Alert 332 Vietnam - Amended laws bring further improvements to IP system

Recent amendments to Vietnam's intellectual property (IP) law and Penal Code will bring further improvements to its IP system.  The amended laws were passed by the National Assembly in June and will come into effect on 1 January 2010. 

Background
Vietnam's current IP law was introduced in 2006.  Since then, a number of deficiencies and inconsistencies in the law have been identified.  The amendments passed in June seek to rectify these deficiencies and inconsistencies and to ensure that Vietnam is meeting its obligations under both TRIPS and bilateral trade agreements.

• To bring Vietnam into line with other WTO countries, the term of copyright protection for cinematographic works, photographic works, applied art works and anonymous works has been extended from 50 years to 75 years from the date of first publication.  Where the work is not published within 25 years of the date of fixation, the term will be 100 years.
• Administrative actions are currently available only if the infringing act causes loss to consumers or society, or the infringer has not ceased the infringement after a warning.    The scope of acts liable for administrative sanction will be extended to include acts that cause loss to the IP owner.  Accordingly, it seems that a warning letter will no longer be a pre-condition for taking administrative action in relation to these infringements. It is not clear, however, whether it will be necessary to establish actual loss.  Detailed guidance will hopefully be introduced prior to 1 January 2010.
• The time limit for substantive examination of IP applications has been increased to enable the National Office of Intellectual Property (NOIP) to deal with the current backlog.
• The NOIP will be able to provide expert opinions or assessments.  This will be of assistance to IP owners looking to take administrative action.

Amended Penal Code
The Penal Code has been amended providing criminal penalty against the violation of the copyright (and related rights) and willful infringements of industrial rights over trade marks or geographical indications on a commercial scale.  It is encouraging that the amended provisions are in compliance with the obligations under the TRIPS and BTA. In fact it goes further than the obligation under the TRIPS agreement which require for 'criminal liability against willful trade mark counterfeiting or copyright piracy on a commercial scale' only.

Our Comment
These amendments, which bring Vietnam's IP system a step closer to international standards, will be welcomed by IP owners.  There are, however, a number of areas in which further guidance is required. Hopefully, this guidance will be provided before the amendments come into force on 1 January 2010.