Temporary regulations on Intellectual Property for transition to CPTPP

On 26 November 2018, The Ministry of Foreign Affair and Trade of New Zealand issued a correspondence informing that the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) came into effect in Vietnam on January 14, 2019, with some of its provisions on intellectual property taking effect immediately.

Based on the concerned regulations of Law on Treaties and the Law on Intellectual Property (“IP law”), The National Office of Intellectual Property (“NOIP”) agrees to applied some obligations where there are differences between CPTPP and the IP Law and other related legal documents before these obligations are stipulated in the legal documents by issuing a Notice No. 1926/TB-SHTT dated 01 February 2019 with the content as follows:

I. Obligations and methods of application:

1. Application of Article 18.27: From the effective date of CPTPP, the license agreement on trademark will be valid for the third party regardless the registration of such agreement in NOIP (replacing the regulation of Article 148.2 of IP Law)

The use of trademark according to Article 124.5 of IP Law by the licensee under the license agreement is regarded as the use of trademark conducted by the owner of the trademark in the procedures of establishment, maintenance and enforcement of right over such trademark, regardless of the registration of such agreement at NOIP.

2. Application of Article 18.32.1.b:

When a third party provides an opinion as to a geographical indication application, the NOIP will receive and handle it in accordance the current regulations of law.

Opposition to a geographical indication application by a third party for the reason that the geographical indication is “likely to cause confusion” with another person’s protected trademark must be considered instead of (the reason that the geographical indication) “will cause confusion” as prescribed in Article 80.3 of the IP Law. The assessment of the likelihood of causing confusion must take into account the fact that the geographical indication is often a pre-existing object (regardless of the registration) and is known by many people, or even well-known, therefore it is likely to “be confused” rather than “cause confusion” with a trademark.

3. Application of Article 18.32.5

Applications for geographical indications in the form of translation or transliteration filed as from the effective date of the CPTPP are handled in the same manner as regular geographical indication applications.

4. Application of Article 18.33:

In the process of examining geographical indication applications filed as from the effective date of the CPTPP, the determination of whether or not a term is the common name of goods in Vietnam as set forth in Article 80.1 of the IP Law must be based on how consumers in Vietnam understand the term, which may include the following factors: (i) whether or not the term is used to refer to the type of goods in question in sources of information such as dictionaries, newspapers, market research reports, and related websites; (ii) how the goods referred by that term are marketed and used in trade in Vietnam (being used in recognized international standards to refer to a category or a group of goods, e.g., import and export tariffs, etc.)

5. Application of Article 18.33:

Regarding geographical indication applications filed as from the effective date of the CPTPP, if a geographical indication is a multi-component geographical indication of which an individual component is identified as the common name of goods in Vietnam, then the component will be excluded from the scope of protection (as a disclaimer) when the multi-component geographical indication is approved for being protected in Vietnam

6. As from the effective date of the CPTPP, the regulations of Article 60.3 of the IP Law regarding the circumstances where an invention shall not be considered as lacking novelty shall be applied as follows:

– The invention is publicly disclosed by the person having the right to registration or the person who obtained the information directly or indirectly from the person having the right to registration (regardless of the way of obtaining this information is with or without permission of the person having the right to registration); and

– The public disclosure in the above-mentioned circumstance occurs within no more than 12 months before the filing date of the patent application at the NOIP (not the priority date).

Information disclosed publicly in the above case shall not be used as a cited document (not in the “state of the art”) to determine the novelty or inventive step of the related invention.

II. Scope of Application

According to the National Treatment and Most-Favored Nation principles of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the principle of National Treatment of the Paris Convention for the Protection of Industrial Property, the above guidelines are applicable to applications filed by organizations and individuals who are citizens of member countries of the World Trade Organization (WTO) or the Paris Convention, and:

– Applications for Invention Patents/Utility Solution Patents of which the filing dates are from 14 January 2019 onwards; or

– Applications for geographical indications of which the filing dates are from 14 January 2019 onwards.