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Vietnam passed its first Intellectual Property Law in its National Assembly in the year 2005. Since then, the law has been amended twice, in 2009 and 2019, to respond to the dynamic social and economic environment of the country. Recently, the Vietnamese government issued a draft 3rd Amendment to the IP Law. The amendment is designed to make the IP Laws compliant with the regulations of the new series of Free Trade Agreements signed by Vietnam, example, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, the European Union Vietnam Free Trade Agreement and the Regional Comprehensive Economic Partnership. The country has always kept its own interests to make a balance.
The draft amendment suggested changes in copyrights, trademarks, patents, industrial designs and geographical indications.
[Picture Credit: gettyimages]
The amendment was set to ensure clear and explicit regulations on the authors, copyright holders, performers and related rights holders in case of assignment, license or transfer of the rights. The regulations related to copyrights and owners are explicit. The definitions and explanation of terms under Article 4 such as “derivative works”, “published works, phonograms and video recordings”, “copy, broadcast”, “industrial designs”, “well known trademarks” and “geographical indications”. In addition to this, the amendment eliminated the term “affiliate trademark”.
Further, Article 198A was added to provide clarity on the rights related to authors, performers, producers of phonograms, broadcasting organizations and the producers of cinema-related works to be in accordance with the international commitments and obligations.Article 198B was added to ensure that the intermediary service providers are responsible in the protection of copyright in the Internet. The provision is in consistence with the free trade agreement between Vietnam and the EU. Article 20 is amended to clarify the content of performance rights, the right to copy and where the right to copy does not apply. The provision also includes broadcasting and communication rights. Article 21 provides an inclusion of creative participants in their right to cinematograph work, theatrical works and the distribution of such works. Article 22 is amended to expand the scope of “computer programs” to the devices and amend or upgrade the program. Moreover, now the owners or legally entitled individuals can make a backup copy.
The first major amendment is the recognition of sound marks. While the marks are recognized for protection, the issue of evaluation and recognition can be a big challenge for the state. Further, the “malicious intent” is added in Article 96(1) in case of invalidating the protection title. Furthermore, a well-known copyright protected in the territory is also considered a ground for refusal of a trademark.
Inventions and Designs
To encourage the creation, exploitation and dissemination of inventions i.e., patents, industrial designs and layout designs created from the State budget and added some regulations to control the inventions using genetic resourced and the traditional knowledge about genetic resources. The amendment to Article 60(1) stated that an invention shall lose its novelty once it is disclosed with an earlier filing or priority date. Article 86A now provides the right to register the inventions, industrial designs and layout designs and additionally states that the organizations manufacturing and developing such a program shall be the owner. In case, an invention is in a technical field and is for security purposes, then the inventor can file an application abroad after an expiry of six months from the application date in Vietnam. An addition has been made to the clause of compulsory licensing i.e., on the request to meet the needs of importing country eligible under the TRIPS Agreement.
Expansion of permission exception (Fair Use)
To maintain a balance between the commercial and societal interests, the Vietnamese government proposed to add certain exceptions and limitations on the infringement.
- The amendment provides an inclusive list of published works that do not require permission and payment of the royalty amount. Some of the examples are: self-copy for personal scientific research and study, copying of part of work for personal teaching purposes, using works in official activities of state agencies and using works in library activities for non-commercial purposes.
- An additional exception has been added for persons with disabilities wherein such persons along with their custodians and caregivers have the right to copy, perform or transit a work. The copy should be in an accessible format without any alteration.
Criminal handling of the crime of infringing upon industrial property rights without victim’s request
Article 155(1) allows the competent authority to take a suo moto cognizance in case of an infringement i.e., without the request of the victim. However, the same is allowed only in cases related to trademarks and not geographical indications. The consideration is based on the interests of the victims and giving them a choice whether or not to go for criminal measures. In case of a serious crime, the authorities will have to take immediate and useful steps for further prosecution.
Maintain the mechanism to handle acts of infringement of IPR
The government, in consideration with the National Assembly consulted on sanctioning administrative violations for acts of infringement. The administrative sanctions shall only be implemented for copyright, related rights, trademarks, geographical indications and plant varieties. Infringement of other works shall be covered under civil remedies. However, the plan was not carried forward and it was decided that the current infringement mechanism shall be used i.e., administrative sanctions on all the infringement acts despite the type of property.
The new Vietnamese Law is in accordance with different free trade agreements the country is set to enter into. Free Trade Agreements aim at ensuring that there are less tariffs and less restrictions. The law before the draft amendment was strict and rigid and hence, there was a need of making requisite changes. The changes are yet to be enforced. However, it can be seen that Vietnam is willing to take the measures that can make it a relevant part of the global economy. The new regulation allows the competent authority to take requisite actions. The sound marks have been included in the trademarks regime to walk with the new development and stay important. Moreover, the provisions such as fair use and research, which already form part of many economies like India, have been added. It is simply a positive step on the path of development and growth. The future holds how the amendments turn out.
Author: Tanya Saraswat – a student of Narsee Monjee Institute of Managemen Studies (NMIMS), in case of any queries please contact/write back to us via email firstname.lastname@example.org. or at Khurana & Khurana, Advocates and IP Attorney.