Over more than 15 years of implementation, the Law on Intellectual Property has revealed certain deficiencies for the effective management and enforcement of IPRs. In addition, Vietnam has negotiated and signed numerous FTAs with their own specific IP commitments, especially the CPTPP, EVFTA, and RCEP. Moreover, Vietnam joined the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty at the beginning of 2022. Resultingly, the Law on Intellectual Property was revised again in 2019 and 2022 to overcome deficiencies and to ensure consistency with international standards. Herein below, a reference to the “IP Law” means the one to the 2005 Law on Intellectual Property as amended in 2009, 2019 and 2022.

Under the IP Law, IPRs which can be protected in Vietnam comprise:

Copyright and Copyright Related Rights protect literary, artistic and scientific works, including music, motion pictures, photography, books, stage works, computer programs, lectures or textbooks, fine art works and applied art works. Moral rights, except for the rights to publish works, are protected for an indefinite term, while economic rights and the publication rights for motion pictures, photography, applied art works and anonymous works are protected for 75 years from the first publication, or for the motion pictures, photography, applied art works, which have not yet been published within 25 years as from the date of formation thereof, for 100 years as from such formulation date, or for the whole life of the author plus 50 years after author’s death for other works. Copyrights and related rights may be assigned or licensed freely, and acts constituting infringements are clearly defined by law.

Industrial Property Rights to inventions, industrial designs, layout designs of integrated circuits, marks, trade names, geographical indications, trade secrets, and the right to prevent unfair competition, wherein:

• Rights to an invention, industrial design, layout design or mark are established on the basis of a protection title granted by the Intellectual Property Office of Vietnam (“IP Vietnam”) following the registration requirement, or of IP Vietnam’s recognition of international registration under the Madrid System;
• Rights to a well-known mark are established on the basis of its use without reliance on registration and of compliance (through the relevant recognition) with prescribed criteria;
• Rights to a geographical indication are established on the basis of a decision of the IP Vietnam to grant a protection title following the registration requirement prescribed in the IP Law or under the international treaty of which Vietnam is a member;
• Rights to a trade name are established on the basis of its legal use;
• Rights to trade secrets are established on the basis of lawful acquirement of the trade secret and maintenance of the confidentiality thereof; and
• The right to prevent unfair competition is established on the basis of competitive activities in business.

For Industrial Property Rights established under the prescribed registration procedures or international recognition, Vietnam applies the “first to file” principle but priority can be invoked in a certain number of cases, such as missing the deadline for filing Vietnam application with claiming priority under the Paris Convention or a failure to submit the respective certified copy(ies) of the priority document(s).

An invention patent is granted for 20 years, utility solution patent for 10 years, industrial design patent for five years (renewable twice), and registered design for semi-conducting integrated circuits is valid for 10 or 15 years, subject to the sooner of termination of (a) 10-year period from the filing date; (b) 10-year period from the date of the first commercial exploitation; and (c) 15-year period from the creation date. A registered trademark is valid for 10 years and renewable for indefinite times, each of 10-year period.

The assignment of Industrial Property Rights shall be in accordance with the following conditions:

• The assignment of rights to geographical indications is not permitted;
• The assignment of rights to trade names must be accompanied with the assignment of the entire business establishment and business activities under such trade names;
• The assignment of rights to trademarks must not cause confusion as to properties or origins of goods or services bearing such trademarks; and
• The assignees of rights to trademarks must satisfy conditions for persons having the right to register such trademarks.

An Industrial Property Rights assignment agreement must be registered with the IP Vietnam for validity.

For Industrial Property Rights, license licensing agreements, except for trademark licensing agreements, are effective against a third party upon registration with the IP Vietnam. The validity of an IPRs licensing agreement will cease upon the termination of the respective licensor's IPRs.

Plant Varieties being reproductive materials and harvested materials may also be registered for protection on the condition that they are novel, distinct, uniform, stable and designated by proper denominations. The protection duration is 25 years for woody plant varieties and vines, and 20 years for other plant varieties. Vietnam became a member of the International Union for the Protection of New Varieties of Plants at the end of 2006.

The IP Law provides a number of tools to enforce a violation of IPRs of a holder. In particular:

Administrative remedies can be applied in 3 circumstances namely (i) acts that cause loss or damage to the author, IPR holders, consumers or society; (ii) acts of production, import, transport or trade of counterfeit goods and (iii) acts of production, import, transport, trade, possession of stamps, labels or other articles bearing counterfeit trademarks or geographical indications. Administrative remedies are the most practical for IPR holders, but they do not provide significant compensation. Sanctions include a warning, fines with the maximum level of VND250 million imposed on individual infringers (or VND500 million imposed on corporate infringers), confiscation and destruction of counterfeit goods, and/or suspension of business activity. Administrative sanctions can be imposed by inspectorates, market surveillance agencies, customs offices, police offices and People’s Committees. Police offices handle cases of counterfeit goods which have signs of a crime prescribed in the current Criminal Code of 2015 as amended in 2017. In necessary cases, the authority can apply for interim injunctions in association with administrative measures comprising, inter alia, orders on temporary detention of suspected individuals; orders on temporary detention of the infringing goods or evidence; searches of the suspected individuals; or searches of the premises where infringing goods or evidence are concealed.

Civil remedies include compulsory termination of the infringements, compensation for damages, compulsory destruction of infringing goods, raw materials and materials, and facilities used principally for the production or trade of infringing goods, or distribution or use of the same for non-commercial purposes, and public apology and rectification. Damages or losses are defined as both material and spiritual. The People’s Court at the district level or, for cases relating to commercial purposes or foreign elements, the People’s Court at the provincial level, has the jurisdiction to settle the claims. Compensation for damages is determined based on actual losses suffered by the IPR holder. In cases where it is impossible to determine the rate of compensation in accordance with prescribed formulas, the rate is fixed by the court depending on the loss level but not exceeding VND500 million. If an IPR holder succeeds in proving that the IPR infringement has caused the spiritual injury, he/she has the right to request compensation ranging from VND5 million to VND50 million, depending on the seriousness of the spiritual injury. On or after initiation of a civil lawsuit, an IPR holder has the right to request the court to apply an injunctive relief which includes injunctions on seizure, attachment, sealing, and/or prohibition from ownership transfer). Such IPR holder must make a monetary deposit with the value equivalent to 20% of the value of the suspected goods or at least VND20 million as guarantee.

Criminal remedies are applicable to cases involving infringing industrial property rights (with the subject matter being trademarks or geographical indications of which the infringing goods are counterfeits in significant quantities or values), and infringing copyrights and copyright-related rights. Under the Criminal Code, both individual and corporate infringers could be prosecuted and sentenced. The People’s Court at the district level or, for cases relating to foreign or complicated elements, the People’s Court at the provincial level (the functional criminal court) has the jurisdiction to hear the cases. Criminal penalties include a monetary fine of up to VND500 million or non-custodial imprisonment of up to 3 years (for sentenced individuals), or of up to VND2 billion (for sentenced corporates). In cases of serial violations or if it is an organized crime, then the penalties are increased to VND1 billion or 6 months to 3 years imprisonment (for sentenced individuals) or up to VND5 billion (for sentenced corporates). Penalties such as a fine of up to VND200 million and prohibition from holding certain positions, practicing certain occupations or doing certain jobs for 1 to 5 years could be added for sentenced individuals. Meanwhile, additional penalties for sentenced corporate comprise a fine of up to VND500 million and being banned from operating in certain sectors or raising capital for 1 to 3 years.

Remedies of border control measures of IP-related imports and exports are provided under the Law on Customs of 2014 and Articles 216 – 219 of the IP Law. Under these remedies, an IPR holder may request suspension of customs clearance procedures for suspected goods and the search and monitoring for the detection of goods in infringement of IPRs. The time limit for application of customs inspection and supervision measures is 2 years from the date of acceptance of the customs office. To apply border control measures, an IPR holder is required to make a deposit with the value equivalent to 20% of the value of the suspected goods (at least VND20 million) or a bank guarantee.