The Intellectual Property Review: Vietnam

Under the Law on Intellectual Property of Vietnam, subjects that are covered by intellectual property rights (IPRs) include:

1. under copyright rights: items including literary, artistic and scientific works;
2. under copyright-related rights: items including performances, phonograms, video recordings, broadcasts and encrypted program-carrying satellite signals;
3. under industrial property rights: items including inventions, industrial designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade names and geographical indications; and
4. under plant variety rights: items including plant varieties and reproductive materials.

Among these, the most popular forms of IP protection are inventions, industrial designs, trademarks, copyrights, trade secrets, trade names and geographical indications.

i Inventions and utility models

In Vietnam, there are two types of inventions available: invention patents and utility solution patents.

Invention patents

Invention patents are granted for new, inventive and industrially applicable solutions to technical problems. The inventions must meet the criteria of novelty, inventive step and industrial applicability, as well as the other requirements for patentability. The term of protection for invention patents is 20 years from the filing date of the application.

Utility solution patents

Utility solution patents, also known as petty patents or utility models, are granted for new and industrially applicable solutions to technical problems that are not required to meet the higher standard of inventive step required of invention patents. Utility solution patents have a shorter protection term of 10 years from the filing date of the application for registration.

In general, the requirements for obtaining a utility solution patent are less stringent than those for obtaining an invention patent; that is, an inventive step is not required to be eligible for a utility solution patent, as is required for invention patents. However, utility solution patents are only applicable to certain items, such as machines, apparatuses, tools and processes, and are not available for pharmaceuticals, chemicals or food products.

In Vietnam, the same application cannot be filed simultaneously for both an invention patent and a utility solution patent. Therefore, the applicant must choose the type of patent application that best suits the needs and requirements for patentability.

Vietnam is a contracting member of the Paris Convention and Patent Cooperation Treaty (PCT). Therefore, Vietnamese applicants can acquire patent protection overseas either under a conventional application or PCT application. Vice versa, foreign applicants can secure patent protection in Vietnam via a conventional application or PCT application.

ii Industrial designs

Industrial design protection is applicable to the ornamental or aesthetic features of a product. It provides legal protection for the outer appearance of a product, such as shape, pattern, colour or texture. Industrial design protection is valuable for protecting unique designs of products, but limited in the sense that it only protects the outer appearance of the product and not its function.

Vietnam has officially joined the Hague Agreement on the international registration of industrial designs, which applies the Geneva Instrument as of 1 January 2020. This move was made to create conditions for the protection of industrial designs owned by Vietnamese individuals and organisations abroad.

iii Trademarks

Trademark protection is applicable to distinctive signs such as names and logos that are used to identify and distinguish goods or services. The term of protection for trademarks is 10 years, renewable for unlimited periods of 10 years each.

iv Copyright

Copyright protection applies to original works of authorship such as literary, artistic and musical works. Copyright protection arises automatically upon the creation of the work and does not require registration. Under the current Law on Intellectual Property of Vietnam, copyright protection has a validity period of 50 years after the death of the author, or the last surviving author in the case of joint authorship. Copyright protection is valuable in protecting creative works that are expressed in a certain form, but not ideas or concepts.

v Trade secrets

Trade secrets protect confidential information such as formulas, processes and customer lists. Trade secrets do not require registration, rather the establishment and implementation of appropriate measures to keep the information confidential. Trade secrets are valuable in protecting the proprietary information of businesses but, under the current Law on Intellectual Property and related law, the enforcement of protection of trade secrets seems to be quite complicated.

vi Trade names

Trade names, as one category of IP rights, are a designation of an organisation or individual used in business to distinguish the business entity bearing such designation from other business entities acting in the same field and area of business. Unlike a trademark, rights to a trade name are not established through registration procedures, but on their legitimate use in commerce. Trade names fall within the scope of a commercial indication in Vietnam. Under the Law on Intellectual Property, commercial indications mean signs and information serving as guidelines to trading of goods or services.

vii Geographical indications

A geographical indication is a sign that identifies a product as originating from a specific region, locality, territory or country. The reputation of products bearing a geographical indication shall be determined based on consumers’ trust in such products through the extent of their being widely known to and selected by consumers.

Geographical conditions relevant to a geographical indication mean natural and human factors decisive to the reputation, quality and characteristics of products bearing such geographical indication, and include:

1. natural factors (climatic, hydrological, geological, topographical and ecological factors and other natural conditions); and
2. human factors (skills and expertise of producers, and traditional production processes of localities).

The quality and characteristics of products bearing a geographical indication shall be defined by one or several qualitative, quantitative or physically, chemically or microbiologically perceptible criteria that can be tested by technical means or experts with appropriate testing methods. Geographical areas bearing geographical indications shall have their boundaries accurately determined in words and maps.

i Objects that are ineligible for protection as inventions

1. Scientific discoveries or theories, mathematical methods;
2. schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games and doing business; computer programs;
3. presentations of information;
4. solutions of aesthetic characteristics only;
5. plant varieties, animal breeds.
6. processes of plant or animal production that are principally of a biological nature, other than microbiological processes; and
7. human and animal disease prevention methods, diagnostic and treatment methods.

ii Further explanation of why these subjects are not patentable

1. Scientific discoveries or theories, mathematical methods, solutions of aesthetic characteristics only: these objects do not meet the conditions for industrial application. Furthermore, as science and technology develop, inventions, scientific theories and mathematical methods can become outdated, decreasing their value over time. However, inventions, scientific theories, and mathematical methods will continue to exist indefinitely as the foundation for creating new inventions.
2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games and doing business; computer programs and presentations of information: these objects represent only information and do not provide a specific technical solution. They are considered conventional signs and are not capable of industrial applicability. In Vietnam, these objects may be protected under the provisions of copyright.
3. Plant varieties, animal breeds, processes of plant or animal production that are principally of a biological nature, other than microbiological processes: the process of creating a new cultivar usually takes a lot of time and money. Meanwhile, copying plant varieties can be done quickly in various ways, such as extracting plants or cuttings, or sowing seeds. Additionally, the IP Law provides a separate legal framework for protection of plant varieties.

In Vietnam, plant varieties and breeding materials are protected by the IP Law as follows:

1. the right to plant varieties is the right of organisations and individuals to create or discover, develop or own new plant varieties;
2. a protected plant variety is a plant variety selected for creation or discovery, development, novelty, differentiation, uniformity, stability and appropriate names;
3. plant varieties can be established based on decisions on the issuance of plant variety protection certificates by competent state agencies;
4. a plant variety protection certificate is valid from the date of issue until the end of 25 years for woody and vine varieties and up to 20 years for other plant varieties, effective throughout the territory of Vietnam; and
5. human and animal disease prevention methods, diagnostic and treatment methods (methods for treating patients, both with drugs and medical procedures): finding ways to prevent and cure diseases must expand the scope of application because humanitarian purposes are of great importance to the public interest and the need for socioeconomic development of the country. Such methods cannot be privatised or commercialised. Therefore, it is crucial to focus on the methods of prevention, diagnosis and treatment of diseases for humans and animals.

iii Inventions and copyright relating to computer programs

According to IP laws, computer programs cannot be protected under invention. Computer programs are protected under copyright.

Copyright relating to computer programs

A computer program means a set of instructions expressed in the form of commands, codes, diagrams and other forms that, when incorporated in a device run by computer programming languages, enables a computer or device to perform a job or achieve a specific result. Computer programs are protected in the same manner as literary works, whether they are source codes or machine codes.

Authors and holders of copyrights on computer programs are entitled to reach written mutual agreements on the repair and upgrade of the programs. Organisations and individuals having the legal right to use copies of computer programs are entitled to create backup copies for use in the event the former are deleted, damaged or otherwise unusable, but cannot be transferred to any other organisation or individual.

Computer programs are protected from the moment of creation and are expressed in a tangible form. The author or owner of the copyright of a computer program can submit an application to obtain a copyright registration certificate.

Inventions related to computer programs

This refers to objects related to computers, computer networks or other programmable devices made by a program that show one or more signs of requiring protection.

A computer program is not typically protected under the form of an invention patent, but if the object requesting protection has technical characteristics and is considered a technical solution to solve a technical problem using technical means and creating a technical effect, it can be patentable.

However, it is worth noting that, in such a case, terms such as computer programs, computer software, computer program products or software, or program-carrying signals and the like, should be replaced by the equivalent terms relevant to the nature of the special invention. In other words, computer programs are patentable in the form of, inter alia, methods for operating a conventional device, equipment installed to perform a method and a program container for implementing the method (system).

The IP Law was considered one of the most progressive laws in Vietnam at the time due to its provisions being aligned with international law and international commitments of Vietnam. The enforcement of IPRs in Vietnam faces challenges due to issues such as inadequate resources and lack of expertise and experience in the judiciary system. Providing a comprehensive overview of IPR enforcement in Vietnam today is expected to shed light on the challenges and opportunities for the protection of IPRs in the country.

i Possible venues for enforcement or revocation

When seeking enforcement of IPRs in Vietnam, parties have several possible venues to choose from, including both courts and administrative agencies. Courts will have competences to settle civil suits (claims of infringement, damages, the ownership of IPRs, etc.) and criminal cases (publicising or making copies of works, video recordings or audio recordings without consent; counterfeit trademarks; counterfeit geographical indications).

ii Requirements for jurisdiction and venue

For proceedings to enforce rights, the plaintiff must file a claim with the court or administrative agency within the proper jurisdiction. In some cases, jurisdiction may be determined by the location of the defendant, the location of the infringement act or the location where the IPRs were established.

On the other hand, for proceedings to defeat rights, the defendant may need to challenge the validity of the IPRs in a different jurisdiction or venue. This can include filing an invalidation request to the IP Office of Vietnam or appealing a decision of the court’s first instance trial to the higher-level courts. In any case, parties seeking to enforce or defeat IPRs in Vietnam must carefully consider the jurisdiction and venue in order to ensure their case is properly heard and decided.

iii Obtaining relevant evidence of infringement and discovery

Obtaining relevant evidence of infringement and discovery can be a crucial part of IPR enforcement proceedings. The rules for obtaining discovery can vary depending on the particular jurisdiction and type of proceeding involved. In the practice of IPR enforcement, the competent authorities often require the plaintiff to provide evidence of the infringement. Among such evidence, an assessment conclusion on the infringement or non-infringement from the Vietnam IP Research Institute (VIPRI) is always treated and served as a mandatory document. The Center for Assessment of Copyright and Related Rights has also been announced to be established to provide assessments of copyrights and related rights.

iv Preliminary injunctive relief

In Vietnam, https://thuvienphapluat.vn/van-ban/So-huu-tri-tue/Nonumber-98539.aspx?tab=1“>preliminary injunctive relief against infringing goods includes seizure, distraint, sealing (confiscated), prohibiting a change in state, prohibiting removal, prohibiting the transfer of ownership and other applicable measures prescribed under the Code of Civil Procedure.

To obtain a preliminary injunction, the IPR holder must prove to the court that its request is reasonable. A request is deemed reasonable in the following circumstances:

1. there is a demonstrable risk of irreparable damage caused to the IPR holder; or
2. there is a demonstrable risk of removal or destruction of potentially infringing goods or evidence of infringement, if not protected in a timely fashion.

Preliminary injunction proceedings cannot take place without main proceedings. Vietnam is working on its approach to making a law on preliminary injunctions that would allow such injunctions before the filing of an action.

An application for injunctive relief can be lodged with the court at any time during a civil action, including at the time of filing the complaint. If the application is filed before the hearing is held, the judge in charge of the case will consider and decide on the preliminary injunction. If the application is filed during the hearing, the judge panel will have this responsibility.

The person who requests a preliminary injunction can be required to pay compensation for damage incurred as a result of a wrongful injunction.

The requester of a preliminary injunction must deposit a bond equivalent to 20 per cent of the value of the goods that are subject to the preliminary injunction. If the value of the goods cannot be determined, the bond must be at least 20 million Vietnamese dong. As an alternative to a bond in cash, the requester can secure the application for a preliminary injunction by a guaranteed document issued by a bank or another credit organisation.

Under current practices, it is difficult and complicated to obtain a decision on preliminary injunction from the court for IPR-related cases. In addition, the court is unlikely to grant a cross-border or extraterritorial preliminary injunction. Generally, the court will not grant a preliminary injunction in support of proceedings in another country.

Practically, thanks to the effectiveness of the administrative measures, as an alternative to preliminary injunction proceedings, the IPR holder can pursue an administrative action to seize the infringing goods and preserve the evidence prior to civil litigation.

v Trial decision-maker

Judicial bodies such as the people’s court system have jurisdiction over IPR infringement. There is no special chamber or special IP court that deals with IPR infringement. IP-related dispute cases are treated in the same way as other disputes. Depending on the complexity and significance of the case, the decision-maker may be either a single judge or a trial panel.

Due to their limited knowledge and experience in IP, the courts often rely on expert opinions to handle IPR disputes. Expert opinions from authorised expert witnesses such as the VIPRI or the IP Vietnam Office often play a decisive role in IPR enforcement cases, although these opinions are not technically binding.

The IP Vietnam Office deals with invalidity actions. In principle, a court can also rule on the validity of a protection title. However, in most cases, the IP Vietnam Office handles validity issues.

The court is not required to stay infringement proceedings if an invalidity action is pending before the IP Vietnam Office, but sometimes does so. In practice, however, an invalidation may delay infringement proceedings.

vi Structure of the trial

The structure of a trial can vary depending on the nature of a case (administrative, civil or criminal). Trials can be consolidated or divided, depending on the complexity and number of issues involved. The length of a trial can also vary greatly, with some cases being resolved quickly and others taking months or even years to resolve. Trials follow a standard civil court process and typically take around four months, although they can take longer due to assessments and difficulties in proving damage.

vii Infringement

IPR infringements can occur in various forms depending on the specific subject matters of IP rights. When such infringement cases go to court or the administrative authorities, the construction of claims is an essential consideration, and strict or liberal interpretations may be applied, depending on the circumstances. The court also considers whether the infringement is literal or based on the doctrine of equivalents. Additionally, the court may limit claims based on prosecution history estoppel, which restricts the scope of the claims based on arguments made during the prosecution process. While Vietnam does not have special IP courts, judges and lay assessors are often involved in IP cases and may consult with experts. In recent years, Vietnam has made significant efforts to strengthen its IP laws, including increasing penalties for infringement and enhancing the capacity of enforcement agencies. However, there are still challenges in effectively enforcing these laws, particularly in cases involving online infringement.

viii Defences

Defences against IPR infringement accusations in Vietnam may include arguing lack of novelty or scope of prior art, obviousness, obtaining a license or compulsory license, and equitable defences such as laches or estoppel. The accused may also seek to challenge the validity of the IPRs or use the exhaustion of rights defence. Defences may be asserted through a counterclaim or administrative proceedings. It is crucial to consult legal counsel to determine the best defence strategy.

ix Time to first-level decision

In Vietnam, the time to resolve IP-related disputes at the first instance trial level is often prolonged due to various reasons, in which a lack of experience and in-depth knowledge of IP is a common reason. Although procedural laws (administrative, civil, criminal) all provide for the duration of trials, in practice it is very rare for this period to be observed.

x Remedies

In Vietnam, pretrial remedies such as seizure of infringing goods or freezing of an infringer’s bank account or assets are available. Damages can be compensatory, including lost profits and reasonable royalties, or statutory, and are based on the actual damage suffered by the right holder. Attorneys’ fees may be awarded to the prevailing party. Also available are customs inspections and supervision, and postponement of customs upon request for protection of IPR holder.

xi Appellate review

In the appellate review stage, the court will reconsider appealed judgments and decisions. Within two months, the court may temporarily suspend or take the case to an appellate trial based on the first-instance trial results. The appellate jury can uphold, revise, repeal or terminate first-instance judgments or suspend a case’s resolution, depending on the circumstances.

xii Alternatives to litigation

In addition to the court system, mediation, negotiation or arbitration are options for parties to settle IPR-related disputes. In practice, many disputes are settled successfully using negotiation measures. Arbitration is less well-documented but still a trend worth considering for resolving IPR-related disputes. Depending on the case, administrative measures and customs recordation are also frequently used.

The IP Law 2022 is indicative of Vietnam’s considerable efforts to comply with commitments when signing bilateral and multilateral international treaties such as the CPTPP, the Hague Agreement, the WIPO Copyright Treaty 1996, the WIPO Performances and Phonograms Treaty 1996 and the EVFTA covering most areas of IP law, from the examination of establishment to the enforcement of IPRs.

In the field of enforcement of IPRs, recent events show the efforts of the Vietnamese judiciary to improve the capacity and role of the court in handling IPR-related disputes and infringement cases in addition to the fact that administrative measures still play a major role in dealing with these issues, as shown by the Supreme People’s Court having submitted a report to the National Assembly on the establishment of specialised courts in the field of IP. In addition, the recent criminal case against the act of infringement upon the IPR of the ‘BIA SAIGON’ trademark has created new milestones in the Vietnamese judiciary, as mentioned in Section II. This trend is predicted to continue to see strong development in the coming years to match the international commitments and actual development needs of Vietnam.