containing a set of guidelines for the establishment and safeguarding of industrial property rights. We discuss key provisions and implications.
On August 23, 2023, the Vietnamese government introduced Decree No. 65/2023/ND-CP (hereinafter referred to as “Decree 65”) which serves as a comprehensive set of guidelines for the implementation of specific aspects of the Vietnamese Intellectual Property (IP) Law of 2022 (2022 IP Law) for the establishment and safeguard of industrial property rights (also shortened as IPR). Its immediate effect came into force on the same day it was promulgated.
Decree 65 is designed to replace Decree No. 103/2006/ND-CP and certain provisions of Decree No. 105/2006/ND-CP. These preceding decrees have been instrumental in directing the protection and enforcement of industrial property rights in Vietnam since the 2005 Vietnamese IP Law was passed.
While highlighting the essential aspects embedded in Decree 65, this article primarily focuses on two major categories of newly introduced changes: the establishment and enforcement of industrial property rights holders. Both of these changes can significantly affect industrial property rights holders seeking protection and the exercise of their rights in Vietnam.
Additionally, we also present the treatment of industrial property rights under international law, shedding light on the country’s commitment to fostering an environment conducive to international collaboration and innovation.
Key provisions introduced in Decree 65
Decree 65 introduces several key provisions, including (but not limited to):
- Strengthened IP enforcement mechanisms: Stronger emphasis is placed on IP enforcement. This is a vital step in the fight against counterfeit products and IP infringement, which previously posed challenges to businesses operating in Vietnam.
- Enhanced protection for copyrights, trademarks, and patents: Copyright owners, trademark holders, and patent creators will find improved protection under the new decree. This is essential in ensuring that innovation and creativity are rewarded and secured.
- Streamlined registration and dispute resolution processes: Decree 65 streamlines the registration process and facilitates smoother dispute resolution procedures, easing administrative complexities for both local and foreign investors.
Industrial property rights
The procedure to establish industrial property rights per Decree 65 is presented in the table below.
|No opposition procedures for international ID and trademark applications||Decree 65 outlines procedures for industrial property rights establishment.
Covers PCT applications for inventions and Madrid applications for trademarks.
Includes newly added procedures for Hague applications for industrial designs.
Unlike national applications, international applications under the La Hay and Madrid systems for ID and trademarks in Vietnam will not undergo official opposition procedures.
Third parties can only submit written opinions to VNIPO for reference, without an obligation for VNIPO to address them promptly. This adjustment aims to expedite the examination process for international applications.
|Limitations on trademark assignment||Decree 65 clarifies the grounds for refusing trademark assignments, emphasizing the potential for confusion due to identical or confusingly similar marks, similarity in goods or services, and misleading elements. These detailed criteria guide brand owners effectively, helping to avoid potential disputes and risks during the assignment process.|
|New applications and procedure forms||All forms for industrial property matters have been replaced.|
|Introduction of electronic registration certificates||Applicants can now opt for electronic or paper certificates, streamlining post-registration processes.|
|Amendment||Amendments to trademark specimens within the registration certificates are now permissible for non-exclusive minor details that do not compromise the distinctiveness of the registered mark.|
|Security control of inventions||Detailed procedures for security control of inventions and a list of relevant technical fields.|
|Industrial design applications under the Hague Agreement||Articles 22 to 24 of Decree 65 establish specific procedures for filing international industrial design applications under the Hague Agreement, aiming to simplify the application process and encourage more international design filings from Vietnam.|
|Compensation of patent owner||Article 42 of Decree 65 provides a structured mechanism for compensating patent owners in cases where delays in granting marketing authorization for pharmaceutical products occur. This provision ensures fair treatment for patent holders, promoting a more conducive environment for pharmaceutical innovation in Vietnam.|
|Transitional provisions||Decree 65 governs the treatment of confidential patent applications and Hague applications submitted before its effective date, providing a clear roadmap for the handling of applications filed prior to the decree’s enforcement, ensuring a smooth transition for existing applicants.|
Within the industrial property rights framework, the implementation of precise regulations is crucial for the protection of innovations and creations.
Decree 65 delineates comprehensive guidelines, defining acts of infringement, determining losses and damages, and outlining specific measures for handling IPR-infringing goods. Additionally, it establishes streamlined customs control procedures for IPR-related exports and imports. The table below presents the key provisions outlined by Decree 65 in this regard.
|Determining acts of infringement||An act is considered infringement if it meets the following conditions:
|Determining loss/damage||Loss/damage caused by IP infringement is determined based on actual material and spiritual harm incurred by the rights holder.
“Actual” loss/damage is defined by three conditions: the ownership of tangible benefits, the capacity to attain these benefits, and a reduction or loss due to the infringement, as outlined by the decree.
Article 84 addresses “mental loss,” encompassing honor, dignity, reputation, and trust.
|Handling of IPR-infringing goods||Decree 65 empowers IPR holders to request authorities to compel manufacturers of infringing goods to recall products distributed through their channels.
The new regulation eliminates the previous mechanism of confiscation, allowing for a more proactive approach to tackle the issue of IPR infringement.
|Customs control of IPR exports/imports||Customs sub-divisions are now authorized to suspend customs procedures proactively for goods suspected of bearing counterfeit trademarks or GIs during their own inspection and control.
The decree mandates immediate notification to rights holders and relevant importers/exporters when contact information is available.
A provision for compensating rights holders is included if incorrect suspension actions lead to losses for the owner of the goods.
Note: In this table, the abbreviation ‘IPR’ refers to industrial property rights in Vietnam.
Strengthened security control for patents and secret inventions
The provisions highlighted in Articles 48 to 52 within the framework of Decree 65 represent a significant step forward in bolstering the security infrastructure for patents and introducing a clear definition of what constitutes “secret inventions”.
Under these provisions, a stringent regulatory mechanism has been established to ensure that patents related to sensitive technological advancements, particularly those with potential implications for national defense and security, are closely monitored and safeguarded. This enhanced security framework underscores the government’s commitment to protecting critical intellectual property that holds strategic importance for the country.
The introduction of a specific definition for secret inventions serves to prevent any inadvertent leaks of crucial information that could compromise national security. By clearly delineating what falls under the category of secret inventions, the decree aims to strengthen the overall protection of sensitive technological innovations and intellectual property in Vietnam.
Industrial property rights under international treaties
Article 11 of Decree 65 introduces a significant provision regarding industrial property rights governed by international treaties. This provision streamlines the recognition and protection of such rights within the Vietnamese legal framework, as elucidated below:
- Exemption from registration: If an international treaty, of which Vietnam is a signatory, incorporates provisions concerning the recognition and safeguarding of industrial property rights for entities from other member states, these rights are automatically acknowledged and protected within Vietnam. Notably, the protection granted adheres strictly to the terms and conditions specified in the respective international treaty. Consequently, the industrial property rights established under these international agreements are not subject to the registration procedures mandated by the Intellectual Property Law of Vietnam.
- Enhanced transparency: The Ministry of Science and Technology assumes the responsibility of disseminating all pertinent information relating to industrial property rights acknowledged and protected within Vietnam under the purview of international treaties.
This provision underscores Vietnam’s commitment to upholding its obligations within the international community, facilitating a smoother process for foreign entities seeking to protect their industrial property rights within the country. By aligning with international treaty obligations, Vietnam aims to strengthen its position as an attractive destination for global investment and innovation.
For support with industrial property rights in Vietnam, contact the intellectual property experts at Dezan Shira and Associates.
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