On 12 November 2018, the Vietnam National Assembly officially ratified the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). To date, the agreement has already been ratified by Australia, Canada, Japan, Mexico, New Zealand and Singapore and it will enter into force on 30 December 2018 in those countries. The CPTPP shall enter into force for Vietnam 60 days after Vietnam officially notifies New Zealand, the official depository, in writing of Vietnam's ratification.
What does the CPTPP mean for Vietnam in terms of Intellectual Property?
The CPTPP basically retains all the core content of the TPP but suspends as many as 22 items, 11 of which are in Chapter 18 on Intellectual Property. This means they will have no effect on CPTPP Parties. Nonetheless, the CPTPP still contains several requirements that will fundamentally change the intellectual property laws of Vietnam.
During the process of securing a marketing approval for a new agricultural chemical product, the applicant may be required to submit undisclosed tests or other data concerning the safety and efficacy of such product. The CPTPP will oblige Vietnam to protect such tests or data for at least 10 years from the date of marketing approval of the product in the territory of Vietnam.1 While this matter has already been addressed in Vietnam's 2005 IP Law at Article 128, the limitation of this article is that instead of automatic protection, it requires the applicant to request such data to be kept secret. The term of protection is only 5 years. The scope of protected data is also limited as it must be trade secrets obtained by investment of considerable effort.
Another substantial change that Vietnam will have to make is the addition of a system to provide notice to a patent holder and other measures relating to the marketing of certain pharmaceutical products.2
In terms of registrable subject matter, the CPTPP imposes upon its members the obligation not to deny the registration of a sound mark. In particular, a sign must not be required to be visually perceptible, and member states must not deny registration of a trademark solely on the ground that the sign of which is sound in nature.3 Accordingly, Vietnam must amend Article 72 of its IP Law to reflect this commitment.
Section H of Chapter 18 on copyright and related rights contains three suspended articles, namely those regarding extended term of protection, technological protection measures and rights management information.
The remaining provisions will impose upon Vietnam the obligation to provide presumption of copyright ownership. This means that in absence of proof to the contrary, the person whose name is indicated in the usual manner as the author/performer/producer/publisher of the work/performance/phonogram will be presumed to be the designated right holder. It can be expected that Article 203 will be deleted or modified to incorporate the said presumption.
The CPTPP recognizes the need to address the unauthorized copying of a cinematographic work from a performance in a movie theatre. As such, Vietnam must adopt or maintain measures, including at least criminal penalties, to effectively tackle camcording in cinema.4 Vietnam will have a 3-year transition period to prepare and fully comply with this requirement.5
Also regarding criminal penalties, even though Vietnam's current Penal Code stipulates "commercial scale" as a threshold for criminal prosecution of infringement on trademark, copyright and geographical indication, neither the Code nor any guiding document has provided any definition of such phrase. The CPTPP touches upon this issue by enlisting two acts which can be considered “on a commercial scale”, which are
- acts carried out for commercial advantage or financial gain; and
- significant acts, not carried out for commercial advantage or financial gain, that have a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace.
It is expected that the above must soon be incorporated into the Penal Code.
If you have any questions on how your business in Vietnam may be impacted by the CPTPP, please do not hesitate to contact us.
1 Article 18.47
2 Article 18.53
3 Article 18.18
4 Art. 18.77.4
5 Article 18.83.4.f.xxi