On November 30, 2023, Vietnam’s Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN detailing the implementation of some articles of the 2022 Intellectual Property Law (“IP Law”) and Decree No. 65/2023/ND-CP with respect to the establishment and protection of industrial property rights (“Circular 23”). Circular 23 took immediate effect upon issuance and provides further guidance and necessary clarifications for the implementation of the IP Law, which took effect on January 1, 2023. Some of the most critical provisions of Circular 23 related to the establishment of IP rights are discussed below.
Circular 23 enumerates and details the cases where an application will be re-examined, as stipulated in various articles of the IP Law. The circular also adds the procedure in which a protection title can be partially granted, as newly stipulated in Article 118 of the IP Law. The procedure applies to patent, industrial design, and trademark applications.
Grounds for IP rights invalidation are further detailed in the new circular. On the patent side, it provides a list of situations where claims are deemed to go beyond the scope of the specification. For trademark registrations, it specifically defines two conditions in which “bad faith” grounds can be used to cancel a registration.
The circular sets out the procedure for opposing an application, as stipulated in the new Article 112a of the IP Law. Unlike previous regulations, Circular 23 sets out that the IP Office will inform the applicant of all oppositions (whether or not the opposition is grounded), except for obvious cases where the IP Office will consider the registrability of an opposed mark without informing the applicant.
To facilitate applicants and related parties, some timeframes have been extended from one to two months. This includes, for example, the time limit for the applicant and the opponent to respond to the other party’s opinion, the time limit for the applicant to submit documents clarifying doubtful information in a trademark application pursuant to the IP Office’s request, and others.
The long-awaited procedure and requirements for utilizing the search and examination results of a foreign IP office for a corresponding application is finally introduced under Circular 23. However, it is still unclear which offices will be on the list of applicable foreign IP offices, and it is up to the Ministry of Science and Technology to issue this list in the future.
Small changes are also set out to adapt to the modified regulations on the criteria of novelty and requests for substantive examination, among others.
The definitions of “a part for assembly into a complex product” and “complex product”, as stipulated in Article 4 of the IP Law, are introduced. It is worth noting that the “part” and the “complex product” will be deemed different kinds of products.
Circular 23 removes the potentially burdensome requirements for submission of evidence in cases where the IP Office doubts the control and certification function of applicants filing for collective or certification marks. In addition, the circular expressly clarifies that formality examination of such marks will not cover the examination of specific characteristics of the goods/services, or methods of assessment, control, protection, etc., of such goods or services.
The circular also adds some criteria for registration of sound marks, to be in line with the amended IP Law, and clarifies some helpful points, such as evidence proving the secondary meaning of a mark, and criteria to assess if two goods/services are considered similar.
Circular 23 further specifies which decisions can or cannot be appealed, and also supplements some types of appeal requests which will not be acknowledged (i.e., where no illegal element of the appealed decision is pointed out, where the appealed objects are related to state secrets, etc.).
Under the previous circular, no new facts (i.e., those which had not yet been introduced before the appealed decision was issued) would be accepted in the appeal stage. However, under Circular 23, only facts that existed during examination but for some reason were not yet known or considered by the IP Office or any relevant parties are not accepted at the appeal stage. As such, it is still unclear if truly “new” arguments or information (such as recently issued letters of consent, cancellation decisions against citations, etc.) can be accepted in appeal requests.
Despite some shortcomings, Circular 23 provides more comprehensive guidance than its predecessors on the establishment of IP rights in alignment with the 2022 IP Law. The new circular is expected to serve as a detailed manual on the application of the amended IP Law and will effectively shape the IP practice in Vietnam.