On October 10, 2023, the Intellectual Property Office, in collaboration with the Vietnam Intellectual Property Association (VIPA) and the Vietnam Chamber of Commerce and Industry (VCCI), organized a conference to provide guidance on the implementation of the new intellectual property law provisions and their impact on businesses.
The conference saw the participation of Mr. Nguyen Van Bay, Deputy Director General of the Intellectual Property Office; Mr. Pham Nghiem Xuan Bac, President of the Vietnam Intellectual Property Association; and Mr. Luong Minh Huan, Director of the Enterprise Development Institute at VCCI, along with representatives from industrial property, legal experts, educators, and businesses interested in the field of intellectual property.
In his speech at the conference, Mr. Pham Nghiem Xuan Bac explained that the purpose of the conference was to strengthen the connection between the association, the Intellectual Property Office, VCCI, and businesses. Furthermore, it aimed to disseminate information about the new provisions of the 2022 IP law (effective from January 1, 2023) and Decree 65/2023/ND-CP (effective from August 23, 2023).
During the conference, new aspects of the law and decree were presented by Mr. Hoang Anh, Deputy Head of the Legal and Policy Department, and Mr. Nguyen Viet Ha, Head of the Legal and Policy Department at the Intellectual Property Office.
REFINY would like to highlight some key new points related to trademark matters as follows:
1. Protection Certificates in Paper or Electronic Form (Article 29, Decree 65)
According to regulations, protection documents are issued only once, either in electronic form or as a paper copy (if requested by the applicant). If an electronic copy of the Protection Title has been issued and the applicant later requires a paper copy, they can request a copy certified by the National Office of Intellectual Property.
2. Procedures for opposition and opinion of third party (Articles 112 and 112a of the IP Law)
The IP Law amended in 2022 provides two mechanisms for third parties to participate in the evaluation and review process of trademark registration in Vietnam:
Third Party's Opinion (Article 112): This provides an opportunity for a third party to give their opinion on the granting of protection certificates for a specific trademark application. Unlike oppositions, third-party opinions do not require a specific deadline and can be filed at any time after the trademark application is published in the Industrial Property Gazette.
Opposition (Article 112a): The third party has a period of 5 months from the date the trademark registration application is published to file an official opposition to the granting of a protection certificate. Failure to file an opposition within this period will result in the loss of their right to oppose.
3. Supplementing Regulations Allowing Protection of Sound Signs as Trademarks if Expressed in Graphic Form
According to the commitment to protect non-visible signs under the CPTPP Agreement, the Intellectual Property Law (IP Law) of 2022 adds sound signs as a new object that can be protected as a trademark. A sound sign can be protected as a trademark as long as it has the same distinctive function as a visible sign. Article 72.1 stipulates that a trademark may be expressed in the form of letters, words, drawings, images, three-dimensional images, or a combination thereof, in one or more colors or audible signs expressed in the form of graphics.
4. Issuance of Application Forms, Protection Certificate Forms, and Instructions for Filing New Trademarks
The trademark registration application form has been updated and integrated into the Appendix of the Decree. In particular, the application has added a new type of trademark, the "sound trademark", to comply with the provisions of the IP Law amended in 2022 and to adhere to the requirements of the CPTPP Agreement in which Vietnam participates.
5. Bad Faith - A Legal Basis for Opposing or Canceling a Trademark
The IP Law of 2022, for the first time, legislates "bad faith" behavior as a legal basis allowing third parties to object to trademark applications.
6. Temporary Suspension of Trademark Application Examination
The amended IP Law of 2022 has added regulations on temporarily suspending the examination of trademark registration applications (Article 117.3.b) to overcome a previously registered trademark that is currently in effect or a registered mark that has expired within 3 years.
7. Additional Grounds for Termination or Invalidation of Trademarks
The IP Law of 2022 adds 2 grounds for termination:
(a) A registered trademark may be invalidated if it becomes the common name for the goods or services registered for that mark.
(b) A registered trademark may be terminated if the use of the protected trademark for goods or services by the trademark owner or by a person authorized by the owner to do so misleads consumers about the nature, quality, or geographical origin of those goods or services.
Additionally, the 2022 IP Law introduces 2 new legal bases to invalidate trademarks:
(a) A registered trademark may be partially or completely invalidated if the trademark applicant acted in bad faith.
(b) Amendments and supplements to the trademark registration application that change the nature of the originally requested registration object.
8. Shortened Time for Reviewing Expired Previous Registered Trademarks
Previously, according to the 2005 Intellectual Property Law, a trademark registration would be refused protection if it was identical or similar to another trademark registered for identical or similar goods or services, and the earlier trademark had ceased to have effect for no more than 5 years. However, reality has shown that the 5-year period is too long and no longer suitable, affecting the rights and needs of trademark registration. Recognizing this shortcoming, the IP Law of 2022 has reduced this period to "no more than 3 years" (Article 74.2.h).
Previously, according to the provisions of the 2005 Intellectual Property Law, a registered trademark would be refused protection if it was identical or confusingly similar to another trademark registered for identical or similar goods or services, and that trademark registration had expired but was not more than 5 years old. However, reality shows that the 5-year period is too long and no longer appropriate in the current economic context, affecting the rights and the need for trademark registration. Recognizing this shortcoming, the IP Law of 2022 has shortened this time period to "no more than 3 years" (Article 74.2.h).
In conclusion, at the end of the conference, REFINY, as well as the experts attending the conference, actively provided many opinions related to the implementation of the new Intellectual Property Law and contributed to the application processing process at the Intellectual Property Office to reduce situations where the time prescribed by the Law is exceeded.
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