Draft Law’s Key Amendments to the 2005 Intellectual Property Law to Comply with the IP-related Commitments in the European Union - Vietnam Free Trade Agreement (EVFTA) Released for Public Consultation

The Draft Law amending and supplementing a number of articles of the 2005 Intellectual Property Law (“Draft Law”) in order to implement the IP-related commitments in multilateral trade agreements, especially the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”) and most recently the European Union Vietnam Free Trade Agreement (EVFTA), was officially published by the Ministry of Science and Technology for public consultation.1

Almost forms of intellectual property protection including IP enforcement in the 2005 IP Law (as revised twice in 2009 and 2019) shall be continuously supplemented, revised and approved by the Vietnamese National Assembly in 2021. Below is a quick summary of important amendments proposed in the Draft Law in connection with copyright and related rights, patents, industrial designs, trademarks, geographical indications and plant variety for your update:

(1) The Draft Law clarifies and supplements economic rights such as right of public performance; right of reproduction; right of distribution including importation right for the purpose of distribution to the public; right of communication to the public and making available to the public; right of rental; and new provision on exhaustion of intellectual property right.

(2) The Draft Law proposed to upgrade a great deal of provision available in subordinate level such as Decree 22/2018 / ND-CP: (i) definition of authorship, co-authorship, no recognition of persons who support, make comment or provide materials to create works are author or co-author (Article 6 of Decree 22/2018); (ii) reproduction of the published work without permission and remuneration payment for the purposes of scientific research, personal teaching for non-commercial purposes (Article 22 of Decree 22/2018); (iii) definition of copy of work (Article 3.5 of Decree 22/2018); making some provisions in the Joint Circular 07/2012/TTLT-BTTTT-BVHTTDL2 become law relating to responsibilities of intermediary service providers, for example, these enterprises must remove and delete the digital content in violation with copyright, related rights, or cut and suspend internet transmission upon receipt of a written request from the competent authorities

(3) The Draft Law adds new legal terms and concepts: royalties (tiền bản quyền) payable to authors or copyright holders, related rights holders when third parties use the works, performances, phonograms, recordings, broadcasts; supplements rights management information for the purpose of identifying the encrypted work, performance, phonogram, video recording, broadcast, satellite signal, as well as information about the author or owner of copyrights and neighboring rights.

(4) The Draft Law proposes new measure to limit the likelihood of endogenous conflicts between moral rights and economic rights, particularly the possible conflicts between authors holding non-transferable moral rights and the copyright stakeholder owning the property rights when repairing or upgrading the software or computer program by setting out a new rule that the author and copyright owner can negotiate and agree with repairing and upgrading them without infringement of moral rights; adds fair use rule in making backup copies of computer programs; clarifies more the conditions relating to fair use principle when using the published works or related rights without permission and without compensation, and when use of the published work or of related rights without permission but must pay remuneration; clarifies the rights of broadcasting organizations, phonogram and video recording producers and performers; revises and adds acts of infringement of copyright or related rights.

(5) The Draft Law adds the new registrable subject matter of sound trademark; modifies a little bit regarding the well-known mark; reduces to 3 years instead of 5 years for the earlier expired trademark that is used as a cited mark against later applied-for similar mark3; annuls the definition of associated trademark; sets up a new mechanism applicable for third party’s opposition against all industrial property applications that is separated from the unchanged Section 112 provision allowing third party to make observation4; first time adds the concept of "bad faith" as a basis for trademark revocation.

(6) The Draft Law adds a rule preventing protection of a trademark originated from the name of a protected plant variety; adds the concept of homonymous geographical indication5 (GIs having same spelling or pronunciation); extends the scope of protection for a registered plant variety though adding the protectable subject matter of "products processed from the harvested material of the protected plant variety"

(7) The Draft Law sets out a rule on novelty standard of invention; clarifies entitlement to register patent, design, lay-out design that are originated from the state budget; clarifies rules for determining confidential inventions and controlling security for confidential inventions before getting registered abroad; makes addition of patent cancellation grounds such as incomplete disclosure, patent granted beyond the original disclosed scope, amendment/supplement of an invention application expanded the scope of a revealed subject matter, or changed the nature of the subject matter seeking for protection

(8) As far as IP enforcement, the Draft Law supplements a new obligation that customs forces shall actively suspend customs clearance if there are grounds to determine that imported/exported goods are trademark counterfeit goods; amends the rules for determining acts of IP infringements subject to administrative sanctions for the purpose of clearly specifying the threshold of being fined administratively and civil remedies