Comprehensive and Progressive Trans-Pacific Partnership, known as CPTPP, is a new generation of Free Trade Agreement (FTA), including 11 countries, including Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore & Vietnam. CPTPP was signed on 08 march 2018 in Santiago, Chile and officially be in force on 30 December 2018 for the first group of 6 countries to complete procedures for ratifying the Agreement including Mexico, Japan, Singapore, New Zealand, Canada & Australia. For Vietnam, the CPTPP has been in force from 14 January 2019.
In the CPTPP Agreement, Chapter 18, which is for Intellectual Property (IP), may be considered as including many difficult obligations for Vietnam’s enforcement. In order to meet the requirements of this chapter, Vietnam's legal system relating to IP also needs to have certain modifications in order to comply with the obligations set out in this Chapter 18. According to the roadmap set by the Government as stipulated in the Decision No. 121/QD-TTg on approving the procedure to implement the CPTPP Agreement issued on January 24, 2019, in the work of law-making and institutions, in respect of the Law on Intellectual Property, Ministry of Science and Technology has to to complete the Statements of Law Projects, the Decrees guiding the implementations of the amended Law in the year 2021 and the Ministry of Culture, Sports and Tourism has to complete the Statements of ratifying international treaties in the year 2022.
In order to meet certain requirements in accordance with the provisions of the CPTPP Agreement, the NOIP issued Notification No. 1926/TB-SHTT dated 01 February 2019 on the application of some provisions of the CPTPP Agreement. The application of the following rules is applied for all applications filed by organizations, individuals who are citizens of member countries of WTO or Paris Convention and patent applications for obtaining Certification of Patent/Utility Solution filed from 14 January 2019 in Vietnam. In particulars,
1. Article 18.27 CPTPP Agreement: Non-Recordal of a Licence: No Party shall require recordal of trademark licences:
(a) to establish the validity of the licence; or
(b) 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.
As stipulated in Article 148. 2) of IP Law 2005, amended and supplemented in 2009: a contract for assignment of industrial property right
shall only be effective upon registration with the state administration authority of industrial property rights.
How to apply according to CPTPP Agreement from 14/01/2019: Licensing contracts with legal validity for third parties do NOT depend on registration with the NOIP. Besides, according to Article 124. 5)
(1) of IP Law, the use of the mark by the Licensee in accordance with a License Contracts is considered as evidences of use of the trademark by its owner in the procedures for establishing, maintaining and enforcing trademark rights without regard to the registration of that Contract at the NOIP.
2. Article 18.32.1.b của CPTPP Agreement: In respect of administrative procedures for registration and recognition of Geographical Indications, it is compulsory to have regulations allowing interest parties to oppose or recognize one geographical indication and allowing any protection or recognition of a geographical indication possibly be refused or not accepted, at lease the geographical indication bears any sign
confusingly similar to the prior marks protected in Vietnam.
As stipulated in Article 80. 3) of IP Law 2005, amended and supplemented in 2009: Geographical indications will not be protected if being identical with or similar to a protected mark, where the use of such geographical indications is
to cause a confusion as to the origin of products;
How to apply according to CPTPP Agreement from 14/01/2019: When a third party has any opinion in relation to a geographical indication application, the NOIP is obliged to receive and proceed in accordance with regulations. The opposition against the registration of a geographical indication filed by third party based on the reason that such geographical indication
“is likely to cause confusion” to a prior registered mark must be replaced by
“is to cause confusion”. Additionally, the assessment of the likehood of confusion must take into account the fact that geographical indication is a priory existence object (independent on whether it is registered or not) and widely recognized, even famous, therefore, the ability of being confused by rather than causing confusion to a registered mark.
3. Article 18.32.5 of CPTPP Agreement: Basis on opposition and cancellation: If a Party provides protection or recognition of a geographical indication through the Administrative Procedures for the Protection or Recognition of Geographical Indications to the translation or transliteration of that geographical indication, that Party shall make available procedures that are equivalent to, and grounds that are the same as, those applied to ordinary geographical indication.
How to apply according to CPTPP Agreement from 14/01/2019: The geographical indication application for the translation or transliteration of the geographical indication to be filed since the effective date of CPTPP Agreement will be treated as an ordinary geographical indication application and examined under current regulations in Vietnam.
4. Article 18.34 of CTPTT Agreement: With respect to the Administrative Procedures for the Protection or Recognition of Geographical Indications and Grounds of Opposition and Cancellation, 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 goods.
How to apply according to CPTPP Agreement from 14/01/2019: For those applications for geographical indication to be filed since the effective date of CPTPP Agreement, during examination of a multi-component term comprising a customary term identified as a common name for the associated goods/services, if a geographical indication is accepted for protection, there will be exclusive right regarding such common name components.
5. Article 18.38 of CPTPP Agreement: Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step, if the public disclosure:
- was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant;
and
- occurred within 12 months prior to the date of the filing of the application in the territory of the Party.
As stipulated in Article 60. 3) of IP Law 2005, amended and supplemented in 2009 (2), an invention shall not be considered having lost its novelty if it is published by the person having the right to register it or by the person getting direct or indirect information from the person who have the right to register it and such disclosure is made not over 12 months before filing application for registration (excluding priority date)
How to apply according to CPTPP Agreement from 14/01/2019: The information publicly disclosed in the above-mentioned case will not be taken as cited document (no part of “technical status”) to identify the novelty or invention of related patent.
(1): Article 124. 5) of IP Law 2005, amended and supplemented in 2009: The use of a mark means the conduct of the following acts:
a) Affixing the protected mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities;
b) Circulating, or offering, advertising, storing for sale of, goods bearing the protected mark;
c) Importing goods or services bearing the protected mark.
(2): Article 60.3) of IP Law 2005, amended and supplemented 2009: An invention shall not be considered having lost its novelty if it is published in the following cases, provided that the invention registration application is filed within 6 months from the date of publication:
a/ It is published by another person without permission of the person having the right to register it defined in Article 86 of this Law;
b/ It is published in the form of a scientific presentation by the person having the right to register it defined in Article 86 of this Law;