New regulation from the amendment on law on intellectual property

On 1st of November 2019, amendment on Law on Intellectual Property 2005, was passed by the 14th National Assembly of the Socialist Republic of Vietnam at its 7th session on 14th of June 2019, officially entered into force with the following remarks:

New regulation from the amendment on law on intellectual property

1. Termination upon the trademark, which is not used continuously for five years or more

Trademark holders shall use trademark continuously. Trademark used under a trademark use agreement by a transferee is also considered as an act of using the holder’s trademark.

In case the trademark is not used continuously for five years or more, the Trademark Certificate of Registration shall be invalid.

2. Trademark use agreement (“Trademark agreement”) is not required to register with the authority

From 14th of January 2019, trademark agreement signed between parties is not required to register at National Office of Intellectual Property of Vietnam, in order to be enforceable to third parties.

Specifically, except for trademark use agreements, industrial property rights agreements established regarding the law, shall be registered with an industrial property rights authority to be enforceable to third parties.

Trademark use agreements signed between the parties but not registered with industrial property rights authority before 14th of January 2019, are only enforceable to third party from the 14th of January 2019.

3. Change in criterion to obtain the right over industrial property to geographical indications

Industrial property right to geographic indications:

  • Based on the decisions on granting protection issued by competent authorities in accordance with registration procedures specified in this Law; or
  • Based on the International agreement to which the Socialist Republic of Vietnam is a signatory; (instead of the previous regulation, on the basis of recognized international registration granted accordance with international agreement to which the Socialist Republic of Vietnam is a signatory).

4. Prolong the submission time of application of invention, which will not be considered losing it novelty, from 6 months up to 12 months.

Invention shall not be considered losing its novelty if being publicly disclosed under the condition that the application of invention is submitted in Vietnam within 12 months from the date of its disclosure by:

  1. The person who are entitled the right of registration as prescribed by the law;
  2. The person who has information about the invention directly or indirectly from the person who are entitled to registration;

New provision has prolonged the submission time of application of novelty, which will not be considered losing it novelty, up to 12 months instead of 6 months and broaden the scope of applicants comparing to previous regulation of Law on Intellectual Property 2005.