Intellectual property protections are one of the key factors driving investors’ decisions when entering Vietnam. A solid legal framework covering the rights and protection mechanism for investors who are seeking to create value in the market is essential to enable them to reach their potential in the global economy, boost competitiveness and leverage international know-how in the domestic economy.
Law on Intellectual property 2022
The Law on Intellectual Property (LOIP) was initially promulgated in 2005 and regulates Intellectual Property rights (IPRs). However, practical implementation along with Vietnam’s extensive international integration in recent years shows that the LOIP still has some practical issues and inadequacies.
Therefore, updating LOIP was a priority for Vietnam’s socio-economic development, with the goal of creating a strong motivation for research and innovation, ensuring a complete and effective legal framework for the protection, exploitation and protection of IPRs. The revised LOIP provides a wider scope, with more than 100 articles being amended and supplemented.
Throughout this article, we provide an overview of major updates introduced in the Law of Intellectual Property 2022 and important aspects for international investors regarding trademarks, industrial designs and copyrights.
Trademarks
Audio trademark protection
The conditions for a trademark to be registered was amended: A trademark is a visible sign in the form of letters, words, drawings, images, holograms or a combination of such elements, represented by one or more colors or graphically representable audio cues. Thus, sound signs are added to those signs that will be able to be recognized as trademarks. This new provision is consistent with Vietnam’s international commitments as well as with the global best practices. In fact, with the optimal development of science – technology and social needs, realistic sound signs have been born with diverse and rich contents, taking on the function of helping the consumers identify products and their producers. In other words, sound can fulfill the functions of a trademark.
Trademark application and third-party opinions
The LOIP 2022 establishes 2 mechanisms for third parties to give opinions on trademark registration applications under examination: (i) Third party observation on granting patent and (ii) object to the grant of a patent.
Previously, the LOIP already provided for “third party observation “, however, it was not until LOIP 2022 that it explicitly provides that third-party opinions are the source of reference when examining applications.
The fundamental difference between the two mechanisms mentioned above is the time limit for third-party action. When seeking to file an objection, they must by lodged within 5 months from the date the trademark application was published in Intellectual Property Gazettes. If 5-month period is missed, or when third-party trademark is discovered in conflict with a pre-registered trademark, there is still a right to submit an opinion to the NOIP through the procedure of “third party observation” from the date the trademark application is published until the time the trademark is issued.
Reducing the criteria to determine a well-known trademark
According to LOIP 2009, to be recognised as a well-known mark, a trademark must meet all conditions mentioned in the law, however in practice, these extensive conditions make it harder for the owner to prove to the authority that their trademark is well-known.
The LOIP 2022 does not require a mark to meet ALL the criteria to be recognized as a well-known trademark. With this amendment, it would should be easier, in principle, to prove the popularity of the mark to enjoy the special protection afforded to well-known trademarks.
Industrial design
New definition of industrial design
The revision of the industrial design definition is considered one of the most notable highlights in the revised LOIP 2022 on industrial design protection. Previously, the LOIP 2009 stipulated “Industrial design is the external appearance of a product expressed by shapes, lines, colors or a combination of these elements”.
The revised LOIP 2022 adjusted the definition as follows: “Industrial design is the external appearance of a product or part for assembly into a complex product, represented by shapes, lines, colors or combination of these factors and is visible in the process of exploiting the utility of the product or complex product”.
Thus, the revised LOIP 2022 expanded the concept of industrial design, in order to meet the needs of design protection as well as to ensure the implementation of commitments in the Free Trade Agreement of Vietnam and the European Union (EVFTA).
Postpone publication of industrial design applications
According to the LOIP 2009, industrial design registration applications are published within 2 months from the date the application is accepted as a valid. The new LOIP 2022 however, allows for the first time, to delay the publication of industrial design applications for up to 7 months, provided that the applicant submits a request for delay at the time of application.
The addition of this provision can bring significant benefits to investors. It can keep the novelty of the industrial design in case the product has not been released in the market (maximum 7 months) and provides the ability to earn greater revenues based upon confidentiality afforded before launching products to market.
Copyright
Clarification in the definition of author, co-author
Previously, the law only specified that co-authors are authors who directly create part or all literary, artistic and scientific works. This regulation was not clear and specific, making it difficult to determine who the author is, the division of rights between the authors of separate parts of the work. Therefore, under the LOIP 2022, to be a co-author, that person must collaborate with others to create a combined and complete work, and the person who provides support, opinions or documents for another person to create a work is not an author or co-author.
Transfers of the right to name the work
According to of the new LOIP 2022, the author has the right to transfer the naming rights to the organisation or individual receiving the transfer of the property rights. This helps limit the risk for the transferees of the work when the author still owns important moral rights after a transfer. In the past, the author could only transfer one moral right – namely the right to publish the work or allow others to publish the work.
Amending and supplementing regulations on “copying” works
According to the amendments and supplements in the LOIP 2002: “Copying is the making of a copy of the whole or part of a work or phonogram or video recording by any means or form”.
With this new regulation, copying part(s) of an official work is considered an act of copying. This amendment creates a legal basis to overcome substantial problems caused by unclear laws in many cases related to copyright. However, there is no condition listed to determine the “part” of a work, and we await the authority to issue further guidance on this.
These are key highlights of the LOIP 2022 related to trademarks, industrial designs and copyrights. In general, the amendments and supplements to the law align with the direction to keep up with the actual development of society and international integration, seeking to codify processes and regulations to have a clear legal basis for practical applications.
It is significant that international investors understand their IP assets and accurately identify them within the international and local context, to leverage the Vietnamese legal provisions and securely maintain their trademarks and copyrights.
Within a market entry strategy, investors are advised to pay close attention to IP rights and provisions, and ensure they register their assets with the Vietnamese authorities, in parallel with the entity structuring process.
If you need any assistance with these or any other matters relevant for international investors in Vietnam, our experts are ready to work with your company to ensure you understand how the above will apply to your specific situation in Vietnam.
Contact our teams for expert support and further information on the Intellectual Property Rights in Vietnam to ensure you are compliant and protected in the market.
Phuong Vo – Head of Incorporation, Licensing and Secretarial Services – phuong.vo@acclime.com
Matthew Lourey – Managing Partner – m.lourey@acclime.com
Tram Pham – Junior Associate – Licensing, Market Entry – dongtram.pham@acclime.com
