Vietnam’s Ministry of Science and Technology has recently completed a draft of the country’s amended Intellectual Property Law. The goal of the amendment is to continue the process of improving the country’s Intellectual Property climate. Below are some important amendments in term of trademark.
1. Numerous updates in Article 74.2 about cases where a mark shall be considered as indistinctive:
In points a, b and c, the trademark is refused if it is Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, Conventional signs or symbols, pictures or common names or descriptive. An exception is where the trademark has been widely used and therefore been recognized as a trademark. The draft adds one phrase at the end of this exception where it should be stated as “where the trademark has been widely used and therefore been recognized as a trademark before its filing date”. Although the phrase has already been adapted by the Registry in recent years during its practice, but this shall be the first time it is stated in a written law.
In point h, the duration which an expired trademark can block subsequent trademarks has been 05 years counting from its expired date. However, the new draft reduces this duration to only 03 years.
Point p is a fresh regulation, concerning the cases where an applied trademark is confusingly similar to characters’ name or figure from copyrighted works.
2. Non-use invalidation against trademark
It is added to Article 95.1 that “A part or the whole validity of a protection title shall be terminated in the following cases…” The phrase has been adapted by the Registry in recent years and this shall be the first time it is stated in a written law. Accordingly, there will be cases where one class or more than one class (of a multi-class trademark) shall be invalided; one item or more than items of a class shall be invalided.
There is also new regulation about generic trademark, also known as a genericized trademark or proprietary eponym, is a trademark or brand name that, because of its popularity or significance, has become the generic term for, or synonymous with, a general class of products or services. The new draft states that in such case, the mark can be invalided subject to invalidation request.
3. Cancellation against trademark
A major update is per Article 96 where the term “bad faith” has been put into written law for the very first time. Previously the Registry unofficially accepts the concept of “bad faith” (and has called it “dishonesty”), explaining that it refers to the case where two parties have relationships through which the bad-faith party learned about the original trademark and intentionally registers such trademark to benefit from the goodwill and reputation associated with the trademark of another owner.
The amended Intellectual Property is expected to be enacted by the 15th National Assembly of Vietnam.
