In details

1. IPR establishment
   1. No opposition procedures for international industrial design (ID) and trademark applications

• Unlike the regulations for national applications, where the 2022 IP Law allows for both official opposition and written opinion procedures for reference, international applications for ID and trademarks via the La Hay and Madrid systems respectively that designate Vietnam will not undergo opposition procedures as per Decree 65.
• Third parties concerned with the registrability of international applications can only submit written opinion letters to the Vietnam IP Office (VNIPO) for reference during the examination process. However, the VNIPO is not obligated to handle these opinion letters.
• Previously, the VNIPO considered oppositions filed against international applications designating Vietnam. The shift away from opposition procedures for international applications may be attributed to time constraints and the need for swift examination of these applications.

2. Limitations on trademark assignment

• Decree 65 elaborates on the grounds that may lead to the refusal of trademark assignment. Assignments can be refused if they risk causing confusion due to: (i) the assigned mark being identical or confusingly similar to the assignor's other protected trademarks in Vietnam; (ii) similarity between the goods/services under the assigned mark and the remaining goods/services, in case of partial assignment; and (iii) the presence of misleading elements in the assigned mark.
• Previously, the laws lacked detailed regulations on assessing confusion during trademark assignment. Decree 65 aims to provide clarity, guiding brand owners more effectively through the assignment recordal process to avoid unnecessary risks.

3. New applications and procedure forms

• All forms used in applying for, renewing, amending, recording assignment and license of industrial property subject matters were replaced when Decree 65 came into effect on 23 August 2023.
• Decree 65 also outlines the requirements for sound marks regarding sound mark sample and mark description/representation. Although more guidelines for sound mark protection are expected now that the 2022 IP Law allows for sound mark protection for the first time, comprehensive guidelines for sound mark protection remain scarce thus far.

4. Introduction of electronic registration certificates

• Decree 65 stipulates that at the point of filing, applicants can opt to receive an electronic certificate or a paper certificate. This regulation marks a new introduction previously absent from the legal framework.
• The electronic certificate option eliminates the need to submit the original certificate during post-registration procedures, such as change recordal and assignment, while the paper certificate option requires the original certificate to be submitted.

5. Amendment to registration certificates

• Decree 65 clarifies the amendment of trademark specimens within a trademark registration certificate. Specifically, these amendments are permissible if they involve minor details that are not granted exclusive protection. Moreover, these modifications must not alter the distinctiveness of the protected mark.
• These regulations offer valuable guidance to brand owners who seek to modify registered marks. Instead of going through a time-consuming and unnecessary process of filing new applications for revised marks, the regulations streamline the process and provide a more practical solution.

6. Security control of inventions

• Article 14 and Appendix VII of Decree 65 also provide details on the procedure for security control of inventions and a list of technical fields that have an impact on security and defense. These procedures will be conducted mainly by the VNIPO, in combination with the Ministry of Defense and the Ministry of Public Security.

7. Industrial design (ID) applications under the Hague Agreement

• Articles 22 to 24 of Decree 65 introduce procedures for filing international ID applications under the Hague Agreement that originate from Vietnam or designate Vietnam.

8. Compensation of patent owner

• Article 42 of Decree 65 outlines the procedure for compensating patent owners in cases where delays occur in granting marketing authorization for pharmaceutical products.

9. Transitional provisions

• This decree governs the handling of confidential patent applications submitted prior to the effective date of Decree 65 without a decision to grant or refuse protection.
• The processing of a Hague application that designates Vietnam and is announced by the International Bureau prior to the effective date of Decree 65 but has not yet received a decision to accept or refuse protection will be carried out in accordance with the provisions of the Decree and the Hague Agreement.
• The handling of Hague applications of Vietnamese origin submitted to the state management agency in charge of IPR prior to the effective date of Decree 65 but not yet submitted to the International Bureau will comply with the provisions of this Decree as well as the provisions of the Hague Agreement.

2. IPR Enforcement
   1. Determining acts of infringement, and the nature and scope of the infringement

• An act will be considered an infringement if all of the following conditions are met: (i) the subject at issue falls within the scope of protected subjects; (ii) there is an infringing element in the subject at issue; and (iii) the person conducting the act at issue is neither the right holder nor an authorized person.

Articles 74-80 of Decree 65 spell out the specifics for identifying elements infringing on patents, layout designs, IDs, trademarks, geographical indications (GI), trade names and plant variety rights.

• It is interesting to note that Decree 65 only applies to acts of infringement that take place in Vietnam, but if the acts take place on the internet with a Vietnamese domain name, use Vietnamese as the primary language of display, or are directed at Vietnamese consumers or users, then they too are considered to have taken place in Vietnam.

2. Determining loss/damage 

• Under Decree 65, the damage caused by an act of IP infringement is the actual material and spiritual loss/damage caused to the rights holder by the act of infringement.
• Loss/damage is considered "actual" if all three of the following conditions are met:
  • The material or spiritual benefit is real and belongs to the aggrieved person
  • The aggrieved person can obtain the above-mentioned benefits
  • There is a reduction or loss of benefits for the aggrieved person as a result of the infringement, relative to their capacity to obtain such benefits in the absence of the infringement; the act of infringement itself is the cause of this loss/damage.
• Decree 65 also includes a specific article (Article 84) to govern "mental loss." In particular, loss of honor, dignity, prestige, reputation, and other mental losses are considered when the moral rights of the authors of patents, industrial designs, layout designs and plant variety are infringed. Such infringement results in damage to the author's honor and dignity, as well as a reduction or loss of credibility, prestige, reputation, and trust.

3. Handling of IPR-infringing goods

• Unlike previous regulations, which gave authorities sole discretion in handling IPR-infringing goods, Decree 65 allows IPR holders to request the authorities to force manufacturers of IPR-infringing goods to recall goods placed through the manufacturers' distribution channels in order to apply the relevant administrative measures.
• The confiscation mechanism has been dismantled.

4. Customs control of IPR-related exports and imports

• Customs sub-divisions now have the authority to proactively issue a decision to suspend customs procedures for items suspected of being trademark or GI counterfeits throughout the course of their own inspection, supervision, and control.
• If contact information is available, the customs sub-division is obligated to notify the rights holder of trademarks or GIs and the relevant importer/exporter as soon as possible.
• Temporary suspension of such customs procedures may not exceed 10 days from the date of notification by the customs sub-division to the rights holder.
• If the owner of the goods suffers a loss because the customs sub-division took proactive albeit incorrect suspension actions, the customs sub-division would be responsible for compensating the rights holder and covering the related costs.

Conclusion

Compared to its predecessors, Decree 65 appears to comprise a more comprehensive set of IPR regulations that align with the 2022 IP Law. As it is being implemented following the implementation of the 2022 IP Law on 1 January 2023, Decree 65 is expected to serve as a comprehensive manual on the application of IP law articles and significantly shape IP practices in Vietnam.

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