1. Introduction on Decree 65/2023

In order for the revised and supplemented Intellectual Property (IP) Law in 2022 to be effective when it comes into practice, Decree 65/2023/ND-CP guiding the implementation of the Law has added regulation to protect the attention deserving intellectual property rights holders from related business, organizations, and individuals.

According to the NOIP, the new and important point of Decree 65/2023 is to amend and supplement a series of regulations on protecting industrial; property rights and rights to plant varieties, especially with new elements such as digital space, new forms of protected objects have not been regulated before.

Regarding IPR Infringements, Decree 65 adds several criteria to help guide in determining which rights infringements are considered to target Vietnamese consumers and are considered to occur in Vietnam.

For example, the behavior occurs on the Internet and is performed on an electronic information page under a Vietnamese domain name or with the display language being Vietnamese...

The NOIP believes that, in the context of acts of intellectual property rights infringement on the Internet becoming more and more common, clarifying this regulation will create conditions for intellectual property rights protection agencies to have more grounds to identify acts of infringement.

2. The News Update from the Decree

2.1. Procedures for amending and supplementing trademark registration application

The applicant may request to have certain additional information in the application, such as the applicant's country code, the author's address (if any), and the edit change industrial property representative, by Point b, Clause 1, Article 16 of the Decree.

However, according to the provisions of Article 16 of this Decree, it should be noted that:

The applicant may exercise the right to request the above amendment in writing without submitting the Amended Declaration as before only if the time of the request is before the application is validly accepted or denied valid acceptance. or amend or supplement the application based on the notice of the National Office of Intellectual Property.
In case the applicant changes the name, author’s nationality, name, and address of the organization, the applicant must attach supporting documents. These documents are regulated similarly to the case of amending a patent protection certificate.
In case of a change of representative, the applicant must submit a declaration of change of representative.
The applicant must pay a fee for examination of the request for amendment and a fee for publishing amended and supplemented information according to regulations for each case.

Additionally, based on Point dd, Clause 2, Article 16 of the Decree states that, if the trademark sample, a description of the particular features of the product bearing the geographical indication, and a map of the geographical area corresponding to the geographical indication are amended, the applicant is exempt from submitting a thorough explanation of the amended content.

2.2. Regulations separate trademark applications

Per Decree 65/2023/ND-CP, Point a, Clause 1, Article 17, the applicant may request that the industrial property registration application be separated before a decision is made on formality or substantive examination. Separating an order to form one or more new orders, though, is only permitted under the following circumstances:

Take one or more items off of the trademark registration application's list of products and services;
Following Point C, Clause 1, Article 17 of the Decree, the applicant shall furnish a written explanation of the object of protection requested and the content of changes compared to the original application when executing the procedure for splitting an industrial property registration application.

2.3. Procedures for amending trademark registration certificates

Under Clause 3, Article 29 of Decree 65/2023/ND-CP, as amended by Point 20.1(b) of Circular 01/2007/TT-BKHCN regarding situations in which protection document modifications are necessary, the request If the following requirements are satisfied, requests to change the trademark sample on the Trademark Registration Certificate are also accepted:

The only thing that is excluded—that is, not individually protected—are minute details.
Doesn't alter the mark's distinctiveness.

The person requesting to narrow the scope of protection must pay the examination fee for the request to narrow the scope of protection, the registration fee, and the fee for publishing the decision to amend the protection title.

The requirements of Article 29 essentially create a legal framework for managing trademark alterations and copyright re-issuance procedures. Ensuring the integrity and distinctiveness of a trademark is facilitated by well-defined regulations regarding the stringent requirements that must be fulfilled by the trademark owner in order to modify the trademark form. Although trademark owners have the freedom to propose changes to the trademark form, the criteria make sure that these adjustments stay within predetermined bounds. This compromise allows for valid demands to be met while preventing misuse of the ability to request changes to a trademark model.

2.4. Condition and procedures for transferring trademark use rights

The new decree has added three new provisions to the list of guidelines for implementing the restrictions on trademark rights transfers found in Clause 4, Article 139 of the Intellectual Property Law, as modified and updated in 2022. Therefore, if a trademark is transferred in the following circumstances, it will not be accepted:

Identical or confusingly similar to a trademark owned by the transferor;
There is a part of the goods or services similar to the part of the goods and services owned by the transferor and the use of the transferred mark is likely to confuse as to the commercial origin of the goods or services;
Contains signs that confuse or misunderstand consumers about the origin, quality, and value of goods and services.

In addition to helping rights holders better understand the restrictions on transferring intellectual property rights, the Decree's provision of the aforementioned specific instructions helps overcome the shortcomings of earlier regulations in handling trademark transfer applications and expedites the application processing process at the National Office of Intellectual Property.

2.5. Procedures for transferring trademark use rights

Following Decree No. 65/2023/ND-CP, which states that a copy of the certificate of registration of a contract to transfer the right to use an object must be issued or reissued if a contract of transfer or transfer of use rights is registered. The processes for reissuing or granting copies of protection titles for the aforementioned subjects are analogous to those of industrial property.

The procedures for reissuing or issuing copies of certificates of registration of contracts for the transfer of rights to use industrial property objects are also based on Clause 8, Article 29 of this Decree, and are applied similarly to the procedures for reissuing or issuing copies of protection title.

2.6. Other notable update

The protection registration declaration form change: According to Circular No 01/2007/TT-BKHCN, the trademark declaration forms have been replaced by the form listed in Appendix I of the Decree
The addition of regulations on the withdrawal of trademark registration applications: The NOIP is required to notify the applicant of their intention to refuse to accept the application withdrawal request if the applicant does not meet the requirements to correct the efficiency. This regulation was added in accordance with Point B, Clause 2, Article 17 of Decree 65
Supplementing international trademark registration: Madrid requirements Applications of Vietnamese descent that have been awarded an international registration number may be submitted directly to the International Bureau or, if preferred, through the National Office of Intellectual Property, which has guidelines regarding the paperwork that must be submitted (Article 26.3).
Supplement the form of granting a trademark registration certificate

3. Difficulties

Decree 65/2023, despite its potential benefits, faces several difficulties that could hinder its effectiveness and raise concerns:

Implementation Challenges:

Lack of clarity and consistency: Some provisions are ambiguous, leading to potential misinterpretation and inconsistent application by different authorities and legal professionals.
Increased administrative burden: The decree introduces new procedures and requirements, which may overwhelm under-resourced government agencies and lead to delays in processing applications.
Public awareness and education: There is a lack of public awareness about the new provisions, potentially leading to unintentional infringements and hindering effective enforcement.

Potential Pitfalls:

Frivolous claims and litigation: The stricter penalties and expanded scope of actionable offenses could incentivize frivolous claims and opportunistic litigation, harming legitimate businesses.
Overregulation and stifling innovation: The increased compliance burden and complexity of the application process could discourage startups and entrepreneurs, hindering innovation and competition.
Unintended consequences for non-traditional trademarks: The decree's focus on traditional trademarks may disadvantage non-traditional forms like sound marks and holograms, potentially stifling creativity in branding.

Harmonization with International Standards:

Interpretation of international treaties: Differences in legal systems and cultural contexts may lead to misinterpretations of international trademark principles within the Vietnamese framework.
Competing interests: Balancing Vietnam's domestic interests with international obligations and commitments can be challenging, potentially leading to compromises in the effectiveness of the decree.
Continuous adaptation: The global trademark landscape is constantly evolving, requiring Vietnam to adapt and update its regulations to maintain alignment with international best practices.

Other Difficulties:

Enforcement capacity: Ensuring effective enforcement of the decree across the entire country, especially in remote areas, can be challenging with limited resources.
Corruption and bribery: Concerns exist about potential corruption and bribery in the trademark registration and enforcement process, undermining the integrity of the system.
Public perception and trust: Building public trust in the new trademark system and its ability to protect intellectual property rights is crucial for its long-term success.

Addressing these difficulties will require ongoing efforts from the government, legal professionals, businesses, and civil society to ensure that Decree 65/2023 fulfills its potential and effectively promotes innovation, brand protection, and a fair competitive environment in Vietnam.

4. Conclusion:

Decree 65/2023 marks a significant step towards a more robust and dynamic trademark ecosystem in Vietnam. However, its success hinges on effective implementation, thorough evaluation, and ongoing adaptation to address unforeseen challenges. By critically analyzing the decree's provisions and their potential ramifications, we can ensure that these updates truly serve their intended purpose of fostering innovation, protecting legitimate brands, and empowering both businesses and consumers in Vietnam's evolving marketplace.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.