On November 19, 2005 the National Assembly of Vietnam has enacted the Law on Intellectual Property (IP). This event has marked a major milestone in the country’s international integration process bringing its IP protection system closer to the world, where independent and separate IP laws are common.
The IP law will come into effect as of July 1, 2006. Between now and then, D&N International will review particular provisions regulating different types of IP rights (Copyrights and Related Rights – Part II; Industrial Property Rights – Part III; Plant Variety Rights– Part VI). Below are some general features of the IP Law:
1. The IP Law brings together IP related provisions scattered in about 40 legal documents
One of the main shortcomings of Vietnam’s current system of IP protection is inconsistancy between different laws and regulations. The Civil Code provides only general provisions requiring numerous implementing documents such as Decrees, Circulars and others issued by the Government, relevant Ministries and other authorities. There is considerable overlap between them making enforcement of IP rights difficult.
According to statistics, protection of IP rights are currently provided for in about 40 legal documents, the most important of which are the Civil Code, the Criminal Code, the Customs Law, the Competition Law, the Ordinance on protection of plant variety, and Government Decrees n° 63, 76, 54 and 42.
Provisions regulating different aspects of IP rights protection scattered in these numerous documents are now incorporated in a single Code. To avoid overlaping, the IP Law clearly provides that (i) where another law includes IP related provisions contrary to the IP Law, the latter will be applied; (ii) where an IP related civil matter is not provided for in the IP Law, the Civil Code will be applied.
2. International Integration efforts
Despite pressure for domestic protectionism, especially regarding provisions on Copyrights and Plant Variety rights, the adopted IP Law as a whole may be considered as fairly progressive and in compliance with international standards and international treaties of which Vietnam is a member, for example Paris Convention on Industrial Property, Berne Convention on the protection of litterary and artistic works… In addition, it is clearly stipulated that where the IP Law’s provisions are contrary to an international treaty of which Vietnam is a member, the latter will be applied.
3. Intellectual property rights covered by the IP Law
a) Copyrights: It is the first time the term «related rights» is spelt out in law in Vietnam. In fact, the Civil Code includes provisions on «rights and obligations of performers, producers of phonograms and videograms and broadcasting organizations». However, such rights have not been named as «related rights». The IP Law defines «related rights» as including «performance, sound and image recording, broadcast, encrypted program-carrying satellite signal».
b) Industrial Property Rights: Under the Civil Code, there exists only provisions on patent, utility solution, industrial design, trademark and appellation of origin. Protection of other industrial property rights are stipulated in several documents issued by the Government such as Decrees n° 54 and 42. In addition to the types of IP rights covered by the Civil Code, the IP Law includes provisions on circuits layout, geographical indication, unfair competition, trade name and trade secret.
c) Plant Variety Rights: Protection of plant variety rights is currently stipulated in the Ordinance on protection of plant variety issued by Standing Committee of the National Assembly on March 24, 2004. Under the IP Law, protection of this particular type of IP rights is stipulated in Part IV, Articles from 159 to 200.
4. Transitional provision
a) From July 1, 2006, intellectual property rights existing before that date will be protected under the IP Law, if not expire yet.
b) Applications which have been filed before July 1, 2006 will be dealt with in accordance with the legal provisions which are effective at the date of filing.
c) As of July 1, 2006, only geographical indications registered in accordance with the IP Law will be protected.
5. Provisions on Industrial Property Representative
Provisions on Industrial Property Representatives are presently stipulated in Decree 63 on implementation of the Civil Code with regards to Industrial Property Rights. They have been resumed in the IP Law in Articles from 153 to 158 with some changes.
Requirements for practising in the area of industrial property become less strict. According to the IP Law, an organization with only one person satisfying conditions to be representative is authorized to provide industrial property services, while Decree 63 requires 2 persons. In addition, the IP Law does not include provison forbiding foreign invested enterprises to practise in this field as Decree 63 does.
6. State management of Intellectual Property
Article 11 of the IP Law specifies state organisation for management of intellectual property rights. According to it, Ministry of Science and Technology is in charge of administration with regards to industrial property matters, while Ministry of Culture and Information is responsible for copyright matters and Ministry of Agriculture and Rural Development for plant variety matters. People’s Committees at district and city/province level are responsible for IP related matters within their territory. However, relations between central state organs and local authorities, as well as between adminstration bodies and enforcement organs have not been clarified.
7. Enforcement of IP rights
Enforcement of IP rights is the weakest point in Vietnam’s current IP protection system. The IP Law has therefore devoted the whole Part V for dealing with this matter. Enforcement of IP rights under the IP Law has the following features:
a) Expert opinion: The IP Law provides that (i) the relevant authorities who deal with infringement have the right to request expert opinion in order to resolve litigations within their competence; (ii) IP right holders and other parties concerned have the right to request expert opinion on IP related matters to protect their rights and interests. However, the details of how the expert opinion is organised and used in litigations will only be provided for by the Government in implementing documents.
b) Principles for determining amount of compensation for damage: The IP Law provides principles for determining level of damage in civil cases: damages include material damage and moral damage. Material damage is determined on the basis of actual losses. If such losses can not be determined, the Court will determine the level of compensation in its sole discretion, but the total amount of compensation for damage can not exceed VND500.000.000 (US$32.000). Moral damage can be compensated between VND5.000.000 (US$320) and VND50.000.000 (US$3.200).
c) Preliminary injunction measures: Under the IP Law, competent Courts may apply preliminary injunction measures in civil cases. Preliminary injunction measures include (i) seizure; (ii) inventory; (iii) seal off ; and (v) other measures as stipulated by the Civil Procedure Code. The person who requests such measures has to deposit an amount worth 20% of the value of the goods on which such measures are to be applied; or a minimum amount of VND20.000.000 (US$1.300), if the value of the goods can not be determined.
d) Preventive measures: Under the IP Law, administrative competent authorities may apply administrative preventive measures which include (i) temporary detention of persons in accordance with administrative procedure; (ii) temporary detention of things used in the alleged infringement; (iii) search of person in accordance with administrative procedure; (iv) search of means of transport and other things, search of places; and (v) other administrative preventive measures.
e) Temporary suspension of customs procedures: Customs Offices may suspend temporarily clearance procedures of import/export goods upon request by a party. The person who requests such measures must deposit an amount worth 20% of the value of the goods on which such measures are to be applied; or a minimum amount of VND20.000.000 (US$1.300), if the value of the goods can not be determined.