how can cptpp change vietnam's ip · location: hanoi, vietnam email:...

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How can CPTPPchange Vietnam's IP landscape?

South-east Asia IPR SME Helpdesk

13 March 2019


Moderator:

HONG THI MY OANH

Project Assistant

South-east Asia IPR SME Helpdesk

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(Brussels time zone)

• 10:00 – 10:05: Introduction to the Helpdesk and its services

Marta Bettinazzi, IP Business Advisor

10:05 – 10:20: General introduction on Vietnam’s IP Landscape

Marta Bettinazzi, IP Business Advisor

• 10:20 – 10:50: How can CPTPP change Vietnam’s IP Landscape?

Ms.Nga Nguyen, External Expert, South-East Asia IPR SME Helpdesk

• 10:50 – 10:55: Q&A

• 10:55 – 11:00: Closing

Agenda

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Speaker’s bio

Name: Ms. Marta Bettinazzi

Title: IP Business Advisor, South-east Asia IPR SME HelpdeskLocation: Ho Chi Minh City, VietnamEmail: [email protected]

• Ms. Marta Bettinazzi is the new IP Advisor of the South-east Asia IPR SME Helpdesk projectlocated in Ho Chi Minh City. Marta is in charge of delivering IPR trainings across South-eastAsia, advising European SMEs on enquiries related to South-east Asia.

• Marta holds a Master Degree in Law from the University of Pavia (Italy), and a Ph.D in RomanLaw and European legal culture from the Universities of Pavia and Saarbrücken (Germany).She has also completed an LLM program in European and International Law at the EuropaInstitut in Saarbrücken (Germany), specializing in European Economic Law and IPR.

• After working for two years as post doc researcher at the University of Pavia, she started herpractice as lawyer in a Law firm in Milan.

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Key IP considerations when starting a business in Vietnam

MARTA BETTINAZZI

IP Business Advisor at the South-East Asia

IPR SME Helpdesk

13 March 2019

An initiative of the

Enquiry Helpline

Webinars and E-learning modules

Training Workshops

Core Services – What we offer

Website & BlogNewsletter, E-Bulletin

Guides and factsheets



Why is intellectual property important?

•Brand positioning and product quality = reputation

•Allows recoup of research and development costs

•Protects revenues gained from product sales

Protects rights of owners from competitors

•Monopoly right provides revenue stream in exchange for full disclosure

• IP rights can be licensed or sold and used as revenue generator

Encourages innovation

•Protects investments in domestic and international markets

Adds value


Is there a problem…?


IP is borne nation

al

granted by national law

applies within national borders

to the national companies

Trade goes

international

worldwide marketing

transfer of technology

worldwide

risks

Intellectual property

a strange unknown thing


Copyright : Literary artistic and scientific works. Software and

data collection

Trade marks: Distinctive sign that allows consumers to distinguish good of service

Patent: Invention or Utility solution (novel –inventive step- industrial application)

Industrial design: appearance of a product (new – creative – industrial application)

Geographical indication: name or a sign that connect to a specific place

Trade secret: information which has not been disclosed and is applicable in business

IPR protection in Vietnam

• Registration takes 15 days

• 100.000 VND (4 €) to 400.000 VND (15 €)Copyright

• Registration takes 20 m.

• 2.730.000 VND (102 €)

Invention Patent


• 2.730.000 VND (102 €)

Utility Solution Patent


• 3.010.000 VND (113 €)

Industrial design

• Registration takes 12-15 m

• 1.000.000 VND (35 €)Trade marks


National treatment (same protection to nationals of otherContracting States)

Right of priority the applications filed within a certain period oftime will be regarded as if they had been filed on the same day asthe first application

Paris Convention

(1883)

National treatment

Automatic protection no formality

Independence of protection independent of the existence of protection in the country of origin of the work

Berne Convention

(1886)

System to protect a mark in a large number of countries byobtaining an international registration that has effect ineach of the designated Contracting Parties

Madrid protocol (1989)

Unified procedure for filing patent applications toprotect inventions in each of its contracting states

Patent Cooperation Treaty (1970)

IPR protection in Vietnam



Enforcement

ADMINISTRATIVE ACTIONS

• Penalty for the infringer

• Seizure of the infringing goods

CRIMINAL PROSECUTION

• Investigation and police raid actions based on request

• Penalty and imprisonment prescribed in the IP laws

• No control

CIVIL ACTION

• Long and expensive, damages questionable, delayed results, uncertainty

ALTERNATIVE DISPUTE RESOLUTION

• From a cease and desist letter to mediation and arbitration


Is it worth to register?Risks?


Backdoor sales

Infringement by third party manufacturing

Infringement by potential partners

Import and sales counterfeits

Online infringements

Bad-faith registrations

Is it worth to register?Yes!

Without registration no enforcement is possible

Enforcement exists!

Companies have to learn how to play smart


Identify your IP assets to protect

Prioritize protection needs

Assess vulnerability of your business asset

Collect information on local IP protection and practice and adapt to them

Set aside a reasonable budget

Play smart!


Register as soon as possible

• Best before entering the market

• Take advantage of international treaty (Madrid and PCT)

Sign NA and NNN agreement with partners and employee

• Agreements can be enforced independently from the IP violations

• Trade secrets are a powerful tool

Monitor the Market for possible infringements

• Time is a key factor!

Choose the right form of enforcement

• Custom registration

• Cease and desist letter

Play smart!


Final Tips and Watch out

Know your rights:

• The different kind IPR enjoy different types of protection

Know the law:

• The legal framework in Vietnam is sound

• Enforcement cumbersome

Know how to protect your rights:

• Get in contact with a local lawyer (already for registration)

• Choose the best enforcement



Nga Nguyen

External Expert, South-East Asia IPR SME Helpdesk

Counsel, Hogan Lovells International LLP in Vietnam

13 March 2019


Speaker’s bio

Name: Nga NguyenFirm: Hogan LovellsLocation: Hanoi, VietnamEmail: [email protected]

LL.M, Melbourne University Law School

IP Diploma, Federal Institute of IP, Moscow

Vietnam-qualified lawyer and licensed IP Agent

25-years experience in IP

Leading lawyer in IP in Vietnam by Asia Pacific, Asia IP, Asialaw & Practice, PLC Which Lawyer?, Legal 500 Asia Pacific, Managing Intellectual Property, World Trademark Review, World Intellectual Property Review.

Practice areas

Management and enforcement of intellectual

property rights

Intellectual property and competition law interface

Strategic counselling and portfolio development

Technology transfer and licensing

Product registration, packaging and labelling

Nga NguyenCounselHogan LovellsT +84 4 3946 [email protected]


What is CPTPP?

• The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP or TPP-11).

• Signed in March 2018.

• Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam

• Combined population: 495 million

• Combined GDP: $13.5 trillion

• Currently effective in 7 countries: Australia, Canada, Japan, Mexico, New Zealand and Singapore and Vietnam.


Why CPTPP?

• In February 2016, The Trans-Pacific Partnership (TPP) was signed.

• In January 2017, the US withdrew from TPP.

• In November 2017, 11 remaining members announced their commitment to the agreement.

• In March 2018, CPTPP was signed.

• CPTPP is currently effective for Australia, Canada, Japan, Mexico, New Zealand, Singapore and Vietnam.

• CPTPP suspended 20 contents of TPP among which 11 contents were IP and IP-related provisions.


Expectations

• Multilateral trade agreements such as the CPTPP are expected to further boost Vietnam’s investment and export driven growth model (Economic and Distributional Impacts of CPTPP: The Case of Vietnam).

• “Even under conservative assumptions, the report estimates that CPTPP would increase Vietnam’s GDP by 1.1 percent by 2030. Assuming a modest boost to productivity, the estimated increase of GDP would amount to 3.5 percent from CPTPP,” (Ousmane Dione, World Bank Country Director for Vietnam).


http://documents.worldbank.org/curated/en/530071520516750941/Economic-and-distributional-impacts-of-comprehensive-and-progressive-agreement-for-trans-pacific-partnership-the-case-of-Vietnam

Vietnam: What shall be changed?

• CPTPP Chapter 18: TRIPs & TRIPs+ protection standards

• A majority of CPTPP’s IP provisions have been more or less codified in Vietnam’s legislation.

• Changes are required where:

- Current domestic legislation does not fully satisfy a CPTPP requirement.

- Though current domestic legislation fully satisfy CPTPP a requirement, the implementation remains unsatisfied.


Poll question 1:

When shall CPTPP’s IP provisions be effective in full in Vietnam?

A. 14 January 2019

B. 14 January 2024

C. As soon as possible

D. I don’t know

Acceding to Int’l Agreements

• The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (Budapest Treaty); Max. delay: two years.

• The WIPO Copyright Treaty (WCT); Max. delay: three years.

• The WIPO Performances and Phonograms Treaty (WPPT) ); Max. delay: three years.


Non-traditional marks

CPTPP Art. 18.18 Vietnam’s Law on IP Art.72

No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks.

A mark shall be a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors, to be eligible for trademark protection.


Well known mark

CPTPP Art. 18.22 Vietnam’s Law on IP Art. 75

No Party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well-known trademarks, or given prior recognition as a well-known trademark.

Criteria for evaluation of whether or not a mark is well known:…6. Number of countries protecting the mark.7. Number of countries recognizing the mark as a well known mark.


Electronic trademark application and maintenance

CPTPP Art. 18.24 Vietnam’s Law on IP

Each Party shall provide: (a) a system for the electronic application for, and maintenance of, trademarks;

No provision and there is no such system in the place.


Recordal of Trademark License

CPTPP Art. 18.27 Vietnam’s Law on IP Art. 148.2

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.

A trademark licence contract shall be valid as agreed upon by the parties involved, but shall be legally effective as against a third party upon registration with the State administrative body for industrial property rights.


Domain Name

CPTPP Art. 18.28 Vietnamese Law

For high-level country code domain names (ccTLD), CPTPP requires member countries to take certain measures such as regulations on dispute settlement mechanism (according to ICANN principles or similar).

Vietnam issued a guidance for changing and revoking domain names that infringe intellectual property laws in 2016. However, the process of addressing infringements is slow and cumbersome, and is done on a case-by-case basis.


Trademark vs. Geographical Indication

CPTPP Art. 18.32 Vietnam’s Law

CPTPP requires that Party shall provide procedures for objection to or rejection of the protection or recognition of a geographical indication, cancellation of a protected or a recognised geographical indication on the ground, among others, that the geographical indication is likely to cause confusion with a trademark that is the subject of a pre-existing good faith pending application in the territory of the Party.

No provision and there is no such system in the place.


Patent: Grace period for novelty and inventive step

CPTPP Art. 18.27 Vietnam’s Law on IP Art. 60.2

CPTPP requires that each Party shall disregard at least information contained in public disclosures made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant within 12 months prior to the date of the filing of the application in the territory of the Party.

Vietnam recognise the following three exceptions for novelty: a) Publication by another person without the applicant’s permission;b) Publication by the applicant in the form of a scientific report;c) Display at a national exhibition of Vietnam or at an official or officially recognized international exhibition by the applicant.


Protection of undisclosed test or data


CPTPP requires protection of undisclosed test or other data concerning the safety and efficacy of the agricultural chemical products or evidence of a prior marketing approval of the product in another territory for at least 10 years from the date of marketing approval of the new agricultural chemical product in the territory of the Party .

Such period under Vietnam’s current Law on IP is 5 years.


Patent-linked measures


Commitment to patent-linked measures, such as:- Provide information on new circulation applications for patent owners and create opportunities for patent owners to protect their interests; or- Maintain a system outside the judicial procedure to prevent licensing of new pharmaceutical products of third parties.

No such patent-linked measures is available.


Protection for industrial designs

CPTPP Art. 18.55 Vietnam’s laws and regulations

Commit that protection for industrial designs is available for designs: (a) embodied in a part of an article; or, alternatively, (b) having a particular regard, where appropriate, to a part of an article in the context of the article as a whole.

No such protection is available.- Industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements (Art. 4.13 of the Law on IP)- A product means an item, tool, equipment, vehicle, or parts used for assembling or incorporating such products, is manufactured using industrial or craft method, has clear structure and functions and is sold independently (Item 33.2b) of Amended Circular No. 01/2007/TT-BKHCN).


Enforcement commitments


• Each Party shall ensure effective enforcement procedures against any act of infringement of intellectual property rights covered by this Chapter (CPTPP Art. 18.71).

• Each Party shall ensure that its procedures concerning the enforcement of intellectual property rights are fair and equitable. These procedures shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays (CPTPP Art. 18.71).

• Others.

Presumptions of rights in copyright enforcement proceedings


CPTPP requires, in the absence of proof to the contrary, presumptions about respective rights of the author, performer producer or publisher of the work, performance or phonogram, if their name is indicated in the usual manner therein.

While recognising that a certificate of copyright registration shall not be a compulsory pre-requisite for an entitlement to copyright the law provides that persons who are granted certificates of copyright registration shall not take on any obligation to prove their ownership of such copyright in any dispute that arises, unless otherwise proved.


Presumptions of rights in trademark/patent enforcement


CPTPP requires, in the absence of proof to the contrary, presumptions that a registered trademark or a granted patent be prima facie valid if such trademark or patent was substantively examined and granted.

Though Vietnam’s IP Law recognizes such presumptions,the enforcement authorities do suspend enforcement proceedings and wait for the IP office’s decision if the validity of the protection certificate is challenged by the defendant.


Border control measures

CPTPP Art. 18.76 Vietnam’s Law Art. 216

Each Party shall provide that its competent authorities may initiate border measures ex officio119 with respect to goods under customs control120 that are: (a) imported; (b) destined for export; or (c) in transitand that are suspected of being counterfeit trademark goods or pirated copyright goods.

Suspension of customs procedures for goods suspected of infringing upon intellectual property rights means a measure to be taken at the request of an intellectual property right-holder…


Criminal procedures and penalties


CPTPP provides for a definition of commercial scale for criminal charges for acts of intentionally counterfeiting trademarks, pirating copyrights and related rights.

Vietnam needs to supplement the definition of commercial scale for criminal charges for acts of intentionally counterfeiting trademarks, pirating copyrights and related rights to the Criminal Code.


Criminal procedures and penalties

CPTPP Art. 18.77.4 Vietnam’s Law

CPTPP requires its members to provide for appropriate criminal procedures and penalties against the unauthorised copying of a cinematographic work from a performance in a movie theatre that causes significant harm to a right holder in the market for that work.

No specific provision for this particular infringing act is currently available under the Law on IP.


Poll question 2:

Will the changes in the enforcement legislation improve the chance of enforcing IPR?

A. Yes

B. No

C. Maybe

Take Away Messages

• Vietnam’s current IP legislation includes majority of its IP commitments under the CPTPP. However, implementation of the legal provisions remains unsatisfactory.

• Vietnam shall definitely achieve a new level of IP protection and enforcement thanks to the CPTPP and other new-generation FTAs, such EVFTA.

• Vietnam’s agencies have been and are actively preparing to introduce necessary changes to fully comply with the CPTPP’s requirements.


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