Vietnam Decree No. 65/2023/ND-CP (Decree 65) took effect on 23 August 2023. Decree 65 represents the latest state of IP rights establishment and enforcement in Vietnam. Decree 65 provides guidance on the implementation of the Intellectual Property Law 2022 (the IP Law), particularly in the realms of IP registration and enforcement. In brief, Decree 65 refreshes the registration process for IP rights in Vietnam, clarifies the scope of actionable infringements, and enhances the customs handling process to enable stronger collaborations between rights holders and customs authorities.

IP Registration

New application and registration process

Decree 65 provides an all-new IP application and registration process:

– The application form, as well as renewal, amendment, recordal and licensing forms, have all been updated.

– Applicants can now make amendments and additions to the application form at any time before the Vietnam IP office (VNIPO) commences its review. This specifically includes amending the application mark to exclude elements that are not meant to be protected by the trade mark, so long as the distinctiveness of the trade mark is still retained.

– Trade mark applications can now be split based on the goods and services within the initial application.

– The VNIPO will now optionally issue electronic certificates so that postregistration processes can be streamlined.

– Sound marks can now be registered under Vietnam law. However, no further guidelines have been issued ever since Decree 65 came into effect.

International applications no longer subject to opposition procedures

Under Decree 65, there will no longer be any opposition procedures for international trade mark and industrial design applications. Rather, third parties who wish to object to an international application can only submit written opinion letters to the VNIPO during the examination process. Even so, the VNIPO is not obliged to respond to, or even to take into account, such opinion letters. It appears that Decree 65 is intended to expedite the examination process for such international applications. However, national applications will remain subject to undergo official opposition procedures.

IP Enforcement

Updated scope of infringement

In the realm of enforcement, Decree 65 also updates the law governing IP infringement in Vietnam. Under Decree 65, the following elements must all be present for an act to be considered infringing:

– The subject of the act is within the protected scope of IP under Vietnam law;

– There is an infringement of the IP holder’s rights;

– The person who committed the act is neither the IP holder, nor any person authorized by the IP holder.

The geographical scope of an infringement committed in Vietnam is also no longer confined to an act committed physically within Vietnam, but has been expanded to include websites that have a Vietnam domain name or are primarily written in Vietnamese, or are otherwise directed at Vietnamese consumers or users.

Updated definitions of loss

Under the updated definition of actual loss in Decree 65, the actual loss suffered by an aggrieved person, which arises from an infringement, arises when:

– The aggrieved person possesses, or is entitled to, certain material or immaterial benefits;

– The aggrieved person has the capacity to acquire the aforesaid benefits; and – The infringement causes the aggrieved person to lose the aforesaid benefits, whether in part or entirely.

Additionally, Article 84 of Decree 65 specifically governs intangible losses, especially including damage to honour, dignity and reputation arising from IP infringement.

Customs handling of IPR-infringing goods

Decree 65 also marks a shift towards a more proactive approach in handling infringing goods. Unlike previous regulatory frameworks, which left the handling of infringing goods to the authorities’ sole discretion, rights holders are now empowered to request the authorities to compel manufacturers of infringing goods to recall products.

Customs branches are now able to proactively suspend the import of suspected infringing goods up to 10 days from the date that it notifies the rights holder of the suspension. Additionally, customs branches are liable to compensate goods owners for any loss that the goods owners suffered if the customs branch incorrectly took suspension actions.