KENFOX provides some important legislation on intellectual property protection as follows:
KENFOX provides readers some critical contents to be noted relative to intellectual property protection in Vietnam as follows:
KENFOX notes that the main ministries and agencies responsible for IPR policy formulation and implementation in Vietnam are the Ministries of Science and Technology; Culture and Information; Agriculture and Rural Development; Justice; Finance; and Trade; the General Customs Department (under the Ministry of Finance); the National Office of Intellectual Property (under the Ministry of Science and Technology); and the Copyright Office (under the Ministry of Culture and Information).
Under the current laws of Vietnam, administrative enforcement of IPR legislation is entrusted to the customs offices, the market control agencies, the Economic Police, the Culture and Information Inspectorates, the Science and Technology Inspectorates, and the People’s Committees at provincial and district levels.
Pursuant to Article 200 of the IP Law of Vietnam, inspectorates, market control agencies, customs offices, police agencies and People’s Committees are responsible for handling IPR infringements within their own jurisdiction and for imposing administrative remedies or, in appropriate cases, preventive measures and measures to ensure the imposition of administrative sanctions. Customs authorities are also in charge of the application of border control measures on IP-related imports and exports. The jurisdiction and competences of the above-mentioned agencies have been detailed in Government Decree No. 99/2013/ND-CP of 29 August 2010 on handling administrative violations in the industrial property field.
KENFOX notes that Vietnam has been party to the Paris Convention for the Protection of Industrial Property and the Madrid Agreement on International Registration of Marks since 1949; the Convention establishing the World Intellectual Property Organization since 1976; and the Patent Cooperation Treaty since March 1993. Vietnam had become an official party to the Berne Convention on 26 October 2004, to the Geneva Convention on 6 July 2005, to the Brussels Convention on 12 January 2006, and to the Protocol relating to the Madrid Agreement concerning the international registration of marks on 11 July 2006. Vietnam has concluded bilateral agreements on the protection of intellectual property with the United States and Switzerland. On 1 December 2006, the Vietnamese Government completed all accession procedures and officially became Contracting Party to the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations. On 24/12/2006, Vietnam become a contracting party to the International Union for the Protection of New Varieties of Plants (UPOV) Convention. He confirmed that Vietnam’s Law on Conclusion, Accession and Implementation of International Treaties of 2005 provided for the direct application, in whole or in part, of international treaties to which Vietnam is a party as decided by the National Assembly. In case of differences between Vietnamese laws on intellectual property rights and international treaties to which Vietnam is a party, the provisions of the latter would apply, as prescribed in Article 5.3 of the 2005 Intellectual Property Law.
Vietnam applied the national treatment principle in accordance with the Paris Convention for the Protection of Industrial Property. Vietnam also provided Most Favoured Nation treatment to nationals of other countries consistent with other international agreements to which Vietnam is a party.
The Intellectual Property Law did not require foreign natural or legal persons to establish or enforce copyright nor to carry out any procedure other than the establishment of industrial property rights through intellectual property agents. The requirement to use Vietnamese industrial property agents under Article 89.2 of the 2005 Intellectual Property Law applied only to foreign non-residents and foreign legal persons without legal representation or an effective industrial or commercial presence in Vietnam − the requirement is aimed at protecting the interests of the right holder and facilitating his/her communication with the competent State authorities and is, in his view, in conformity with international practice and exceptions to national treatment allowed under the TRIPS Agreement.
Per Article 14 of the IP Law of Vietnam, literary, artistic, and scientific works protected included literary and scientific works, textbooks, teaching materials, and other works in the form of letters or other writing characters; lectures, presentations and other speeches; press works; musical works; dramatic works; cinematographic works and works created by similar methods (hereinafter referred to as cinematographic works); fine art works and applied art works; photographic works; architectural works; graphics, sketches, maps, drawings relevant to topography and scientific works; folk artistic and literary works; and computer programmes and compilations of data. KENFOX “Scientific works” covered works referring to sciences such as written theoretical works in the natural, social, technological, and economic sciences. “Press works” are works published in newspapers. “Other works” is an open provision referring to other forms of works not mentioned in the list, but subject to copyright protection. Protection would not be granted for the works above if they are contrary to the social morality, public order or harmful to national defense and security.
Copyright is provided for original works irrespective of form, language used for expression, and the quality of the works. Copyright arose from the moment the work is created in a concrete material form irrespective of whether or not it is a registered work in conformity with Article 6.1 of the 2005 Intellectual Property Law.
Works existing prior to the entry into force of the 2005 Civil Code are protected in accordance with Article 220 of the 2005 Intellectual Property Law if their term of protection had not expired and if they are not in violation of Civil Code provisions. Such works are protected in the same way as works created after the entry into force of the Civil Code.
With regard to unregistered copyrights/related rights, authorship will be presumed where on a copy of the original work the author’s name appears in the usual manner. With regard to a registered copyright, unless the declaration in the application for copyright registration is false, an author or owner of a registered work would not be obliged to justify his/her ownership right over the work in case of dispute.
Concerning the application of the national treatment principle, the 2005 Intellectual Property Law guaranteed the implementation of Article 3 of the TRIPS Agreement and Article 3 of the Berne Convention. Pursuant to Article 13 of the Law, nationals from any Member of the Berne Convention or the WTO would be eligible for copyright protection in Vietnam.
The voluntary registration process is now governed by Articles 49 to 55 of the 2005 Intellectual Property Law. The author or the copyright owner of a work filed the application and related documents with the Copyright Office of Vietnam (COV). The COV decided on the granting of a Registration Certificate within 15 days from the date of receipt of the application (Article 52 of the 2005 Intellectual Property Law).
Right holders had the exclusive right of reproduction, broadcasting/performance, distribution, and creation of derivative works (Articles 20, 29.3, 30, and 31 of the 2005 Intellectual Property Law). Limitations to author’s rights are laid down in Articles 25 and 32 of the 2005 Intellectual Property Law.
Articles 26 and 33 of the 2005 Intellectual Property Law provided that broadcasting organizations may use “published works” and “related rights” without the authorization of the right holder, but must pay royalties or remuneration. The question is how Vietnam will ensure that the remuneration is equitable as required under the Berne Convention. For this question, Berne Article 11bis would be implemented directly and thus the equitable remuneration standard would be applied. Furthermore, in practice, collecting societies existed to carry out activities on behalf of the right holder, including the collecting of remuneration, but only as authorized by the right holder.
Pursuant to Articles 26.1 and 33.1 of the 2005 Intellectual Property Law, organizations and individuals using published works or sound/video recordings for sponsored broadcasting programmes, or programmes with advertisements or involving money collection in any form did not have to obtain permission from the right holder, but are required to pay royalties in accordance with Government’s regulations. Organizations and individuals using works or sound/video recordings in accordance with the provisions of Articles 26.1 and 33.1 should not influence the normal exploitation of the works nor prejudice the rights of the authors, copyright owners, performers, sound/video recording producers or broadcasting organizations.
Some wonder whether exceptions provided for in Articles 26 and 33 of the IP Law of Vietnam appear to be too broad and therefore inconsistent with the TRIPS Agreement. However, we find that the exceptions stipulated in these Articles are limited to cases which do not conflict with a normal exploitation of the work and do not prejudice the rights of the right holder. We note that broadcasting organizations in Vietnam are operated by the State and are required to pay royalties only when they broadcast sponsored programmes, programmes with advertisements, or programmes involving money collection.
KENFOX advises that per Article 198 of the 2005 Intellectual Property Law, authors or owners of works whose rights are being infringed are entitled to request the organization or individual having committed the acts of infringement to stop his infringement acts, apologize, publicly rectify and compensate for damages; request the competent enforcement bodies of Vietnam to handle infringement acts in accordance with the provisions of the Intellectual Property Law and other related laws and regulations; or initiate a lawsuit at a competent court or an arbitrator to protect their legitimate rights and interests.
Criminal remedies are stipulated in Article 225 (Infringement of copyrights and relevant rights of Criminal Code No. 100/2015/QH13 of November 27, 2015. Violators could face a fine of up to VND 1 billion or up to three years imprisonment. Recourse to civil remedies would depend upon the level of damage caused by the person making the infringement acts.
In respect of Vietnam’s regulation of digital copyright issues, digital copyright protection is provided for in Articles 4.10, 20.1(dd), 29.3(d), 30.1(b), and 31.1(d) of the 2005 Intellectual Property Law. The principles and forms of fair use exceptions are laid down in Articles 25 and 32 of the 2005 Intellectual Property Law. Provisions on technological protection measures for protected copyright have been included in Articles 28 and 35 of the 2005 Intellectual Property Law. As to Internet services, Article 6.1 of Decree No. 55/2001 requires compliance with the respective regulations under the Law on Newspapers, the Law on Publishing, the Ordinance on Protection of State Secrets, and other laws and regulations on intellectual property and Internet information management. The Decree prohibits strictly theft and unlawful use of passwords, codes and private information of individuals or entities on the Internet.
KENFOX advises that trademarks are protected in accordance with Part III of the IP Law of Vietnam. Mandatory registration is not required for any goods or services. All trademark registrations are published in the Official Gazette of Industrial Property.
Under Article 72 of the 2005 Intellectual Property Law, a trademark could be words, letters, pictures, figures − including three-dimensional figures − or a combination of such elements represented in one or many colours. A sign capable of distinguishing goods or services of different owners could be protected as trademark, unless it is excluded from protection under Article 73 of the 2005 Intellectual Property Law.
Signs excluded from protection included signs identical with or confusingly similar to national flags, national emblems; flags, emblems, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless so permitted by such agencies or organizations; real names, alias, pen names or images of leaders, national heroes or famous persons of Viet Nam or foreign countries; certification seals, control seals, warranty seals of international organizations; and signs likely to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the good or service.
While Vietnam’s laws do not list personal names as signs that could be protected as trademarks, personal names are, as words, ex officio recognized as signs that can be registered pursuant to Article 72.1 of the 2005 Intellectual Property Law.
Applications for registration of marks are filed with the competent State authority, namely, the Intellectual Property Office of Vietnam (IP Vietnam). In accordance with Article 89.2 of the 2005 Intellectual Property Law, foreign natural persons not resident in Vietnam and legal persons not industrially or commercially established in Vietnam are required to file applications for trademark registration through a legally operating industrial property representative of their choice. Use is not a condition for entitlement to file an application for registration of a trademark.
Per Article 74.2 of the 2005 Intellectual Property Law, a sign which does not possess a distinctive character could be protected if it has been widely used and recognized as a trademark. Current laws and regulations also applied to service marks. Well-known marks are protected under Articles 74.2(i), 75, and 129.1(d) of the 2005 Intellectual Property Law. These provisions are, in our KENFOX view, in compliance with the Paris Convention and the TRIPS Agreement.
Any contract of assignment of a trademark right needs to be registered with the National Office of Intellectual Property. An assignment contract which has not been registered will be invalid. Kindly note that Vietnam’s laws do not oblige a trademark assignor to transfer, together with the trademark, the business to which the trademark belonged (Article 139 of the 2005 Intellectual Property Law). Thus, the trademark owner has the right to assign his trademark without the transfer of business in compliance with Article 21 of the TRIPS Agreement.
Legal entities, including charitable organizations, can apply for trademark registration only if legally engaged in business activities (production, service or trading), in accordance with Articles 87.1 and 87.2 of the 2005 Intellectual Property Law. However, charitable entities not engaged in business activities are protected against non-authorized registration of signs and designations identical with or similar to their emblems or designations according to Article 73.2 of the 2005 Intellectual Property Law.
Concerning co-ownership of trademarks, provisions on the right to register such marks are included in Article 87.5 of the 2005 Intellectual Property Law.
In respect of right of appeal of administrative decisions, we find that judicial review of any administrative decision is guaranteed by the Law on Complaints No.02/2011/QH13. Pursuant to these texts, decisions relating to the establishment, maintenance, termination and invalidation of trademarks, and industrial property rights in general, having been appealed to the Director General of the Intellectual Property Office of Vietnam (IP Vietnam) could be further appealed, at the appellant’s discretion, either to the Minister of Science and Technology or to the Administrative Court. As such, in our view, existing laws and regulations provide an opportunity for both judicial and administrative review in compliance with the TRIPS Agreement.
The definition of a well-known mark as “a mark widely known to consumers throughout the territory of Vietnam” and the criteria for the recognition of well-known marks are provided in Articles 4.20 and 75 of the 2005 Intellectual Property Law. Pursuant to Article 75, the criteria include information on the number of relevant consumers knowing the mark by purchasing or using the goods or services bearing the trade mark; the number of countries in which the trademarked goods and services are being sold, providing trademark protection or recognizing the trademark as well-known; generated sales revenue; period of continuous use; indications of widespread reputation; the value of the trademark in terms of licensing, contribution to an investment asset, etc.
Ownership of well-known marks should be established on the basis of use without registration (Article 6.3(a) of the 2005 Intellectual Property Law).
KENFOX advises that geographical indications (GI) are protectable under Part III of the 2005 Intellectual Property Law. The IP Law of Vietnam provides for a single model of protection applicable to all types of GI, including appellations of origin. Pursuant to Article 6.3 of the Law, industrial property rights of GU, including appellations of origin, are established on the basis of registration with the competent State authority (the National Office of Intellectual Property).
The time-limit for formality examination is one month from the filing date and six months for substantive examination. The term of protection of geographical indications is indefinite. Article 79 of the 2005 Intellectual Property Law lay down the conditions for protection of a geographical indication. Products bearing a geographical indication should (i) originate from the area, locality, territory or country corresponding to such geographical indication and (ii) have the reputation, quality or characteristics essentially attributable to the geographical conditions of the area, locality, territory, or country corresponding to such geographical indication.
GI corresponding to regions and localities within a country or territories crossing international borders are protected if they complied with all requirements stipulated by law. The provisions are, in our KENFOX view, in compliance with Article 22.1 of the TRIPS Agreement. We note that a geographical indication would not be protected pursuant to Article 80.1 of the 2005 Intellectual Property Law if it had become a generic name in Vietnam.
Acts infringing GI are handled in accordance with Part V of the 2005 Intellectual Property Law on enforcement of intellectual property rights. A person having the right to use a GI could require the competent State authorities to stop unlawful use of such indication and demand compensation from unlawful users for the damage caused (Article 198.1, paragraphs (b) and (c) of the 2005 Intellectual Property Law). However, that person would not have exclusive rights to such geographical indication, and could not grant licenses to other persons.
Article 129.3 of the IP Law of Vietnam provides for additional protection for wines and spirits. Under this Article, the use of a protected GI identifying wines or spirits that are not originating in the territories corresponding to the geographical indication, even where the true origin of the goods is indicated or the geographical indication is used in translation or transcription or accompanied by words such as “kind”, “type”, “style”, “imitation” or the like is considered an infringement of the rights to a protected geographical indication. Infringements could be dealt with under civil, administrative or criminal procedures and the provisions are, in his view, consistent with the requirements of Article 23.1 of the TRIPS Agreement.
As to the relationship between the protection of GI and trademarks, Articles 73.5 and 74.2(l) of the 2005 Intellectual Property Law prohibit the registration of a trademark identical with or confusingly similar to protected geographical indications, including appellations of origin, if the use of such trademark is likely to mislead consumers as to the GI of the goods. The time to be taken into consideration for the protection of geographical indications is the priority date of the trademark application.
In respect of questions on whether Vietnam could confer exclusive rights to trademark owners if its legislation appeared to allow trademarks to coexist with confusingly similar and later-in-time geographical indications, we opine that Vietnam has included a provision in its IP Law to exclude the protection of GI identical with or confusingly similar to an already protected trademark where actual use thereof would create confusion as to the origin of the goods (Article 80.3).
Noting that the right to register geographical indications belonged to the State pursuant to Article 88 of the 2005 Intellectual Property Law, a question is how foreign applicants could register GI, as opposed to the “mode of filing registration applications” set out in Article 89, how ownership and regulation of foreign-owned GI are treated under the 2005 Intellectual Property Law as the State is the owner of Vietnam’s geographical indications and regulated the use of Vietnamese geographical indications pursuant to Article 121. For this question, our KENFOX attorneys note that the provisions of the 2005 Intellectual Property Law on registration rights, ownership, management and use of geographical indications apply only to Vietnamese geographical indications.
KENFOX advises that, in accordance with Article 80.2 of the Law, only foreign geographical indications protected in their country of origin could be protected in Vietnam. Any entity having the right, under foreign national law, to own, use or file an application for registration of a geographical indication in the country of origin have the right to file an application for registration of such geographical indication in Vietnam and could be recorded as such in Vietnam’s Registry of Geographical Indications.
The filing of a registration application, directly or through a lawful representative, has to comply with the provisions of Article 89. We are of the view that these provisions are not contradictory.
In the example of the geographical indication “cognac”, which is currently protected in Vietnam and whose application for registration in Vietnam is filed through the French embassy by the National Inter-Professional Bureau of Cognac.
Ownership, management and use of geographical indications in Vietnam are required to comply with the provisions of Chapter IX of the 2005 Intellectual Property Law. In his view, the 2005 Intellectual Property Law protected Vietnamese and foreign geographical indications in conformity with the TRIPS Agreement.
Another issue is whether Vietnam will protect and register GI of a Member that provided protection to geographical indications through a means other than registration, such as through certification marks or unfair competition laws. For this question, we find that since a form of protection is accorded to Geographical Indications in the country of origin, even if such protection is through means other than through “registration as a GI”, geographical indications from that foreign country could be registered and recorded in Vietnam’s Registry of Geographical Indications.
KENFOX notes that industrial designs – a specific appearance of a product embodied by lines, three-dimensional forms, colours or a combination thereof of worldwide novelty capable of serving as a pattern for a product of industry or handicraft – are protected in accordance with Part III of the 2005 Intellectual Property Law. Textile designs are protected in the same manner as other industrial designs.
Applications for registration of industrial designs are filed with the competent State authority (the National Office of Intellectual Property) and subject to examination as to form and substance. The initial term of protection of an industrial design is five years from the filing date – taking effect from the registration date – and it could be renewed for two consecutive terms of five years (Article 93.4 of the 2005 Intellectual Property Law).
The owner of a protected industrial design had the exclusive right to use, licence or assign the right to use such industrial design to other persons (Article 123 of the 2005 Intellectual Property Law), the right to request the competent State authority to compel other persons to stop infringements, and the right to claim compensation for damages caused by such acts of infringement (Article 198 of the 2005 Intellectual Property Law). In KENFOX view, the current laws and regulations of Vietnam are in compliance with the requirement of Article 26.1 of the TRIPS Agreement. Although the relevant provisions had not been phrased in the exact same wording as the TRIPS Agreement, the provisions of Articles 123.1(a), 124.2 and 126.1 of the 2005 Intellectual Property Law also covered the making, selling or importing of Articles embodying designs which are “substantially a copy” of a protected design.
The rights are restricted when provisions on prior user are applied. The rights of prior users are provided in Article 134 of the 2005 Intellectual Property Law. As for compulsory licensing, we note hat the 2005 Intellectual Property Law no longer provides for compulsory licensing in respect of industrial design.
KENFOX notes that any invention involving worldwide novelty, an inventive step and industrial applicability is statutorily protectable in accordance with Part III of the 2005 Intellectual Property Law. Patent applications in Vietnam are subject to examination as to form and substance.
The time-limit for formality examination is one month and 12 months for substantive examination as stipulated in Article 119 of the 2005 Intellectual Property Law. In addition, utility solutions, which do not require protection under the TRIPS Agreement, are also protectable in Vietnam. Any invention possessing worldwide novelty with industrial applicability − even if it do not involve an inventive step but is not of common knowledge − could be protected by a Utility Solution Patent (Article 58.2 of the 2005 Intellectual Property Law).
Subject matter excluded from protection fell within three main categories, i.e.
Pharmaceutical products and processes to manufacture pharmaceutical products are protectable under Vietnamese law as they do not fall under the list of the objects excluded from protection under Article 59 of the 2005 Intellectual Property Law. We opine that the exclusions provided for in Vietnam’s legislation are essentially equivalent to those of the European Patent Convention and do not go well beyond the provisions of Article 27.3 of the TRIPS Agreement. Inventions could also be excluded from patentability for reasons of public order and morality in accordance with Article 8 of the 2005 Intellectual Property Law. This provision applies irrespective of whether the commercial exploitation of such inventions is prohibited by law.
Owners of Invention Patents or Utility Solution Patents have the exclusive right to use, licence and assign the right to use the invention to other persons. They have the right to demand that other persons stop infringements, and could seek compensation for damages caused by acts of infringement (198 of the 2005 Intellectual Property Law). Rights conferred to the patent owner by Article 28.1 of the TRIPS Agreement are set out in Articles 123.1(b), 124.1, and 125 of the 2005 Intellectual Property Law. As for the provisions of Article 28.2 of the TRIPS Agreement, these have been included in Articles 123.1(a) and 123.1(c) of the IP Law of Vietnam. We note that in this regard, the use of an invention is defined in Article 124.1 of the Law as the production, application, exploitation, circulation, advertisement, offering for sale, stocking for circulation, and importation of a protected product or process. In our view, these Articles fully comply with the provisions of Article 28 of the TRIPS Agreement. Some think that Article 124 do not include “selling” and so ask how this Article is consistent with Article 28 of the TRIPS Agreement. KENFOX opine that “circulation” in Article 124.1(c) includes “selling” and that the term “circulation” has been clarified in Decree No. 103/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law concerning industrial property.
The terms of Invention Patents and Utility Solution Patents are 20 and ten years respectively counting from the official filing date − taking effect on the grant date (Article 93.2 of the 2005 Intellectual Property Law).
The owner of an invention or his exclusive licensee is obliged to use the invention (or transfer the right of use) in conformity with the requirements of socio-economic development of Vietnam (Articles 136.1 and 142.5 of the 2005 Intellectual Property Law), and the owner is required to pay a remuneration to the author of the invention (Article 135 of the 2005 Intellectual Property Law). Importation will satisfy the “use” requirement stipulated in Vietnam’s legislation (Article 136.1 of the 2005 Intellectual Property Law). The rights to a patent (invention) are restricted by provisions on prior use right and compulsory licensing (Articles 134 and 145 to 147 of the 2005 Intellectual Property Law).
Conditions and procedures for granting compulsory licenses are laid down in Section 3, Chapter X of the 2005 Intellectual Property Law (Articles 145 to 147). Compulsory licensing could only be applied
Provisions on conditions for granting compulsory licenses in compliance with Articles 31(f), 31(k) and 31(l) of the TRIPS Agreement have been introduced in Article 146 of the Law. Pursuant to Section 3 of Chapter X, compulsory licenses could not be granted before the expiration of a four-year period after the filing of an application for a Protection Title and three years after a Protection Title had been granted. The licensee of an invention by compulsory licensing is required to pay adequate remuneration to the owner, taking into account the economic value of the authorization, as required by Article 31(h) of the TRIPS Agreement (Article 146.1). The patent owner is entitled to request the termination of the use of a compulsory licence if the circumstances which lead to it had ceased and are unlikely to recur, provided such termination would not prejudice the grantee of the compulsory licence (Article 145.2). Ministries and other ministerial-level authorities are responsible for granting and terminating compulsory licenses with regard to inventions in their field of action, when such licenses have been granted for reasons of national defence and security, the prevention and treatment of diseases or other urgent needs of the society; the Ministry of Science and Technology is responsible for granting and terminating compulsory licenses in the other cases (Article 147.1). We find that that no compulsory licence had been granted in Vietnam thus far.
In response to a question concerning the “remuneration frame provided for by the Government” stipulated in Article 146.1(d), KENFOX opines that the term “remuneration frame” referred to the ceiling level of remuneration and principles for determining the adequate level of remuneration under compulsory licensing. The “remuneration frame”, in KENFOX view, will be used as a basis for establishing the remuneration. The frame has been set out in detail in Government Decree No. 103/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law concerning industrial property. According to Decree No. 103/2006/ND-CP, the remuneration should take into account the economic value of the right transferred, including the contractual licensing price of the invention, the funds invested for the creation of the invention, the profits gained by using the invention, the remaining duration of validity of the patent, and the need for licensing the invention.
KENFOX is of the view that judicial review of decisions on compulsory licensing and of the use of inventions under compulsory licenses is guaranteed by the Law on Complaints 2011 and Article 147.4 of the 2005 Intellectual Property Law. Pursuant to Article 147.4, decisions on compulsory licensing are subject to both administrative appeal and judicial litigation. Asked specifically about judicial review of decisions related to remuneration, we note that decisions on compulsory licensing – which could be appealed under Article 147.4 – are required, pursuant to Article 147.2, to provide for appropriate scope and conditions in accordance with Article 146, including the right to an adequate remuneration (Article 146.1). Thus, decisions on remuneration could be appealed. In KENFOX view, the provisions of Articles 146.1, 147.2 and 147.4 of the 2005 Intellectual Property Law comply fully with the provisions of Article 31(j) of the TRIPS Agreement.
The patentee’s right to assign or inherit his patent and to conclude a licence contract (Article 28.2 of the TRIPS Agreement) is ensured by Article 123.1 of the 2005 Intellectual Property Law. KENFOX the assignment or licensing of a patented invention is subject to certain restrictions permitted by Articles 30 and 40 of the TRIPS Agreement (Articles 139 and 142 of the 2005 Intellectual Property Law). In response to concerns about limitations on royalty payments applied by Vietnam, we find that that ceilings on royalty payments for intellectual property rights has been abolished by Decree No. 11/2005/ND-CP of 2 February 2005 on Technology Transfer, replacing Decree No. 45/1998/ND CP of 1 July 1998.
In exceptional cases, the use of a protected invention would not be considered infringement, i.e., use for non-commercial purposes; distribution, circulation and use of products having been marketed by the owners, prior users or persons to whom the right of use had been transferred; or when use of the invention took place on foreign means of transportation in transit or temporarily staying in the territory of Vietnam and such use is aimed solely at maintaining the operation of such means (Article 125.2 of the 2005 Intellectual Property Law).
Procedures for the termination and invalidation of invention patents are regulated by Articles 95 and 96 of the 2005 Intellectual Property Law. There are two routes to appeal against decisions of the National Office of Intellectual Property, and as which route to choose is up to the interested parties, “an opportunity for judicial review”, i.e., by the Administrative Court, is fully ensured. Minister’s decisions could be reviewed by the Administrative Court under the Law on Complaints 2011).
KENFOX advises that new plant varieties are now protected in Vietnam pursuant to Part I (Articles 4.5 and 6.4) and Part IV (Articles 157 to 197) of the 2005 Intellectual Property Law. The substantive provisions of the 2005 Intellectual Property Law on plant variety protection are derived from the UPOV. Nationals and foreigners are eligible for protection pursuant to Article 157 of the 2005 Intellectual Property Law. The protection criteria applies to plant varieties under Articles 158 to 162 of the Law corresponded precisely to those provided for in Articles 5 to 9 of the UPOV, including novelty, distinctness, uniformity and stability. The requirements on variety denomination under Article 163 of the 2005 Intellectual Property Law are compatible with those prescribed in Article 20 of the UPOV. As for the establishment of rights to plant varieties, we note that that Articles 164 to 184 of the 2005 Intellectual Property Law satisfied the requirements and criteria set out in Articles 10, 11, 12, 19, 21, and 22 of the UPOV concerning the filing of applications, the right of priority, the examination of applications, and validity and duration of breeder’s rights. Article 169, in particular, provided for a duration of breeder’s rights of 25 years for trees and vines and 20 years for other species, counting from the date the rights had been granted. The provisions on provisional protection, scope and limitations of breeder’s rights, and exhaustion of breeder’s rights of Articles 185 to 197 of the 2005 Intellectual Property Law corresponded to the language of Articles 13 to 18 of the UPOV. We note that Article 187 of the 2005 Intellectual Property Law does not extend breeder’s rights to harvested material or products made directly from harvested material obtained through the unauthorized use of propagating material of protected variety, in conformity with Articles 14(2) and (3) of the UPOV.
In our view, the provisions on plant variety protection included in the 2005 Intellectual Property Law met the minimum standards of the UPOV. Please note that Vietnam has promulgated Government Decree No. 104/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law concerning rights to plant varieties.
Layout designs of semiconductor integrated circuits are protected under Articles 4.4, 6.3(a) and Part III of the 2005 Intellectual Property Law. Vietnam has also promulgated Government Decree No. 103/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law concerning industrial property, including those related to layout designs of semiconductor integrated circuits.
Business secrets, including trade secrets and test data, are protected under the provisions of the 2005 Intellectual Property Law on industrial property rights, including Articles 4.4, 6.3(c) and Part III of the Law.
Business secrets will be protected as long as they satisfied all prescribed conditions without being required for registration. The owner of business secrets has the right to prohibit the unauthorized use of his business secrets and demand injunctions from the State competent authorities to stop infringements and to claim damages (Articles 121, 123 to 125, 127, and 198 of the 2005 Intellectual Property Law).
Vietnam has, in practice, provided protection of undisclosed test or other data submitted as a condition for approving the marketing of pharmaceutical or agricultural chemical products since 2003. This protection is codified in Article 128 of the 2005 Intellectual Property Law. Under this Article, the authorities concerned have the obligation, when an applicant requested that data submitted as a condition for approving the marketing of pharmaceutical or agricultural chemical products be kept secret, to take necessary measures so that such data are neither used for unfair commercial purposes nor disclosed, except if disclosure is necessary to protect the public.
The authorities concerned are not allowed to grant any licence during a five-year period from the date a licence has been granted to an applicant to any subsequent applicant using undisclosed data in his applications without permission of the prior applicant, except in cases where the undisclosed data had been created independently by the subsequent applicant as provided for in Article 125.3(d) of the Law. We note that Decree No. 103/2006/ND-CP providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law concerning industrial property, and a regulation including procedural details, i.e. Decision No. 30/2006/QD-BYT of the Minister of Health on promulgation of regulations on data protection apply to Drug Registration Dossiers, had been issued in September 2006.
Law on Competition, which was adopted by the National Assembly on 3 December 2004 (Law No. 27/2004/QH11), included provisions dealing with unfair competition (Article 39) and infringement of business secrets, including accessing and acquiring information on business secrets of others in procedures for marketing approval of products, using such information for business purposes or for obtaining business-related licenses or marketing approval of products, or acting against secret-keeping measures of State agencies (Article 41.4).
Measures to control abuse of intellectual property rights
Violations of the procedures establishing a right in relation to an object of industrial property could lead to the annulment of the granted protection certificate (Article 96.1 of the 2005 Intellectual Property Law). Failure to use or licence a patented invention could result in compulsory licensing (Article 136.1 of the 2005 Intellectual Property Law).
Asked whether importation of a product covered by the patent would satisfy the requirement of Article 136.1, we opine that importation will satisfy the requirement, and that this issue will be clarified through the implementing decree. Legal provisions have been included in the 2005 Intellectual Property Law to enable Vietnam to take appropriate measures to prevent or control anti-competitive practices in contractual licenses. Article 144.2 of the Law stipulates restrictions on the contractual licensing of industrial property between the right owners and the licensees (industrial property licensing contracts), applicable to both Vietnamese and foreigners.
Enforcement of Intellectual Property Rights in Vietnam
(a) Civil judicial procedures and remedies
KENFOX advises that People’s Courts (Civil Court), at district and provincial level, have jurisdiction over disputes of infringement relating to intellectual property rights. This means the People’s Court can adjudicate cases with respect to claims of abuse of industrial property rights, disputes concerning royalty or remuneration, claims on registration right and the right of authorship, and disputes relating to contracts concerning assignment of ownership right or licensing contract for the right to use objects of industrial property.
In order to lodge a claim or bringing a suit before the Court, KENFOX advises that the plaintiff or his/her lawful representative must provide evidence of his/her intellectual property right as well as evidence of infringement of the rights (Article 203 of the 2005 Intellectual Property Law). The defendant has the right to refute the evidence and arguments of the plaintiff before the Court. The Court has the right, upon request of either party or on its own initiative, to demand further evidence or documentation and, if necessary, to collect evidence itself (Civil Procedure Code).
The persons or institutions requested to provide evidence has 15 days to present such evidence.
Concerned parties could appeal the Court’s collection of evidence to the People’s Prosecutor, which could request the Court to verify and collect evidence according to the concerned parties’ request. People’s Prosecutors are responsible for controlling and supervising civil courts’ judgments and decisions and ensuring their timely settlement and conformity with Viet Nam’s laws and regulations (Civil Procedure Code).
All Court decisions are provided in written form to the concerned parties and the People’s Prosecutor within ten days (Civil Procedure Code).
Detailed provisions on necessary evidence have been included in Article 203 of the 2005 Intellectual Property Law.
Pursuant to Article 203, documentation to be submitted to prove ownership of an intellectual property right could include, for registered rights, a legitimate copy of Protection Titles, any extract of Register on patents, industrial designs, etc., a certificate of copyright registration, or a certificate of related right registration. For unregistered rights, any document proving the existence of copyright, related rights, well-known marks etc. could be accepted. KENFOX opines that the plaintiff is not required to submit an affidavit of ownership to the court. Procedures also existed for amicable settlement of disputes over royalty, remuneration, licensing contracts and contracts to transfer ownership rights.
The Court can rule that the act of infringement be stopped, recognize the legitimate rights to objects of intellectual property, request that the competent State authorities undertake procedures for the purpose of acquisition of rights, and award damages. The compensation amount is determined based on the “actual material damage” or profit obtained illegally by the infringing party, and “mental damages”.
The calculation of “actual material damages” takes into account property losses, costs of preventing or minimizing the damages, and lost income (Civil Code). “Mental damages” included damages to honour, dignity and prestige of the victim (Article 204.1(b) of the 2005 Intellectual Property Law).
The IP Law of Vietnam 2005 contains detailed provisions on calculation of damages (Article 204), compensation of right holders (Article 205), remedies (Article 202), provisional measures (Article 207), burden of proof (Article 203), and authority of People’s Courts to order provisional measures (Article 210). Pursuant to the 2004 Civil Procedure Code, the Court will decide upon the apportioning of legal costs based on the rights and faults of the parties concerned and the parties could appeal decisions of the first instance civil judgment and request a hearing at higher instance.
Detailed provisions concerning indemnification of the defendant in the case of abuse of civil enforcement procedures by the complainant has been stipulated in the Civil Procedure Code and the 2005 Intellectual Property Law (Article 208.2). Intellectual property right owner, when requesting the suspension of customs procedures, is required to deposit an amount equal to 20 per cent of the value of the goods or, in case of unknown value of the good, a sum of at least VND 20 million, or provide a guarantee ensuring compensation to the owner of the goods (Article 217.2 of the 2005 Intellectual Property Law). The intellectual property right owner having registered his right at a Customs Unit (or a Customs Department or the General Department of Customs if he wishes to register his right at two or more Customs Units) and having paid the prescribed registration fee could request customs authorities to take necessary actions to detect suspected infringing goods at the borders (Article 216 of the 2005 Intellectual Property Law). Customs registration of intellectual property rights is valid for two (02) year and could be renewed at the request of the intellectual property right owner, as long as the latter paid the prescribed fee.
(b) Provisional measures / Preliminary Injunction / Injunctive Relief in Vietnam
KENFOX advises that the Courts having jurisdiction over violations and disputes in relation to intellectual property rights could decide on the application of Provisional measures / Preliminary Injunction / Injunctive Relief. Detailed provisions are laid down in the 2015 Civil Procedure Code and the 2005 Intellectual Property Law. Pursuant to Article 207.1 of the 2005 Intellectual Property Law, provisional measures included seizure, attachment, or sealing of goods suspected to infringe intellectual property rights, and of materials, raw materials or implements for producing or trading such goods; the prohibition to change or displace such goods and materials; and the prohibition to transfer ownership of such goods and materials. Provisional measures could be lifted when no longer considered necessary by the imposing authority.
The Court could order provisional measures to be taken on its own initiative or at the request of the Prosecution Institute or the parties concerned (Civil Procedure Code). Pursuant to Article 206.2 of the 2005 Intellectual Property Law, the Court could, prior to hearing the opinion of the party liable for provisional measures, take an immediate decision which would also be effective immediately. The decision could be appealed to the Chief of Justice by either party, in which case the Prosecution Institute would have the right to make a proposal to the Chief of Justice, who is required to respond within three days (Civil Procedure Code).
(c) Administrative procedures and remedies in Vietnam
Please note that Vietnam has no special agency for the enforcement of Intellectual Property Rights. Pursuant to Article 200.1 of the 2005 Intellectual Property Law, the bodies competent to take administrative action in relation to infringement of intellectual property rights are the market control agencies of the trade administration (Market Control Department and Market Control Branch Offices), customs agencies (Customs Department, Customs branch offices, anti-smuggling inspection office), specialized inspection authorities such as the Culture and Information Inspectorates at the national and provincial levels and the Science and Technology Inspectorates at the national and provincial levels, the People’s Committees at the district and provincial levels, and public security agencies (District Police, Provincial Police, and the Economic Police).
The responsibilities of Vietnamese enforcement authorities depended on their area of administration and jurisdiction, as spelled out in Article 200 of the 2005 Intellectual Property Law. Market control agencies (Market Management Bureau – MMB) could impose administrative remedies and other measures against infringements of industrial property rights and trade in cultural-informational products and services occurring in the country.
Customs agencies have the competence to impose administrative remedies against IPR infringements in the course of exportation and importation, Science and Technology Inspectorates against infringements of industrial property rights, Culture and Information Inspectorates against infringements of copyright, and People’s Committees against infringements of intellectual property rights occurring within their jurisdiction.
As for public security agencies, these are responsible for handling infringements of intellectual property rights in the course of production and trade. The Economic Police – composed of the heads of the District Police and Economic Police Division, of the Director of the Provincial Police, and of the Director General of the Economic Police Department – have the competence to investigate and handle infringements of intellectual property rights in all areas of production and business.
The Economic Police could search the houses of persons deemed to hide instruments involved in or evidence of infringement cases, and suspend business licenses in case of serious violation of the provisions regulating the use of business licenses. It could impose administrative remedies against acts of industrial property infringement related to business and production activities and acts of copyright infringement associated with public order and security. The Economic Police receives specialized training on intellectual property enforcement. It has the same jurisdiction and resources as other police forces. These regulations, which are spelled out in Government Decree No. 99/2010/ND-CP on handling administrative violations in the industrial property field.
Administrative measures and remedies are governed, under the new legislative framework, by Government Decree No. 99/2010/ND-CP on handling administrative violations in the industrial property field and Government Decree No. 105/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law regarding the protection of intellectual property rights and State management of intellectual property.
Pursuant to Article 214 of the IP Law of Vietnam, main administrative measures are warnings and monetary fines. Additional measures included suspension of business activities for a definite term, and in the case of counterfeit and piracy goods, and materials and implements used for manufacturing or trading such goods, confiscation, destruction, distribution, use for non-commercial purposes, or compulsory delivery of transiting goods out of the territory of Vietnam or re-exportation, after infringing elements have been removed. The cumulative effect of these measures would, in KENFOX view, deter further infringement.
Decisions to impose an administrative measure are issued in writing within ten days following the reporting of the violation, or 30 days in complicated cases. Appeal procedures are regulated under the 2011 Law on Complaint. Administrative decisions could be appealed by either party, first to the authority having issued the decision and subsequently either to the administrative court or to a superior administrative body. Decisions of the superior administrative body could be further appealed to the administrative court.
Practice indicates for enforcement actions against IPR infringement in Vietnam, administrative procedures are speedy, simple, inexpensive, and equitable. The injunctions are powerful enough to prevent further infringement as most infringements addressed through administrative procedures are minor and unintentional. The administrative system has been further strengthened under the 2005 Intellectual Property Law. The functions of enforcement authorities have been more clearly defined to avoid overlapping and cumbersome procedures, and a coordinating authority had been established (Article 200 of the 2005 Intellectual Property Law). The combination of administrative procedures and remedies, compensation under civil procedures, and recourse to criminal prosecution in cases of trademark counterfeiting and copyright piracy on a commercial scale provided, in KENFOX view, the deterrent effect foreseen in Article 41 of the TRIPS Agreement, the indemnification of the defendant stipulated in Article 48, and criminal actions stipulated in Article 61.
Special border measures
Customs agencies have the authority to detain imported or exported goods temporarily upon request of the right holder. Pursuant to Article 217 of the 2005 Intellectual Property Law, requests for temporary detention of goods have to be filed with the customs agencies where the goods are imported or exported, accompanied by evidence to substantiate lawful ownership right or use right to the object, and evidence testifying the infringement. The right holder is also required to deposit an amount equal to 20 per cent of the value of the goods or at least 20 million dong in case such value could not be determined, or provide a guarantee ensuring compensation in case of a wrongful request (Article 217.2 of the 2005 Intellectual Property Law).
Decisions to suspend the release of goods from customs are issued by the Chief of the Customs Bureau pursuant to Article 218.1 of the IP Law of Vietnam, and the parties concerned would be notified accordingly. Under Article 218.2 of the IP Law of Vietnam, goods could be suspended from release for 10 days from the date the decision is issued, and an additional 10 days in certain circumstances. Evidence of infringement would need to be produced during this period. The owner of the seized goods would also be given an opportunity to provide evidence or justifications relating to the IPR of the detained goods. The Customs office would take a decision to release or prohibit circulation of the goods in consultation with the State management bodies for Intellectual Property (the National Office of Intellectual Property and the Copyright Office).
Under Article 217.1(b) of the IP Law of Vietnam, the right holder is only required to provide information sufficient to identify the suspected infringing goods or to discover infringing goods. Other types of information, such as the name and address of the importer and exporter, a photo of the goods or information on the predicted time and venue of arrival of the goods, should be submitted only if available. KENFOX opines that this provision in full compliance with Article 51 of the TRIPS Agreement. The time period for responding to the detection of infringing goods has been increased to three working days in the 2005 Intellectual Property Law. KENFOX further notes that detailed provisions have been included in Government Decree No. 105/2006/ND-CP of 22 September 2006 providing detailed provisions and guidelines for implementing certain articles of the 2005 Intellectual Property Law regarding protection of intellectual property rights and State management of intellectual property.
(d) Criminal procedures in Vietnam
Criminal courts of the People’s Courts, at district and provincial level, have jurisdiction over crimes relating to intellectual property rights. The Criminal Code of 2015 included provisions on copyright infringement (Article 225), Infringement of industrial property rights (Articles 226), false advertising (Article 119).
Criminal intellectual property enforcement officials are entitled to take ex-officio actions against criminal infringement of intellectual property rights.
As regards the relationship between administrative penalties and criminal enforcement, KENFOX opines that any infringement of copyright and industrial property rights dealt with administratively and subsequently repeated may be considered a crime in accordance with Articles 225 and 226 of the Criminal Code of 2015. Administrative remedies thus served as a deterrent tool and, in the event of non-compliance with administrative penalties, compelling measures could be taken pursuant to Law on handling administrative violations. Evidence collected during an administrative procedure could be used by the civil court if necessary in accordance with Civil Procedure Code of 2015. KENFOX notes that infringers could be prosecuted either for administrative remedies or for criminal penalties, not both simultaneously. Administrative measures only applied to acts of low gravity. Any person involved in an act including a criminal element or having repeated an offence sanctioned administratively is subject to criminal prosecution. The provisions of the 2005 Intellectual Property Law together with the Circulars issued by the Supreme People’s Court and Ministry of Justice are a clear indication of Vietnam’s commitment to provide effective enforcement of intellectual property rights, including through use of the criminal laws.