NOIP’s Notification on application of CPTPP Agreements

 (Unofficial translation by ELITE LAW FIRM)

                                         Number: 1926 / TB-SHTT                                                       Hanoi, February 01, 2019

NOTICE

On the application of some provisions in the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP Agreement)

On November 12, 2018, the 14th National Assembly, the 6th Session ratified the CPTPP Agreement under Resolution No. 72/2018 / QH14. On November 26, 2018, the New Zealand Ministry of Foreign Affairs and Trade issued a document No. LGL/CPTPPD/2018-15 announcing that the CPTPP Agreement came into effect in Vietnam on January 14, 2019.

Based on the provision in Clause 1 Article 6 of the 2016 International Treaty Law and Clause 3 Article 5 of the Intellectual Property Law, the National Office of Intellectual Property of Vietnam (NOIP) agrees to apply uniformly some intellectual property obligations which are different between the CPTPP Agreement and the Intellectual Property Law and related legal documents before these obligations are stipulated in legal documents as follows:

I. OBLIGATIONS AND APPLY

     1, Article 18.27

Obligation: No Party shall require recordal of trademark licences: (i) establish the validity of the licence; and (ii) as a condition for use of a trademark by a licensee to be deemed to constitute use by the holder in a proceeding that relates to the acquisition, maintenance or enforcement of trademarks.

Applying:

As from the effective date of the CPTPP Agreement, contracts for trademark licences are legally valid as to a third party regardless of the registration at the NOIP (replacing the provision in Clause 2 Article 148 of the Intellectual Property Law).

The use of a trademark as stipulated in Clause 5, Article 124 of the Intellectual Property Law by a licensee under a licensing contract is considered as an act of using the trademark of the trademark owner in the procedures in establishing, maintaining and enforcement of trademark rights without depending on the registration of such contracts at the NOIP.

     2, Article 18.32.1.b

Obligation: In the process of protection or recognition of geographical indications, it must be stipulated that geographical indications could be refused if there are objections against the protection or recognition of such geographical indications by the third parties, on the basic that the protection or recognition of such geographical indication would cause confusion with the trademark being protected in Vietnam.

Applying:

When there are opinions of the third parties regarding the application for registration of geographical indications, the NOIP shall receive and handle according to the provision at Point 6 of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 of the Ministry of Science and Technology guiding the implementation of Decree No. 103/2006/ND-CP dated September 22, 2006 of the Government regulating and guiding the implementation of some articles of the Intellectual Property Law on industrial property, amended and supplemented under Circular No. 13/2010/TT-BKHCN dated July 30, 2010, Circular No. 18/2011/TT-BKHCN dated July 22, 2011, Circular No. 05/2013/TT-BKHCN dated February 20, 2013 and Circular No. 16/2016/TT-BKHCN dated June 30, 2016.

The opposition of third parties as to geographical indication registration application for the reason that the geographical indication “would be able to cause confusion” with the protected trademark of another person must be considered instead of “would cause confusion” according to the provision of Clause 3, Article 80 of the Intellectual Property Law.

The evaluation of the ability of confusion must consider the fact that the geographical indication is preceding (do not depend on registration) and knowned by many people, even famous, thus, so it is more likely to be “confused” than “confusing” as to trademarks.

     3, Article 18.32.5

Obligation: If a geographical indication is protected or recognised its translation or transliteration through Administrative Procedures, such procedures and grounds of protection/cancellation must be equivalent/identical with those applied to normal geographical indication.

Applying:

Applications for registration of geographical indications in the form of translation or transliteration which are submitted after the CPTPP Agreement took effect are handled the same as normal applications.

     4, Article 18.33

Obligation: in determining whether a term is the term customary in common language as the common name for the relevant good in Vietnam, the authorities must take into account how consumers understand the term in Vietnam.

Applying: In the examination process of geographical indications application, for applications filed after the CPTPP Agreement took effect, the assessment of whether a term is the common name for the relevant good in Vietnam in accordance with Clause 1, Article 80 of the Law on Land Intellectual property must be based on how consumers in Vietnam understand such terms, which may include the following criteria: (i) whether or not the term is used to refer to the type of goods in sources of information such as dictionaries, newspapers, market research reports, related websites; (ii) how the good referenced by the term is marketed and used in trade in Vietnam (whether the term is used in relevant international standards recognised to refer to a type or class of good, for example: import and export tariffs password etc.).

     5, Article 18.34

Obligation: An individual component of a multi-component term that is protected as a geographical indication shall not be protected if that individual component is a term customary in the common language as the common name for the associated good.

Applying:

For geographical indications application submitted after the CPTPP Agreement took effect, when a geographical indication is a multi-component term in which ther is a component identified as a common name for goods in Vietnam, such component must be excluded from the scope of protection (not separately protected).

     6, Article 18.38

Obligation: In determining if an invention is novel or has an inventive step, Each Party shall disregard at least information contained in public disclosures if the public disclosure: (i) was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant; and (i) occurred within 12 months prior to the date of the filing of the application in the territory of the Party.

Applying:

As from the effective date of the CPTPP Agreement, the provision of Clause 3, Article 60 of the Intellectual Property Law regarding cases where inventions shall not be considered having lost its novelty shall be applied as follows:

– The invention is publicly disclosed by a person who has the right to register patent or by a person who obtains information directly or indirectly from the person having the right to register patent (regardless of whether the way to obtain this information has the consent of the person with patent registration right or not); and

– The public disclosure in the above case occurs within no more than 12 months before the filing date of the patent application at the NOIP (excluding the priority date).

Information disclosed publicly in the above case shall not be taken as reference (not in the “background art”) to determine the novelty or inventive step of the invention concerned.

II. SUBJECTS OF APPLICATION

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

– Applications for registration of Patent/Utility Solution Patent with the filing date on and after January 14, 2019; or

– Applications for registration of geographical indications with filing date on and after January 14, 2019.

If any problems arise during the implementation process, please promptly report to the NOIP (through the Legal and Policy Department) for consideration and settlement.

Source: NOIP