The National Assembly of Vietnam officially passed the Third Amendment to the 2005 Intellectual Property Law on 16th June 2022, replacing the previous Second and First Amendment approved in 2019 and 2009 respectively. The Amendment will come into practice from 1st January 2023 onwards.
We outlined several important amendments crucial to IP owners in view of the Amended laws:
- Registration of Sound Marks: The Amendment acknowledges sound marks as registrable marks, but only under the condition of ‘sound sign represented in graphical representation,’ as described in Article 72.1. It is understood that a graphic representation of the sound mark is required to apply for registration of a sound mark. The new IP law recognising sound marks has taken place since 14th January 2022.
- New Definition for Well Known Mark: Changes have been made to what is decided to be a well-known mark in Article 4.20 according to the Amendment. The new IP law defines a well-known mark as ‘extensively known by relevant consumers in the territory of Vietnam’ alongside the requirement to fulfill several criterias to be considered as such.
- Suspension of Trademark Examination: Under the Amendment in Article 117.3b, applicants can now request to suspend the examination of a trademark which has been rejected prior. The new IP law streamlines the application process for IP owners as they now have the choice to apply for a brand new trademark application without going through the appeal process.
- Improved Definition of Authors and Co-Authors: Additional clarification of the definition of authors and co-authors is implemented under the new Amendment. Under Article 12.a, the new IP law clarifies that authors and co-authors are those who directly create the work. Co-authors must contribute directly and intentionally to the work.
- Exhaustion of Distribution Rights: In an effort to orient to international IP laws, Vietnam’s new IP laws include the system of exhaustion of distribution rights. Authors will lose the right to stop third parties from distributing their works after the first distribution of the original version of the work in question, according to Article 20.3.b of the Amendment.
- Right to License or Transfer Works: The new IP law officiates copyright licensing or transferring of a work should the author wish to do so, provided that the acquiring party receives the economic rights of the work. Such moral rights by agreement is detailed in Article 19.1 of the Amendment.
- Security Control of Inventions: A new set of rules governing the security checks of inventions prior to international patent filing has been approved by the Amendment. According to Article 89a of the new IP laws, Inventions subject to security control include ‘inventions of technical fields having impact on national defense and security created in Vietnam and under the registration rights of Vietnamese citizens residing in Vietnam or organizations established under Vietnamese jurisdiction.
- Updated Requirements for Industrial Design Applications: New requirements are established for the process for ID applications in order to align with the Hague Agreement. According to Article 103 in the Amendment, the update for ID registrations include the addition of photos and drawings of the industrial design of which must fully show design features identifiable and comprehensible to a person with average knowledge of the respective field.
Should you have further questions on the new Amendments for Vietnam IP Law, please get in touch with Quality Oracle for all areas IP including Trademark, Copyright, Patent & Industrial Design.