Vietnam gov’t issues Decree 65 providing guidelines for implementing provisions of amended IP law

30 September 2023

Vietnam gov’t issues Decree 65 providing guidelines for implementing provisions of amended IP law

Hoa Tran, Special Counsel, BMVN International, Hanoi

The Vietnamese government issued Decree No. 65/2023/ND-CP or Decree 65 on August 23, 2023. It took effect on the same date.

Decree 65 provides guidelines for the implementation of several provisions under the amended Vietnamese Intellectual Property Law 2022 (2022 IP Law), which took effect on January 1, 2023.

“Compared to its predecessors, Decree 65 appears to comprise a more comprehensive set of IPR regulations that align with the 2022 IP Law. As it is being implemented following the implementation of the 2022 IP Law on January 1, 2023, Decree 65 is expected to serve as a comprehensive manual on applying articles of the IP law and significantly shape IP practices in Vietnam,” said Hoa Tran, special counsel at BMVN International in Hanoi.

According to her, Decree 65 contains two remarkable points. She explained that the 2022 IP Law regulations on national applications “allow official opposition and written opinion procedures for reference. In contrast, international applications for ID and trademarks via the La Hay and Madrid systems that designate Vietnam will not undergo opposition procedures as per Decree 65.”

“Third parties concerned with the registrability of international applications can only submit written opinion letters to the Vietnam IP Office (VNIPO) for reference during the examination process. However, the VNIPO is not obligated to handle these opinion letters,” she said. “Previously, the VNIPO considered oppositions filed against international applications designating Vietnam. This departure from opposition procedures for international applications may be attributed to time constraints and the need for swift examination of applications.”

The second point revolves around the handling of IPR-infringing goods.

Per Decree 65, IPR holders may request the authorities to force manufacturers of infringing goods to recall the goods. Previous regulations gave authorities sole discretion in handling IPR-infringing goods.

“That said, IPR owners may only request the authorities to compel manufacturers of IPR-infringing products to recall already-distributed products for administrative measures. Meanwhile, the authorities can decide what to do with IPR-infringing goods seized during the raid that have not been circulated,” noted Tran.

Decree 65 also takes out the confiscation mechanism entirely. However, Decree 99, which tackles IP administrative sanctions, still recognizes confiscation as a form of sanction.

While there is a clear difference between the two decrees, Tran said this also “leaves room for confiscation to be applied under Decree 99 for the time being.”

“As far as we know, the Ministry of Science and Technology of Vietnam is working on a draft decree to amend Decree 99 to incorporate new provisions from the 2022 IP Law. Hence, it is worth observing how the competent authorities will address the confiscation mechanism under Decree 99 to ensure compatibility and avoid conflicts with corresponding regulations,” she added.

- Espie Angelica A. de Leon

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