In details

1. Bad-faith filing

• Prior to the enactment of the 2022 IP Law, the Vietnamese IP Law lacked regulations specifically addressing bad-faith filing. This gap presented challenges for trademark holders, especially those without relevant prior applied-for or registered trademarks in Vietnam when dealing with trademark squatters.
• The 2022 IP Law introduced bad-faith filing regulations but does not provide specific details or guidance on how IPR holders can utilize this legal basis for taking action. 
• With the arrival of Circular 23, 'bad-faith' regulations have been stipulated, giving room for IPR holders to tackle bad-faith filing of trademark squatters.

2. Trademark opposition procedures

Circular 23 has made significant changes to the opposition procedure, with two main amendments:

1. Notification of an opposition to the applicant

• In the past, the Vietnam IP Office would notify the applicant about a well-founded opposition to seek its counter-arguments.
• However, under Circular 23, if there is a clear basis for determining either confusing similarity or dissimilarity between the opposed and cited marks, the Vietnam IP Office will address the opposition as part of the substantive examination without informing the applicant.

2. Handling oppositions related to "registration rights"

• Under the previous rules, if the Vietnam IP Office could not ascertain the validity of an opposition concerning the applicant's registration rights, they would request the opponent to bring the matter to court. 
• With Circular 23 in effect, in cases where the opposition is concerned with 'registration rights,' the Vietnam IP Office will promptly advise the opponent to pursue the matter in court and to furnish the office with a court receipt within two months. Noncompliance will result in the opposition being deemed withdrawn.
• However, the above regulations do not apply to all oppositions involving 'registration rights.' The opponent is not required to file a lawsuit in certain cases where oppositions are related to Articles 87.3, 87.4, and 87.7 of the 2022 IP Law.

3. Subjects of appeal proceedings and definition of 'new circumstances'

• Circular 23 has revised the subjects of appeal proceedings to include relevant decisions pertaining to international industrial designs, decisions on the grant of industrial property registration (with no exceptions as per the old circular), decisions resolving the first appeal by the Vietnam IP Office, and other decisions/notices that meet the criteria.
• Notably, for the first time, "new circumstances" are officially defined as circumstances that have existed during the examination period of the application but that the Vietnam IP Office and the relevant individuals and organizations could only, for certain objective reasons, know about after the decision of grand or refusal is issued, under Point b, Clause 3 of Article 35. Kindly note that new circumstances are not accepted during the appeal period.

4. Sound mark examination 

• The 2022 IP Law introduces protection for sound marks for the first time. However, despite the law and the subsequent Decree 65, there is currently no detailed guidance on examining sound marks.
• Circular 23 has now provided some initial clarification regarding the examination of sound marks, stipulating that sound marks must be presented graphically to be eligible for trademark protection. 
• However, it appears the guidance mainly addresses the formal criteria for a sound mark to qualify for protection. Meanwhile, specific guidelines for assessing the inherent distinctiveness of sound marks and determining their potential conflicts with other sound marks or other IP objects (i.e., copyrighted music) have yet to be established. We will need to await further updates and guidance from local authorities on examining sound marks in the coming months.

5. Minimum information sources in trademark examination

• Circular 23 has made changes to the minimum information sources that the Vietnam IP Office must use when reviewing trademark applications. These changes include:
  • Adding "warranty seals of international organizations; the national anthem of the Socialist Republic of Vietnam and of other countries, the international anthem" to the list of required sources for assessing trademark registrability.
  • Specifying that "flags, names, symbols of state agencies, political organizations, socio-political organizations, political socio-professional organizations, social organizations, socio-professional organizations of Vietnam and the world" must also be checked.
• Furthermore, Circular 23 now includes the "list of plant varieties protected in Vietnam" as a reference source, alongside the existing minimum information sources, to assess if a trademark conflicts with third-party IPRs.

6. Essential technical features for assessing the novelty of the invention

• Under previous Circular 01 regulations, essential technical features of a technical solution were limited to those mentioned in the claims of the application and protection certificates.
• Circular 23 broadens the definition of essential technical features in the assessment of inventions by including descriptions and drawings. In other words, the novelty of a technical solution is now determined not only according to the claim but also the description and drawings. 

7. Use of results of substantive examination of corresponding patent applications

• Circular 23 stipulates that during the substantive examination of patent applications, the Vietnam IP Office may consider the search reports and examination results of corresponding overseas patent applications. Furthermore, before the Vietnam IP Office issues a notification regarding the examination results, the applicant can request the use of examination results from corresponding overseas patent applications, provided certain conditions are met.
• Before Circular 23 was issued, the practice of requesting the Vietnam IP Office to consider overseas search reports and the examination results of corresponding patent applications had been informally implemented by IPR holders. However, this practice has now been officially recognized and incorporated into law under Circular 23 for the first time. This may ensure a more consistent and improved examination of patent applications at the Vietnam IP Office, as examiners are now required to consult such sources during the examination process. 

8. Industrial design (ID)

• Circular 23 introduces definitions of "complex product" and "parts to be assembled into a complex product" of an ID. The circular also outlines additional elements that are not considered essential design features of an ID, including (i) design features that are invisible during the use of the products (for IDs of products) and (ii) complex products (for IDs of parts to be assembled into a complex product).
• The primary goal of these additional ID regulations is to align with the 2022 IP Law and Decree 65 and ensure a consistent legal framework in the best interests of IPR holders.

Conclusion 

Circular 23 is a significant and crucial step toward facilitating the implementation of the 2022 IP Law and provides IPR holders with more detailed regulations and guidance for establishing and safeguarding their rights within current legal frameworks and practices. 

That said, certain IPR issues have yet to be fully addressed in Circular 23, so we can anticipate further amendments and guidelines to resolve these issues and offer clearer guidance in the near future.

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