I FORMS OF INTELLECTUAL PROPERTY PROTECTION
The Vietnam Intellectual Property Law (the IP Law) provides for the rights of authorship granted to any individual or organisation for the protection of their created works.2
Related rights are granted to individuals or organisations for the protection of their performance, sound recordings, video recordings, broadcast programmes and encoded satellite programmes.3 Both of these rights are collectively referred to as copyright.
Copyright is a form of intellectual property, applicable to any expressed representation of a creative work. It is not required to be registered with the relevant authorities (i.e., the Vietnam Copyright Office). Such a right is automatically protected from the date of fixation of a work.
Articles 14, 15 and 17 of the IP Law provide a list of various categories of subject works, which may be protected under the title of copyright, as well as a list of non-copyrightable subjects. Vietnam is a member of the Berne Convention, and the list of copyrightable works is not limited to the aforesaid subjects. Protection can be granted, so long as the subject work satisfies criteria for copyright protection, namely originality and creation.
Copyright protection duration varies, depending on the specific type of work. If it is a cinematographic work, a photographic work, a work of applied art or an anonymous work, the term is 75 years from the date of publication. If such works (excluding anonymous works) are not published within 25 years of the date of fixation, the term is 100 years running from the date of fixation. For other works, duration lasts for the lifetime of the author, plus 50 years. Moral rights, except for the right to publish the work or allowing others to publish the work, shall be protected for an indefinite term.4
The IP Law defines a trademark as any sign that distinguishes goods or services. The sign must be visible in the form of words, terms, letters, numerals, images (including 3D images) or a combination thereof, in one or multiple colours.5
This definition of a trademark under the IP Law means that Vietnam protects all types of traditional trademarks, but does not protect non-traditional marks, such as motions, sounds, colours, scents, tastes and holograms. The only acceptable form of non-traditional trademarks in Vietnam is a 3D image.
A trademark must be registered with the relevant authority of Vietnam (i.e., the National Office of Intellectual Property (VNIPO)) to obtain protection. Like registration for other industrial property rights, trademark registration can be made either online or offline.6 Multi-class applications are accepted in Vietnam.
In the case of famous or well-known trademarks, it is unnecessary to proceed with a registration procedure. In practice, famous or well-known trademarks are recognised for protection through appeals or disputes (opposition or cancellation).
Vietnam applies the principle of 'first to file' for trademark registrations. This means that any trademark with an earlier filing or priority date, can obtain registration and exclude from protection other identical or confusingly similar trademarks of different owners, with later filing or priority dates. This principle is in contrast to the 'first-to-use' principle, applied in other jurisdictions such as the United States and the Philippines. The only exception to the first-to-file principle in Vietnam's IP system is for widely used, famous or well-known trademarks.
The protection duration of a trademark in Vietnam is 10 years from the filing date, and is renewable every 10 years thereafter.7 The trademark holder must, either directly or through its licensee or licensees, use the trademark continuously, otherwise the Certificate for Trademark registration may be terminated.8
iii Industrial design
An industrial design is defined as the outward appearance of a product expressed in shapes, lines, colours or a combination thereof. Designs of the following products are excluded from the scope of industrial design protection:9
- products dictated by their technical features;
- civil or industrial construction works; and
- products that become invisible during their use.
To obtain protection, an industrial design must be registered with the VNIPO, and must meet the requirements for novelty, inventiveness and industrial application.10
The protection duration of an industrial design in Vietnam is 15 years, consisting of an initial period of five years, with the possibility of renewal for two further periods of five years each.11
Practically, there is an overlap between trademark and industrial design protection in Vietnam. Some industrial designs, especially those that do not meet the requirements for novelty or inventiveness, may obtain protection under the title of trademark (i.e., a 3D trademark or label trademark).
iv Trade secrets
A trade secret is defined as information obtained from financial or intellectual investment activities, that has been used in business, but has not been disclosed. The trade secret must be neither common knowledge nor easily obtainable. The IP Law also requires that a person lawfully in charge of such information take reasonable steps to maintain the trade secret.12
A trade secret is protected upon its creation without any registration, as long as it satisfies the above standards. If the trade secret is created through a service or employment contract, then the owner is the service hirer or the employer, unless the contract provides otherwise.
A patent is a technical solution in the form of a product or process, for the purpose of resolving a technical problem.
Vietnam's patent system is similar to that of other countries. It applies the first-to-file principle and requires the use of patents. An invention that meets the protection criteria can be protected under one of two forms of title, namely: invention patent or utility solution patent. There are some differences between the invention patents and the utility solution patents, in respect of protection criteria and protection duration.
|Invention patent||Utility solution patent|
|Protection duration||20 years from the filing date||10 years from the filing date|
Practically, if a substantive examination against an application for an invention patent results in a refusal, on the ground that the subject invention fails to meet the inventiveness requirement, then the applicant may choose to convert the form of protection to that of a utility solution patent.
To obtain patent protection in Vietnam, an invention must be registered with the VNIPO and meet the aforesaid protection criteria. The following categories of inventions are excluded from protection:13
- discoveries, scientific theories and mathematical methods;
- diagrams, plans or principles and methods of performing mental acts, training animals, conducting business and playing games;
- computer programs;
- presentation of information;
- purely aesthetic creations;
- plant and animal varieties;
- essential biological processes for the production of plants or animals, other than microbiological processes; and
- methods for preventing, diagnosing and treating diseases in humans or animals.
The novelty of an invention is not deemed lost upon disclosure, provided that a patent application is filed within 12 months from the date of disclosure.14
A patent application may be filed in Vietnam under the Paris Convention or the Patent Cooperation Treaty (PCT) route. The applicant has 12 months to make a priority claim from the first filing date in the original country.
Vietnam became a member of the PCT in October 1993. Nationals of member countries may apply for patent protection in Vietnam through the PCT system. The IP Law provides a period of 31 months for PCT applications to be filed in Vietnam, for entry to the national phase.
vi Regulatory exclusivity
One form of regulatory exclusivity in Vietnam is the test data exclusivity in the pharmaceutical field. Test data exclusivity refers to the protection of clinical test data, required to be submitted to a regulatory agency, in order to prove the safety and effectiveness of a new drug, and to prevent generic drug manufacturers from relying on this data in their own applications.
According to the IP Law and the Pharmaceutical Law in Vietnam, protection of clinical test data is necessary to protect pharmaceutical test data, as part of the procedure for obtaining approval and clearance for new drugs to enter the market. The Pharmaceutical Management Department is responsible for the management and implementation of this form of protection for pharmaceutical test data.
Clinical test data for a pharmaceutical product containing new substances indicated in the approval request, that is eligible for this form of protection, must be:
- a trade secret as mentioned in Section I.iv, above;
- a result of significant investment and effort; and
- requested for protection by its owner.15
The duration of protection of clinical test data runs from the date of data submission to five years from the date of approval for the circulation of a new drug.16
Protection for pharmaceutical test data shall be terminated in the following cases:17
- the data no longer meets the protection requirements set out in Section I.vi, above;
- there is clear evidence that the owner of the protected data does not have the legal right of use thereof;
- an authority's decision of approval for a new drug circulation becomes invalid;
- a withdrawal of a new drug registration for approval;
- an authority's decision for a compulsory licence of right of use of a patent containing the protected data;
- an authority's decision to settle an appeal terminating the validity of a data protection decision; and
- when termination is necessary for the protection of public health and to meet other urgent public issues.
ii RECENT DEVELOPMENTS
i CPTPP Agreement
At the November 2017 Asia Pacific Economic Cooperation Summit in Da Nang, Vietnam, the 11 countries remaining in the Trans-Pacific Partnership (TPP) took a significant step forward to finalise a new agreement now referred to as the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP).
In the absence of a key player – the United States – in this new cross-border deal, the CPTPP is reported to have largely incorporated the TPP on the one hand but 'suspended' certain intellectual property provisions on the other hand, in the hope of reviving them when the United States rejoins the agreement at some point in the future. Thus, according to Annex II of the Trans-Pacific Partnership Ministerial Statement, the CPTPP has ceased the effect of many intellectual property-related and drug-specific articles that the United States rigorously promoted when the TPP was being negotiated.
On 12 November 2018, the Vietnam National Assembly officially ratified the CPTPP, which officially entered into force for Vietnam on 14 January 2019. The CPTPP contains several requirements that will make it necessary for Vietnam to amend its IP Law, primarily regarding patent, trademark, copyright and the enforcement of IP rights. Among other things, the registrability of non-traditional trademarks such as sounds or scents is scheduled to be incorporated into domestic legislation by 2021. Vietnam also expects to accede to the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) by 2022.18 Accordingly, the regulatory framework for protection of copyrights in the digital environment will be subject to further changes.
ii Protocol amending the TRIPS Agreement
On 16 January 2017, the President of Vietnam signed Decision No. 109/2017/QD-CTN approving the Protocol amending the TRIPS Agreement (the Protocol) and the Importing Member's General Notification of Intent to Use. The Protocol took effect from 23 January 2017.
With this event, Vietnam, as a country lacking production capacity, can import pharmaceutical products made under compulsory licences from countries where pharmaceuticals are patented in emergencies or extremely urgent situations.
In accordance with Paragraph 2 of the Annex to the TRIPS Agreement attached to the Protocol, Vietnam, as an eligible importing member, must submit a notification to the Council for TRIPS, that:
- specifies the names and expected quantities of the products needed;
- confirms that Vietnam has established that it has insufficient or no manufacturing capacities in the pharmaceutical sector for the products in question; and
- confirms that, where a pharmaceutical product is patented in its territory, it has granted or intends to grant a compulsory licence in accordance with Articles 31 and 31 bis of this Agreement and the provisions of the Annex.
iii European Union–Vietnam Free Trade Agreement
On 26 June 2018, the EU–Vietnam Free Trade Agreement (EVFTA) was separated into two agreements in terms of trade and investment, which are the EU–Vietnam Investment Protection Agreement (EVIPA) and the EVFTA. At the same time, the legal review of the EVIPA and EVFTA's final texts was formally concluded. Chapter 12 of EVFTA regulates intellectual property (IP) commitments with a focus on general principles, protection standards of the subject matter of IP rights and enforcement measures of IP rights. The EVFTA focuses more on geographical indication (GI) than the CPTPP by setting out detailed and strict regulations on the protection of GIs, thus, Vietnam is expected to amend its regulations in this area.
On 12 February 2020, the European Parliament ratified both EVFTA and EVIPA. Vietnam expects to ratify the agreements in May 2020. Thereafter, EVFTA will come into force one month after the EU and Vietnam have notified each other that their domestic legal procedures have been completed. Meanwhile, EVIPA will next need to be ratified by the EU's Member States before coming into effect.
iv Hague Agreement Concerning the International Registration of Industrial Designs
On 30 September 2019, Vietnam acceded to the Geneva Act (1999) of the Hague Agreement Concerning the International Registration of Industrial Designs. The Agreement entered into force for Vietnam on 30 December 2019. Under the Agreement, the registration process for industrial designs is simplified, allowing applicants to seek protection in multiple member states with minimum formalities.
v Regional Comprehensive Economic Partnership (RCEP)
The RCEP was first launched by ASEAN member states and their trading partners, including China, India, Australia, New Zealand, Japan and Korea, in 2012. After India's withdrawal, the group of 15 states announced their conclusion of negotiations on 4 November 2019. While the official text has not been released, the result of the negotiations will be a 20-chapter free trade agreement, containing specific chapters on IP and e-commerce, expected to be signed in 2020. RCEP is anticipated to bring about greater regional integration in all fields, including intellectual property.
III OBTAINING PROTECTION
i Business methods19
These methods are products of mankind's mental creativity on the basis of analysis, assessment and deduction. Business methods do not involve technical methods, nor do they apply natural rules or principles, resolve any technical problems or create any technical improvements. Thus, they cannot be considered as technical solutions. As a result of this, they are not eligible for patent protection. Some examples of business methods include methods or systems for manufacturing management, business management, competition rules or principles.
However, if a claimed invention includes not only a business method excluded from patentable subject matter, but also a description of a technical device or process for the performance of at least some components of the business method, then the claimed invention shall be considered as whole, and will not be refused protection, so long as it meets other requirements of novelty, inventiveness and industrial application.
ii Computer programs20
Although they are excluded from patentability, computer programs are arguably subject to suitable means of protection. According to the IP Law, and in practice, a common means of protection is copyright. Computer programs are not considered to be subject to patent protection, since they are viewed as algorithms or combinations thereof, which is a category excluded from patentability. Vietnamese examination rules for patent applications classify a computer program as an exception for patentability: 'an invention related to a computer program is a type of invention performed by a computer'. Despite this exclusion, if a computer program is a technical solution, and contains technical improvements when run by a computer, thereby providing additional technical effectiveness, other than normal interaction between the program and the computer, it may be subject to patent protection. Additionally, the title of the claimed subject matter in the form of a computer program must not contain terms such as 'computer program', 'computer software', 'program carrying signals' or similar.
Plant and animal varieties; or essential biological processes for the production of plants or animals, other than microbiological processes,21 are examples of types of biotechnology inventions that are excluded from patentability under Vietnam's IP Laws.
However, some inventions of plant or animal varieties may still be subject to patent protection, if their technical aspects are not limited to a specific plant or animal variety.
Processes for the production of plants or animals, subject to patent protection, must not be of an essential biological nature, which is considered and assessed on the basis of the degree of human intervention, in terms of technical matters during these processes. If human technical intervention plays a vital role, or is important to obtain the results or effects of the claimed process, it shall not be deemed to be of an essential biological nature.
Inventions of microbiological processes are related to the creation of chemicals (i.e., antibiotic substances) or the eradication of substances by using microbiology (i.e., fungi, viruses). These inventions may be protected under a patent if they are not contrary to morality, public policy or do not constitute a threat to national security.
iii Methods for preventing, diagnosing and treating humans or animals22
This is one of the exclusions from patentability on the basis of humanitarian and public health considerations. However, the Vietnam examination rule of patent application provides that this exception does not apply to any apparatus or product that may be used for the purpose of diagnosis, prevention or treatment.
Diagnostic methods are processes of identifying diseases, or their respective causes. These processes are performed on humans or live animals.
However, some methods are not viewed as diagnostic methods and may benefit from patent protection, so long as they satisfy the standard protection criteria of being novel, inventive and susceptible to industrial application, as well as falling into one of the following categories:
- surgical procedures performed on humans or animals (dead bodies); and
- to collect information from bodies of live humans or animals, for further research, and not for obtaining a final diagnostic result (i.e., physical figures).
The purpose of the claimed methods is to experiment on bodily tissue, bodily fluids or excreta extracted from the bodies of humans or animals. Information collected from such experiments must serve further research, and not the purpose of obtaining final diagnostic results.
iv Treatment methods for humans or animals to prevent, reduce or eliminate diseases or causes of diseases from the bodies of live humans or animals
Although the treatment methods themselves are non-patentable, the medicines used during the methods may be protected under the title of patent, so long as they meet all requirements for patent protection.
The following methods are not considered as treatment methods:
- methods for producing prosthetic appliances;
- methods for breeding animals using non-surgical methods on live animals, for the purpose of altering their growth characteristics (i.e., method of using electromagnetic stimulation on lambs in order to increase their meat quality, or quantity of wool);
- methods of butchering animals;
- methods of treating dead humans or animals for specific purposes (i.e., for the purpose of sanitary disposal);
- methods of non-surgical cosmetic treatment;
- methods for exterminating germs, viruses, lice, etc., in humans or animals; and
- methods for maintaining the well-being of healthy humans or animals.
Surgical methods are normally excluded from patentable subject matters. However, if their purpose is not for disease treatment, they may be subject to patent protection (i.e., cosmetic surgery methods).
v Genetic material – notably isolated DNA sequences
Genetic material is a type of biotechnological invention in Vietnam, relating to the following:
- plant or animal varieties;
- elements derived from plant or animal varieties, or microorganisms (i.e., cell lines, DNA sequences); and
- methods of using living organisms and non-living products thereof.
With respect to DNA sequences, there are two types, namely: natural DNA sequences and mutated DNA sequences. The IP Law currently does not have specific legal provisions and relevant guiding rules on this subject matter. Thus, in specific cases, the VNIPO will consider granting protection for this type of invention, based on general requirements of patent protection, namely: novelty, inventiveness, industrial application and morality standards.
IV ENFORCEMENT OF RIGHTS
i Possible venues for enforcement
Upon the occurrence of disputes regarding intellectual property rights (IP rights), there are four possible legal options that rights owners may utilise to enforce their IP rights, which are: administrative procedures; civil procedures; criminal charges; and customs seizures. A typical approach may combine two or more of these steps, depending on the specific circumstances of the infringement.
This is the most common enforcement route in Vietnam as the right holder may request the relevant state authorities to assist them in enforcing their industrial property rights, if their main priority is to stop the infringing actions. Administrative procedures typically involve requesting the authorities to conduct raid actions or impose monetary fines, as well as other sanctions on the infringers.
Civil procedures may be applied to a broad range of disputes, such as IP infringement and contractual disputes involving compensation for damages. Vietnamese courts may grant injunctive relief and monetary damages. However, the plaintiff usually has difficulty in proving damage caused by infringement. Vietnamese law demands that the injured party establish 'actual' damage, meaning that exact calculations of damages are required.
Only Vietnamese lawyers, who work individually or in a Vietnamese law firm, may act as clients' lawyers before Vietnamese courts.
The Criminal Code of the Socialist Republic of Vietnam (the 1999 Criminal Code)23 allows for criminal proceedings to be taken against infringers who violate trademarks, geographical indications,24 copyright and related rights.25 The courts are more likely to impose sanctions in cases involving counterfeit goods comprising of food or medicine; entailing a large quantity of goods; and where the counterfeit operation is well organised or repetitive. The severity of sanctions26 also depends on the seriousness of the case, the consequences of the violation and whether the offences are repeated.
On 27 November 2015, the National Assembly adopted the new Criminal Code, which was later amended on 20 June 2017 (the 2015 Criminal Code). The 2015 Criminal Code takes one step forward by criminalising infringing acts against intellectual property rights conducted by commercial legal entities.27 Pursuant to the 2015 Criminal Code, sanctions for individuals may include loss of certain civil rights, monetary fines upwards of 1 billion dong and imprisonment for up to 30 years; whereas, sanctions for legal entities may include loss of certain civil rights, fines of up to 5 billion dong, business suspension for up to two years and even permanent suspension.28
Customs authorities can enforce intellectual property rights at borders, as long as rights owners first register with customs. Customs law also provides for a substantive and procedural basis to seize and detain goods at Vietnamese ports of entry. Upon a valid request and payment of an official fee (i.e., around US$8.60 per request),29 from the rights owner, customs may supervise and monitor the border gate and report back to the rights owner on potential infringing shipments, and seize a particular shipment at the port of entry.
Unless a valid request is filed with customs, the authorities have no authority to take action on goods that infringe IP rights. In theory, customs can initiate a request on an urgent basis if it becomes aware of suspected infringing goods. In practice, however, customs will only take the initiative if there is clear evidence that the goods are counterfeits of poor quality that could adversely affect the life or health of consumers or harm Vietnamese culture and society, such as pornography or documents that are anti-government.
ii Requirements for jurisdiction and venue
According to the IP Law, major state authorities with responsibility for conducting administrative procedures against the infringer include: Ministry of Science and Technology; Ministry of Information and Communications; Market Management Bureau; Police; People's Committees (PC) and Customs Offices.
To enforce an industrial property right, the right holder may request relevant state authorities to provide assistance. Accordingly, administrative procedures against an IP infringer will be taken in the following cases:30
- an act of IP infringement causes damage to authors, rights holders, consumers or the public;
- manufacturing, importing, transporting or trading in IP counterfeit goods or assigning others to do so; and
- manufacturing, importing, transporting, trading in or storing stamps, labels or other materials bearing a counterfeit mark or geographical indication or assigning others to do so.
Upon receipt of a request from a right holder, the authorities shall examine the request within one to two months depending on the competent authorities in charge of a case (i.e., the average time for an assessment by the Vietnam Intellectual Property Research Institute (VIPRI)) is two months regarding patent applications and one month for layout-designs, industrial designs, trademarks and geographical indications applications). If the application is found to be accurate, relevant authorities may conduct raid and seizure actions on the infringing products of the infringer, without prior notice, and shall impose sanctions if the infringement is found on-site. Authorities can impose fines of up to 250 million dong upon individual infringers, or up to 500 million dong upon infringing entities.
To initiate a civil lawsuit, a right holder needs to file a petition, with all necessary accompanying documentation to the court within two years, counting from the date individuals, agencies or organisations become aware that their rights and legitimate interests are, or have been, infringed upon. It takes five working days for the court to check whether the application is full and accurate. If the application is found to be satisfactory, the court will issue a notice for advance payment of court fees, whereby the plaintiffs will have 15 days to pay the advance payment of court fees. Upon receipt of the advance payment of court fees, the court will then hear the case.
As mentioned above, Vietnamese law requires exact calculations of damages, and plaintiffs typically experience difficulty proving damages caused by the infringement. Therefore, if the parties are able to reach an amicable agreement before the judgment is issued, the court will acknowledge its agreement and issue its decision accordingly.
A court's judgment at the first instance can be appealed to a higher court within 15 days of its issuance. By law, the court of appeal takes two months from the date of official receipt of a case to hear the case. However, in practice, the period for a hearing in a court of first instance or a court of appeal could extend up to 12 months.
iii Obtaining relevant evidence of infringement and discovery
This is an important step for the right holder prior to initiating any administrative procedure or court action. The right holder is required to collect full and accurate evidence of infringement by the infringing parties (e.g., sample of infringing products, advertisement of infringing products, counterfeit and pirated goods).
The regulations of Vietnam do not specifically stipulate any provision on how to search for and collect evidence of IP infringement. However, the right holder may opt to seek legal advice from IP experts or IP law firms for thorough and efficient ways to collect evidence from the infringing parties, or using evidence collected in administrative actions from competent authorities, to commence civil lawsuits to claim for its damages.
iv Trial decision-maker
Disputes involving IP rights are considered to be a specific form of civil dispute, usually complex and involving in-depth technical factors. Therefore, the assessment of such disputes is not simple. Moreover, the Vietnamese court system does not have a special chamber dealing with IP cases, and many Vietnamese judges lack IP experience and knowledge, especially regarding patents. Additionally, court procedures for settling IP rights violations are time-consuming and require considerable effort. Court decisions are sometimes unsatisfactory, and compensation amounts are sometimes lower than the actual damage.
The panel for first instance trials of civil cases is composed of one judge and two people's jurors. In special cases, the first-instance trial panel may consist of two judges and three people's jurors.31
v Structure of the trial
In the course of a trial on an IP rights dispute, the plaintiff and the defendant in the litigation bear the burden of proof.32
Evidence may be gathered from the following sources:33
- readable, audible or visible materials;
- testimonies of involved parties;
- witness testimonies;
- expert conclusions;
- on-site appraisal notes;
- local practices;
- property evaluation results; and
- other sources prescribed by law.
From 1 July 2016, 'local practices' are no longer considered a source of evidence.34
Expert conclusions are commonly used because Vietnamese judges lack experience and knowledge regarding the IP field. Dispute resolution procedures consequently face difficulties. Therefore, courts often rely on expert opinions (commonly from the VIPRI or the VNIPO) in order to settle the case.
The hearing shall be conducted orally.35
Within three working days of the conclusion of a court session, involved parties, agencies or organisations initiating the lawsuits shall be supplied with judgment extracts by the court.36
A lawsuit petition must include the following principal contents:37
- date of its inception;
- name of the court receiving the lawsuit petition;
- name and address of the litigator;
- name and address of the IP rights owner to be protected;
- name and address of the person who is sued;
- name and address of persons with related rights and obligations, if any;
- specific matters requested to be settled by the court against the defendant, by persons with related rights and obligations;
- names and addresses of witnesses, if any;
- documents and evidence proving that the petition is well grounded and lawful;
- other information that the litigator deems necessary for the resolution of the case; and
- it must be signed or fingerprinted by the individual being the litigator, or signed or stamped by the lawful representative of the agency or organisation being the litigator.
Litigators must send lawsuit petitions, together with accompanying documents or evidence, proving that their claims are well-grounded and lawful.38 In case of lack of documents or evidence for objective reasons, claimants are entitled to supplement during the process of the case.39
Practically speaking, competent authorities in Vietnam accept the doctrine of equivalence in examining the infringement of a product or a process, which can be considered as infringing if the IP rights related to the functioning of such product are almost identical to the invention that has been granted protection.
Regarding IP rights on trademarks, trade names and geographical indications, the putative infringer should avoid conducting acts that are prohibited in Article 129 of the IP Law, in order not to be considered an infringer and be subjected to the imposition of sanctions from competent authorities.
In addition, owners of industrial property, as well as organisations and individuals granted the right to use or the right to manage geographical indications, have the right to prevent others from using their industrial property, unless the putative infringer performs the following acts:40
- using inventions, industrial designs or layout-designs in service of their personal needs or for non-commercial purposes, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for carrying out procedures of application for licences for production, importation or circulation of products;
- circulating, importing and exploiting product utilities that were lawfully put on the market including the overseas market, except for products that were not put on the overseas market by the mark owners or their licensees;
- using inventions, industrial designs or layout-designs for the sole purpose of maintaining the operation of foreign means of transport in transit, or temporarily staying in the territory of Vietnam;
- using inventions or industrial designs by persons with prior use rights, according to the provisions of Article 134 of the IP Law;
- using inventions by persons authorised by competent state bodies, according to the provisions of Articles 145 and 146 of the IP Law;
- using layout-designs without knowing, or having the obligation to know that such layout-designs are under protection;
- using marks identical with or similar to protected geographical indications, where such marks have acquired protection in an honest manner, before the date of filing the application for registration of such geographical indication; and
- using, in an honest manner, people's names, descriptive marks of type, quantity, quality, utility, value, geographical origin and other properties of goods or services.
viii Time to first-level decision
As stipulated in the Civil Procedure Code, the competent courts must conduct a hearing upon receipt of a complaint from the litigators within two to four months. However, the period could range from four to 12 months, owing to the complexity and duplication of administrative procedures. If the parties are able to reach an amicable agreement before the issuance of judgment, the court will acknowledge its agreement and issue its decision accordingly.
Regarding other administrative procedures, the time period for the competent authorities to issue a decision on a complaint or request for assessment could be shorter.
For the VIPRI, the average time for its assessment is two months regarding patents application, and one month for layout-designs, industrial designs, trademarks and geographical indications applications.
Regarding customs procedures, it takes about 24 hours for the customs office to issue a notice of acceptance, upon receiving a petition for suspension of customs clearance, if the right holder requests the customs agency to suspend the customs procedures to collect information and evidence on the infringing products; and within 20 days of receiving a petition for inspection or supervision of imports or exports, the customs office shall issue a notice of acceptance, if the right holder requests the customs agency to suspend the customs procedures, in order to collect information for the exercise of the right to request suspension of customs procedures.
Courts may apply the following civil remedies in dealing with organisations and individuals, who have committed acts of infringement of intellectual property rights:41
- compulsory termination of the infringing acts;
- compulsory public apology and rectification;
- compulsory performance of civil obligations;
- compulsory payment of damages for loss; or
- compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and facilities used principally for the production or trading of goods infringing IP rights, provided that such destruction, distribution or use will not affect the exploitation of rights by IP rights holders.
Where the court holds there is no infringement, the defendant may claim reimbursement for reasonable legal fees or other expenses from the plaintiff. Additionally, the abuse of procedures for protection of IP rights, causing damages to others, may also be subject to legal actions.42
Rights holders may exercise their right to request the court handling the case for the application of provisional emergency measures, as provided for in Article 102 of the Civil Procedure Code, to provisionally deal with the urgent requests of the involved parties, to protect and preserve evidence, in order to avoid irrecoverable damage or to ensure execution of the judgment.43
The application, change and cancellation of provisional emergency measures before the opening of a court session shall be considered and decided by a judge.44
The application, change and cancellation of provisional emergency measures at court sessions shall be considered and decided by the trial panels.45
x Appellate review
The Vietnamese courts shall follow the regime of two-level adjudication (i.e., first-instance and appellate) resulting in two trials, if first-instance judgments or decisions have already taken legal effect, but have not detected other violations or fresh facts. In these circumstances the courts shall undertake the following special procedures in resolving the case, cassation procedures and reopening procedures.
Cassation procedures involve the review of legally effective court judgments or decisions that are appealed owing to alleged serious law violations detected in the settlement of cases.46
Reopening procedures involves the review of legally effective judgments or decisions that are the subject of an appeal, owing to the appearance of fresh facts that may substantially change the contents of the judgments or decisions, which were not known to the courts and the involved parties when the courts rendered such judgments or decisions.47
xi Alternatives to litigation
In addition to litigation, the right holder may opt for arbitration or other administrative actions (e.g., sending a cease-and-desist letter to the infringer, or attempts to reach an agreement on an amicable resolution from both parties). As far as we are aware, there is currently no dispute regarding the IP field that has been successfully resolved by arbitration.
V TRENDS AND OUTLOOK
In the next five to 10 years, it is likely that Vietnam's legal framework will witness significant changes in the intellectual property environment.
Under the current text of the CPTPP, Vietnam shall allow the registrability of scent and sound trademarks, enshrine stronger pharmaceutical protections and generally offer wider ranges and higher standards of patent protection. With regard to the enforcement of IP rights, the CPTPP also introduces stricter sanctions indicated by criminal procedures and penalties for IP infringers. The enforcement of such regulations will no doubt increase business costs for corporates, especially those using pirated software or consuming infringing products.
The implementation of CPTPP regulations would pose great difficulties for Vietnam's policymakers, as Vietnam would have to provide and implement effective economic and legal strategies appropriate to its development level and enforcement capacity. In other words, Vietnamese IP legislation would have to undergo material changes to align itself with the international standards set forth by the CPTPP. Some possible solutions that are being implemented include: (1) promoting research activities; (2) raising legal awareness; and (3) implementing regulations step by step in accordance with the CPTPP and other international treaties. Changes in the law might take some time, but the implementation of international IP standards would make Vietnam a strong contender in the global economy.
On a related note, the European Union–Vietnam Free Trade Agreement (EVFTA) is expected to come into effect in 2020. One of the most notable commitments under the IP Chapter of the EVFTA is geographical indication protection. Once the EVFTA takes effect, the EU will recognise and protect 39 Vietnamese geographical indications, while Vietnam will recognise and protect 171 European geographical indications (169 if two geographical indications from the United Kingdom are excluded).
1 Tran Manh Hung is the managing partner at BMVN International LLC, a member of Baker & McKenzie International.
2 Article 4.2 of the IP Law 2005, amended 2009 and 2019.
3 Article 4.3 of the IP Law 2005, amended 2009 and 2019.
4 Article 27 of the IP Law 2005, amended 2009 and 2019.
5 Article 4.16 and 72.1 of the IP Law 2005, amended 2009 and 2019.
6 Article 89.3 of the IP Law 2005, amended 2009 and 2019.
7 Article 93.6 of the IP Law 2005, amended 2009 and 2019.
8 Article 136.2 of the IP Law 2005, amended 2009 and 2019.
9 Article 64 of the IP Law 2005, amended 2009 and 2019.
10 Article 63 of the IP Law 2005, amended 2009 and 2019.
11 Article 93.4 of the IP Law 2005, amended 2009 and 2019.
12 Article 4.23 of the IP Law 2005, amended 2009 and 2019.
13 Article 59 of the IP Law 2005, amended 2009 and 2019.
14 Article 60.3 and 60.4 of the IP Law 2005, amended 2009 and 2019.
15 Article 6 of the Circular No. 05/2010/TT-BYT dated 1 March 2010 regarding guidelines for the protection of test data in the procedure of pharmaceutical registration.
16 Article 13 of the Circular No. 05/2010/TT-BYT.
17 Article 14 of the Circular No. 05/2010/TT-BYT.
18 Resolution No. 72/2018/QH14 of the National Assembly ratifying the CPTPP and Decision No. 121/QD-TTg dated 24 January 2019 of the Prime Minister on the implementation plan of the CPTPP.
19 Article 22.214.171.124 of the Rules of Examination for Patent Applications attached to Decision No. 487/QD-SHTT dated 31 March 2010 of the General Director of the National Office of Intellectual Property.
20 Article 126.96.36.199 of the Rules of Examination for Patent Applications.
21 Article 188.8.131.52 of the Rules of Examination for Patent Applications.
22 Article 184.108.40.206 of the Rules of Examination for Patent Applications.
23 The Criminal Code has been amended and supplemented by Law No. 37/2009/QH2 issued by the National Assembly of Vietnam on 19 June 2009, which entered into force on 1 January 2010.
24 Article 171 of the 1999 Criminal Code, amended in 2009.
25 Article 170a of the 1999 Criminal Code, amended in 2009.
26 Articles 156–158 of the 1999 Criminal Code, amended in 2009.
27 Article 76.1 of the amended 2015 Criminal Code.
28 Articles 192–195, 225–226 of the amended 2015 Criminal Code.
29 Notice No. 4769/TB-TCHQ dated 14 August 2018 on the collection of customs fees for the inspection and supervision of imported and exported goods with a request for protection of intellectual property rights, issued by the General Department of Customs.
30 Article 211.1 of the IP Law 2005, amended 2009 and 2019.
31 Article 63 of the Civil Procedure Code 2015.
32 Article 203 of the IP Law 2005, amended 2009 and 2019.
33 Article 94 of the Civil Procedure Code 2015.
34 Article 94 of the Civil Procedure Code 2015.
35 Article 225 of the Civil Procedure Code 2015.
36 Article 269.1 of the Civil Procedure Code 2015.
37 Article 189 of the Civil Procedure Code 2015.
38 Article 189.5 of the Civil Procedure Code 2015.
39 Article 189.5 of the Civil Procedure Code 2015.
40 Article 125.2 of the IP Law 2005, amended 2009 and 2019.
41 Article 202 of the IP Law 2005, amended 2009 and 2019.
42 Article 198.4 and 198.5 of the IP Law 2005, amended 2009 and 2019.
43 Article 111 of the Civil Procedure Code 2015.
44 Article 112.1 of the Civil Procedure Code 2015.
45 Article 112.2 of the Civil Procedure Code 2015.
46 Article 325 of the Civil Procedure Code 2015.
47 Article 351 of the Civil Procedure Code 2015.