Overview about IP regulations under EVFTA in comparison with Vietnamese IP framework

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Overview about IP regulations under EVFTA in comparison with Vietnamese IP framework

The current Vietnamese intellectual property legal framework has been issued on the ground of the country’s IP commitments under the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Although this also is a major important international treaty in IP field, it is obvious that the TRIPS’s standard concerning IP right protection and enforcement measures are lower than that of the EU. Thus, entering EVFTA may require Vietnam government to adjust the current IP laws to comply with the new higher commitments.

IP matters are regulated in Chapter 12 of the Agreement. The objectives of this Chapter are to facilitate the creation, production and commercialisation of innovative and creative products between the Parties, contributing to a more sustainable and inclusive economy in each Party; and achieve an adequate and effective level of protection and enforcement of intellectual property rights. Furthermore, the Agreement also requires that the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

The subjects of intellectual properties under EVFTA are similar to that of Vietnamese IP laws. Accordingly, intellectual properties will refer at least to all categories of intellectual property that are referred to in the TRIPS Agreement, namely:

copyright and related rights;

(b)       trademarks;

(c)        geographical indications;

(d)       industrial designs;

(e)        patent rights;

(f)        layout-designs (topographies) of integrated circuits;

(g)       protection of undisclosed information; and

(h)       plant varieties.

However, there are still some inconsistancies between EVFTA and Vietnamese laws in IP issues. Firstly, the Vietnam’s current IP law still lacks regulations specifying four commitments concerning (i) exclusive right of performers and phonogram producers to make public their performances and phonograms; (ii) protection of 169 EU’s geographical indications listed in the FTA; (iii) extension of terms of pharmaceutical patents as compensation for delayed licensing; and (iv) presumption of authorship or ownership.

Especially, the Agreement imposes more specific regime related to the liability of online intermediary service providers to prevent toe IP infringements. Accordingly, this legislation requires Vietnamese government to provide for limitations or exemptions in its domestic legislation regarding the liability of intermediary service providers, in relation to the provision or use of their services, for infringements of copyright or related rights that take place on or through telecommunication network. The limitations or exemptions shall cover at least the following activities:

(a) the transmission in a telecommunication network of information provided by a user of the service, or the provision of access to a telecommunication network (“mere conduit”);

(b) the transmission in a telecommunication network of information provided by a user of the service concerning the automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the information’s onward transmission to other users of the service upon their request (“caching”);

(c) the storage of information provided by a user of the service at the request of a user of the service (“hosting”) on condition that the provider:

(i) does not have the knowledge of illegal information; and

(ii) upon obtaining such knowledge, acts expeditiously to remove or to disable access to information.

Regarding the revocation of a registered trademark, this treaty stipulates that a registered trademark shall be liable to revocation if, within a continuous period of five years prior to a request for revocation, it has not been put to genuine use by its owner or the owner’s licensee in the relevant territory in connection with the goods or services in respect of which it is registered, without justifiable reasons, except where the use is commenced or resumed at least three months before the request for revocation. A Party may provide that this exception be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the request for revocation may be filed. Nonetheless, the meaning of “genuine use” has not been clearly defined and existed under Vietnamese laws.

The EVFTA clarifies the obligations of Customs officers and authorities in Vietnam, and gives them better tools to tackle infringements through provisions to improve the legal framework and act against violations. Accordingly, competent judicial authorities, upon request by a party who has presented reasonably available evidence to support his claims that his intellectual property right has been infringed or is about to be infringed, have the authority to order prompt and effective provisional measures to prevent an infringement of any intellectual property right from occurring, and, in particular, to prevent the entry into, and the movement within, the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance:

(i) an interlocutory injunction may be issued against a party whose services are being used by a third party to infringe an intellectual property right and over whom the relevant judicial authority exercises jurisdiction; and

(ii) in the case of an alleged infringement that is committed on a commercial scale, the Parties shall ensure that the judicial authorities may order the precautionary seizure or blocking of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets.