Law No.42/2019/QH14 passed on June,14,2019 takes effect on November,1,2019. Specifically, many provisions of Law on Intellectual Property is amended and supplemented listed below:
1.To amend and supplement Point a, Clause 3, Article 6 as follows:
“a/ Industrial property rights to an invention, an industrial design, a layout-design, or a mark shall be established on the basis of a competent state agency’s decision on grant of a protection title according to the registration procedures prescribed in this Law or the recognition of international registration under treaties to which the Socialist Republic of Vietnam is a contracting party.
For a well-known mark, industrial property rights shall be established on the basis of use process, not subject to any registration procedures. For a geographical indication, industrial property rights shall be established on the basis of a competent state agency’s decision on grant of a protection title according to the registration procedures prescribed in this Law or under treaties to which the Socialist Republic of Vietnam is a contracting party;”.
2. To amend and supplement Clause 3, and add Clause 4 below Clause 3, Article 60 as follows:
“3. An invention shall not be considered having lost its novelty if it is publicly disclosed by a person who has the right to make registration defined in Article 86 of this Law or a person who has acquired information on such invention directly or indirectly from the former as long as the invention registration application is filed in Vietnam within 12 months from the date of disclosure.
4. The provision in Clause 3 of this Article shall also apply to an invention publicly disclosed in an industrial property registration application or industrial property protection title announced by the state management agency in charge of industrial property in case the announcement does not conform with law or the registration application is filed by a person having no right to make registration.”.
3. To amend and supplement Article 61 as follows:
“Article 61. Inventive step of inventions
An invention shall be considered involving an inventive step if, based on technical solutions already publicly disclosed through use or by means of a written description or any other forms, inside or outside the country, prior to the filing date or the priority date, as applicable, of the invention registration application, it constitutes an inventive progress and cannot be easily created by a person with average knowledge in the corresponding field.
2. Technical solutions which are inventions disclosed as prescribed in Clauses 3 and 4, Article 60 of this Law may not serve as a basis for evaluation of the inventive step of such inventions.”.
4. To amend and supplement a number of clauses of Article 80 as follows:
a/ To amend and supplement Clause 1 as follows: “1. Names or indications which have become generic names of goods as cognized by relevant consumers in the territory of Vietnam;”;
b/ To amend and supplement Clause 3 as follows: “3. Geographical indications identical with or similar to a protected mark or a mark of which the registration application has the earlier filing date or priority date, if the use of such geographical indications is likely to cause confusion as to the origin of products;”;
5. To add Clause 3 below Clause 2, Article 89 as follows:
“3. An application for establishment of industrial property rights may be submitted in the printed form to the state management agency in charge of industrial property rights or filed in the electronic form via the online system for application submission.”.
6. To amend and supplement the title of Section 4, Chapter VIII as follows:
“Section 4 INTERNATIONAL APPLICATIONS AND REQUESTS, AND THE PROCESSING THEREOF”
7. To add Article 120a below Article 120 in Section 4, Chapter VIII as follows:
“Article 120a. International requests on geographical indications and the processing thereof
1. Requests for recognition and protection of geographical indications under treaties which the Socialist Republic of Vietnam is negotiating are called international requests.
2. The announcement of international requests, processing of third persons’ opinions, and assessment of conditions for protection of geographical indications in international requests must comply with relevant provisions of this Law regarding geographical indications in applications for registration of geographical indications filed to the state management agency in charge of industrial property rights.”.
8. To amend and supplement Clause 2, Article 136 as follows:
“2. Owners of marks are obliged to use such marks continuously. The use of a mark by the licensee under a mark license contract shall also be considered the same as the use by the mark owner. In case a mark has not been used for 5 consecutive years or more, its registration certificate shall be invalidated according to Article 95 of this Law.”.
9. To amend and supplement Article 148 as follows:
“Article 148. Validity of contracts for transfer of industrial property rights
1. For industrial property rights established on the basis of registration under Point a, Clause 3, Article 6 of this Law, industrial property right assignment contracts shall be valid upon registration with the state management agency in charge of industrial property rights.
2. For industrial property rights established on the basis of registration under Point a, Clause 3, Article 6 of this Law, industrial property object license contracts shall be valid as agreed upon by the involved parties.
3. Industrial property object license contracts prescribed in Clause 2 of this Article, except mark license contracts, must be registered with the state competent agency in charge of industrial property rights to be legally valid for the third parties.
4. The industrial property object license contract shall be invalidated exofficio upon the termination of the licensor’s industrial property rights.”.
10. To add Clauses 4 and 5 below Clause 3, Article 198 as follows:
“4. If being concluded by the court as not having committed acts of infringing upon intellectual property rights, an organization or individual being the defendant in a lawsuit over intellectual property right infringement may request the court to force the plaintiff to pay it/him/her reasonable expenses for hiring lawyers and other expenses in accordance with law.
5. In case an organization or individual abuses the procedures for protection of intellectual property rights, causing damage for another organization or individual, the latter may request the court to force the former to compensate for damage caused by such abuse, covering also reasonable expenses for hiring lawyers. Acts of abusing the procedures for protection of intellectual property rights include acts of deliberately surpassing the scope and targets of these procedures.”.
11. To amend and supplement Clause 1, Article 205 as follows:
“1. In case the plaintiff can prove that an act of infringing upon intellectual property rights has caused material damage to it/him/her, it/he/she may request the court to decide on the compensation level on one of the following bases:
a/ Total material damage calculated in an amount of money plus the profit gained by the defendant as a result of the act of infringing upon intellectual property rights, provided the plaintiff’s reduced profit amount has not yet been calculated into total material damage;
b/ The value of the intellectual property object license contract with the presumption that the defendant has been licensed by the plaintiff to use that object under a license contract within the scope corresponding to the infringing act already committed;
c/ The material damage calculated by other methods proposed by intellectual property right holders in accordance with law;
d/ In case it is impossible to determine the level of compensation for material damage on the bases specified at Points a, b and c of this Clause, such compensation level shall be set by the court, depending on the damage extent, but must not exceed VND 500 million.”.
12. To amend and supplement Clause 1, Article 218 as follows:
“1. When the person requesting the suspension of customs procedures has fulfilled the obligations specified in Article 217 of this Law, the customs office shall issue a decision on suspension of customs procedures for the goods lot. The customs office shall, within 30 days after issuing a decision on application of administrative measures for handing counterfeit mark goods and illegally reproduced goods under Clause 4, Article 216 of this Law, provide the intellectual property right holder with information on the names and addresses of the sender, exporter, goods recipient or importer; written goods descriptions; goods quantity; and the country of original of goods (if possible).”.
***Attending to the effect and transitional provisions of this Law:
Article 3. Effect
1.This Law takes effect on November 1, 2019, except the cases prescribed in Clause 4 of this Article2.
To add Section 32a below Section 32, Appendix 4, on the list of conditional business lines to Investment Law No. 67/2014/QH13, which was amended and supplemented under Law No. 90/2015/QH13, Law No. 03/2016/QH14, Law No. 04/2017/QH14, and Law No. 28/2018/QH14 as follows:
“32a. Insurance auxiliary services, including insurance consultancy, insurance risk assessment, insurance actuary, insurance loss assessment, and insurance claim settlement support”.
3. Insurance auxiliary services arising in the course of doing insurance business shall be prescribed by the Government with the approval of the National Assembly Standing Committee prior to their promulgation.
4. Provisions on intellectual property in this Law take effect on January 14, 2019, for the following cases:
a/ Applications for establishment of industrial property filed from January 14, 2019, onwards; b/ Request for termination of invention patents, utility solution patents, and geographical indication registration certificates which are granted on the basis of the registration applications for establishment of industrial property rights filed from January 14, 2019, onwards;
c/ Requests for invalidation of mark registration certificates made from January 14, 2019, onwards;
d/ Lawsuits over intellectual property right infringement accepted by competent agencies from January 14, 2019, onwards; and other requests on protection of intellectual property rights made from January 14, 2019, onwards.
Article 4. Transitional provisions
1. Within 1 year after the effective date of this Law, individuals and insurance auxiliary service-providing organizations before the effective date of this Law must satisfy the conditions for provision of insurance auxiliary services prescribed in this Law. Past the time limit prescribed in this Clause, individuals and organizations that still fail to meet the prescribed conditions may not continue providing insurance auxiliary services until they fully meet these conditions.
2. Patent and geographical indication registration applications filed before January 14, 2019, shall be furthered processed under Law No. 50/2005/QH11 on Intellectual Property which was amended and supplemented under Law No. 36/2009/QH12.
3. Mark license contracts which have been signed but not yet registered with the state management agency in charge of industrial property rights before January 14, 2019, are legally valid to third parties from January 14, 2019.
4. Lawsuits over intellectual property right infringement which have been accepted by competent agencies before January 14, 2019, but not yet settled, shall be continued processed under Law No. 50/2005/QH11 on Intellectual Property which was amended and supplemented under Law No. 36/2009/QH12.
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