Vietnam’s amended Law on Intellectual Property of 2022 (“Amended IP Law”) took effect on January 1, 2023, with the exception of a few provisions. However, subordinate legal documents (bylaws) providing necessary details and guidance on the new law still have not been issued, leaving some aspects of the law’s implementation in a state of limbo. This has caused a particular challenge for applications for establishing industrial property rights that were filed before January 1, 2023, but remain pending at the Intellectual Property Office of Vietnam (“IP Office”). While waiting for the official bylaws to be promulgated, the IP Office has issued some internal protocols for handling applications in this interim period. Partial Grant of Protection Titles The Amended IP Law mentions, for the first time, the possibility of partial granting of protection titles for industrial property objects. Under the amended Article 118, the IP Office can issue a notice of its intention to grant partial protection to the allowable parts of a patent/design/trademark application. However, as an interim protocol, the intention to partially grant protection has been temporarily put on hold until further guidance is issued. Security Control on Patents For patent applications based on Vietnamese inventions, if there are any corresponding patent applications filed overseas, the IP Office will suspend the examination until the official new bylaws on security control are provided. Applications for Designs which Are Not Visible During Use The IP Office imposes a specific mechanism on design applications filed from August 1, 2020, until January 1, 2023, in which the designs are not visible during the exploitation of the utility of complex products. Accordingly, even if a notice of intention to grant was issued but there was no decision on granting by January 1, 2023, the IP Office will issue a new notice on the
On March 9, 2023, Myanmar’s Intellectual Property Department (IPD) informed the country’s certified trademark representatives that the Trademark Law enacted in 2019 is set be enforced on April 1, 2023. A written notification about the effective date of the Trademark Law is expected soon. [Update: The official announcement is contained in Notification No. 82/2023, which was dated March 10, 2023, and published in the government-owned daily newspaper the following day.] The Trademark Rules, which are necessary to establish procedures for collecting official fees, are expected to be issued in March 2023. Once the Trademark Rules are set up and the Trademark Law comes into force, the official fees will be announced by a separate notification, as will the start of the second phase of the “soft opening” period. This second phase is expected to commence on April 3, 2023. In this phase, mark owners can pay the official fees for trademark applications filed within the first phase of the soft opening. In the meantime, the marks recorded under Myanmar’s old system or used in the country can still be filed together with payment during the soft opening’s second phase—either in person by the mark owner or through a certified representative via the online system. This second phase will continue until Ministry of Commerce (MOC) officials announce the “grand opening” of the IPD, which they hope to achieve in 2023. The IPD officials added that applications can now be submitted together with the notarized appointment of representative form that was issued by the MOC for appointing a representative for trademark matters. Any other requests, such as those for amendment, assignment, or change of representative, still need to wait for the IPD’s grand opening. While subsequent rules and announcements are expected soon, owners of existing marks should consider refiling these marks
Intellectual property experts from Tilleke & Gibbins’ Hanoi office have written the Vietnam chapter of Practical Law Company’s Copyright Litigation Global Guide 2023, a high-level comparative overview of laws and regulations related to copyright law presented in an easy to read Q&A format. The Vietnam chapter, which includes changes introduced by the latest amendment of Vietnam’s Intellectual Property Law, covers the following topics and more: Sources of law and the court system Types of works that can be protected by copyright Acts that constitute copyright infringement Parties to litigation Enforcement options Procedure in civil courts To read the Vietnam chapter, please visit the Practical Law website or click on the link below.
The newly released Licensing 2023 guide published by Lexology Getting the Deal Through features a chapter on Vietnam by four licensing specialists from Tilleke & Gibbins. The comparative guide provides companies and other interested readers with information on licensing law and practice in various jurisdictions around the world. Licensing 2023 provides detailed information on the following topics: Restrictions, laws and licensing arrangements Intellectual property issues: Paris Convention for the Protection of Industrial Property, contesting the validity of licensor’s IP rights, invalidity and expiry of IP rights, security interests, proceedings against third parties, sublicensing, jointly owned IP, first to file, scope of patent protection, trade secrets, copyright Software licensing: Perpetual licensing, legal requirements, user restrictions Royalties and payments, currency conversion, and taxes: Relevant legislation, restrictions, taxation of foreign licensors Competition law issues: Restrictions on trade, legal restrictions, and IP-related court rulings Indemnification, disclaimers, and damages: Prevalence and enforceability of indemnity provisions and contractual waivers of damages Termination: Right to terminate, impact of termination Bankruptcy: Impact of licensee or licensor bankruptcy Dispute resolution: Governing law, arbitration, enforceability, injunctive relief, contractual waivers The Vietnam chapter was authored by Linh Thi Mai Nguyen, partner and head of Tilleke & Gibbins’ trademark team in Vietnam; Son Thai Hoang, trademark executive; and Chi Lan Dang, associate, of Tilleke & Gibbins’ trademark team, along with corporate and commercial senior associate Tu Ngoc Trinh, who has extensive experience in franchising and competition law. The Vietnam chapter is available below as a PDF. Tilleke & Gibbins also contributed the Thailand chapter to Licensing 2023. To browse all jurisdictions covered by the guide, please visit the Getting the Deal Through website.