You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

July 10, 2020

Interim IP Provisions Introduced Under EU-Vietnam Free Trade Agreement

Subscribe to Updates

The EU-Vietnam Free Trade Agreement (EVFTA) was ratified by Vietnam’s National Assembly on June 8, 2020, under Resolution No. 102/2020/QH14 (Resolution 102), and will take effect on August 1, 2020. Among the IP provisions in the EVFTA (Chapter 12), some will be applied directly upon the effective date of the agreement, without any changes to the current domestic laws and regulations, while others will be applied via the amendment of the IP Law. Until the amended IP Law is issued (which is expected to occur in 2021), temporary provisions from the EVFTA will be directly applied.

The latter are listed in Annex 3 to Resolution 102, and include the following:

1. Patent

Thanks to the EVFTA, Vietnam will for the first time have a mechanism to compensate pharmaceutical patent owners for the reduction in effective patent life resulting from unreasonable delays in the granting of the first marketing authorization (MA).

Resolution 102 details the form of compensation applicable in Vietnam from August 1, 2020, in which the fee for using a protected invention in the delay period will be waived. However, within 12 months from the issuing date of the MA, the patent owner must provide the Vietnam IP Office with a written confirmation on unreasonable delays issued by the Drug Administrative of Vietnam (DAV). According to Resolution 102, a delay is recognized if there is no feedback/opinion from the DAV on a submitted MA dossier more than 24 months after the submission date.

This is very good news for patent owners. However, this compensation is only a bonus measure, rather than an aid to overcome the gap between the EVFTA provisions and the IP Law on this issue. The EVFTA recommends compensation in the form of a patent term extension, rather than monetary compensation as Resolution 102 stipulates.

2. Design

Under the current IP Law, a design is defined as “the external appearance of a product expressed in shapes, lines, colors or any combination thereof.” As from the EVFTA’s effective date of August 1, 2020, the definition will be changed to “the external appearance of a finished product or a component for assembling a finished product. The external appearance is expressed in shapes, lines, colors or any combination thereof and is visible during use of the product.” [The changes are underlined.]

Briefly, provisions of the EVFTA require that for the design of a component of a product to be registrable for protection, it needs to be visible in the state when it is assembled in the finished product. According to the current regulations in Vietnam, a component of a product is considered to be a product and, therefore, it is usually visible. The above change is to differentiate a finished product from a component of a finished product, and then add a requirement that the component must be visible when assembled, to comply with the EVFTA.

3. Trademark

Under the current law, to stop the use of a registered mark that may mislead the public as to the nature, quality, or geographical origin of the goods or services bearing the mark, an invalidation action must be carried out, on the grounds that such trademark did not meet protection requirements at the time registration/protection was granted. However, the time limit for such invalidation action is only five years from the grant date. Once the time limit has expired, it is not possible to invalidate the mark.

In addition, the above invalidation action can only be applied if the misleading use had already occurred at the time of registration of the mark. If the misleading use occurred only after the mark’s registration, there are no legal grounds to request revocation of such mark.

Now the EVFTA has filled in this gap by providing that “any use of a registered trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered that is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services shall make the trademark liable to revocation or alternatively be prohibited by relevant domestic law.”

As such, a revocation action can be carried out at any time during the valid term of the registered/protected trademark; and even if the mark did not mislead the public at the time of its registration, if its subsequent use can mislead the public, revocation is possible. This provision is helpful not only to protect consumers’ rights, but also to alert trademark owners about the appropriate use of their registered marks.

The above provision will be applicable as from the effective date of August 1, 2020, until the IP Law is amended to domesticize such provision.

For more details on the EVFTA’s IP provisions, please contact us at [email protected].

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 20, 2026
As part of its membership in Lex Mundi, Tilleke & Gibbins has released the latest edition of its Guide to Doing Business in Thailand, providing an overview of the legal, regulatory, and commercial considerations for companies establishing or expanding operations in Thailand. The 2026 edition offers practical insight into the country’s business environment, investment framework, and operational requirements. The guide covers a wide range of topics relevant to foreign and domestic investors, including: Investment incentives and promotion schemes Financial facilities and banking regulations Exchange controls and money transfers Import and export regulations Business structures and incorporation options Requirements for establishing a business Operational and compliance considerations Business cessation and insolvency procedures Employment and labor laws Taxation Immigration and visa requirements Prepared by Tilleke & Gibbins lawyers across multiple practice areas, the publication outlines key aspects of doing business in Thailand, including foreign investment restrictions, regulatory compliance obligations, corporate structures, employment requirements, and recent legal and economic developments affecting investors. The publication forms part of Lex Mundi’s Country Guides series, a global collection of jurisdiction-specific reference materials prepared by member firms around the world. Together, these guides help companies evaluate opportunities, compare regulatory environments, and plan international business activities across multiple markets. The full Guide to Doing Business in Thailand 2026 is available through the button below.
Read More
August 13, 2026
Modern agricultural machinery is no longer purely mechanical but instead technology dependent. Modern tractors, harvesters, and other farm equipment increasingly incorporate embedded software, electronic control units, sensors, and digital diagnostic systems. While such technologies enhance efficiency, productivity, and precision farming, they also affect the manner of equipment repair and maintenance. As a result, farmers and independent repair providers may have little practical choice but to rely on authorized dealers, even for routine maintenance and repairs. Section 36 of Thailand’s Patent Act reflects the principle that the authorized sale of a patented invention usually exhausts the exclusive right of the patent owner over the specific product. This means that upon legal sale of the patented product, it can typically be used or resold without further authorization from the patent holder. This principle is relatively straightforward when applied to traditional mechanical equipment. Ownership of a machine ordinarily carries with it the practical ability to diagnose faults, replace worn parts, and restore the equipment to working order. Modern agricultural machinery, however, increasingly depends on embedded software, proprietary diagnostic systems, firmware updates, and other digital resources that may remain under the control of the manufacturer or patent holder. This tension lies within the “right to repair” debate. In the United States, on July 8, 2026, the Federal Trade Commission and five states announced a settlement with Deere & Company resolving allegations that Deere had unlawfully restricted farmers’ and independent repair providers’ ability to repair their equipment. Under the terms of the settlement, for the next ten years, Deere must provide repair resources, including software capabilities, on terms equivalent to those provided to authorized dealers. The Deere settlement highlights that the nature of ownership is changing, but legal concepts have not kept pace. Traditional patent-law concepts, including patent exhaustion, were developed with physical products
Read More
August 10, 2026
Thailand has finalized its social media KYC (“know your customer”) rules under Notification of the Electronic Transactions Commission on Measures to Prevent Technological Crimes for Social Media Service Providers (No. 2), which was published in the Government Gazette on May 5, 2026, and will take effect on November 1, 2026. While an early draft of the notification proposed requiring social media platforms to arrange identification of every user account, the final notification is significantly more targeted, focusing on paid online advertising and advertiser identity verification. Though the regulatory initiative primarily aims to combat online fraud and technology-related crimes, it also has important consequences for intellectual property enforcement, because the verified platform records that will be generated under the new requirements can help IP rights holders to identify anonymous online infringers. Key Regulatory Mandates The notification requires social media service providers to verify the identity of advertisers before their paid advertisements are published and disseminated in Thailand through social media, regardless of whether the advertising fees come from the advertisers or third parties. Verification of an advertiser is valid for one year, after which verification would have to be performed again before the platform could publish additional paid advertisements from the advertiser. Permitted verification methods are specified under the notification. A platform may verify an advertiser by checking identity evidence and confirming the connection between the advertiser and that identity evidence, with the notification giving facial comparison against certain government-issued identity documents as an example. Alternatively, platforms may verify advertisers through a digital identity verification and authentication system with an identity-proofing assurance level not lower than the level prescribed by Thailand’s Electronic Transactions Commission. The notification further requires platforms to retain only the advertiser’s information necessary to identify the advertiser, beginning from the start of the advertising activity and for
Read More
August 6, 2026
Introduction: A Trademark Paradox in Sustainable Packaging Walk into any Thai supermarket, and the label-free water bottle is no longer a novelty. Thailand’s packaging market, valued at approximately USD 15.68 billion in 2025, is shifting toward minimalist, plastic-light designs as ESG pressures reshape how brands present their products. The country generated roughly 5.68 million tons of plastic waste in 2021, with a recycling rate of only 19 percent, and regulators are now considering rules that would allow label-free bottled water relying on embossing, laser printing, or QR codes instead of wrap-around labels. As packaging itself becomes the brand identifier, a paradox emerges: designs built to say the least often struggle hardest for protection under Thai intellectual property law. The Trademark Barrier: When Shape Is Not Enough Section 7, paragraph 2(10) of the Thai Trademark Act deems a shape distinctive only if it is not the natural form of the goods, is not necessary to achieve a technical result, and does not add value to the goods. The Department of Intellectual Property’s 2022 examination guidelines apply this test conservatively, as the following examples illustrate. A plain water bottle relying on subtle contours to signal its brand is typically read as just another bottle, not a source identifier. Acquired distinctiveness offers a theoretical escape route, but it demands extensive evidence of sales, advertising, and consumer recognition—an especially heavy burden for new entrants whose minimalist packaging has not yet achieved market prominence. The result is a structural bias against precisely the design innovation that sustainability goals are meant to encourage. Design Patents: A Partial, Imperfect Substitute Design patent protection, covering a product’s shape, configuration, or ornamentation, appears to offer an alternative route. In practice, it is constrained by the same forces driving the minimalist trend. Because many brands converge on similar solutions—clear
Read More