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“Greatly beneficial” - IP provisions of EU- Vietnam free trade agreement praised by experts

05/07/2019

Representatives from the European Union and Vietnam have officially signed the landmark EU-Vietnam Trade Agreement (EVFTA), paving the way for closer cooperation between the trade bloc and the Southeast Asian country.  Talking to WTR, IP practitioners in Vietnam claim that the EVFTA will improve the country’s intellectual property ecosystem, including significant changes to the trademark, design and GI system.

The EVFTA was signed on June 30, and has  been  described by the EU as “the most ambitious free trade deal ever concluded with a developing country”. It will eliminate 99% of tariffs between the two areas and is expected to open up various markets for Vietnam in the future. Notably, the EVFTA still needs approval of the European Parliament, so there is still at least one hurdle to go before implementation.

From an IP perspective, the EVFTA has  a number of provisions of note – in fact, there’s an entire chapter of the agreement dedicated to them.  They cover the entire spectrum of IP and will see Vietnam needing to make a number of changes to its intellectual property  laws.

For trademarks, the EVFTA has several specific provisions. The most notable is the request for parties to provide that a registered trademark will be liable to revocation if – within a continuous period of five years prior to a request for revocation – it has  not been  put to genuine use by its owner or the owner’s licensee in the relevant  territory. In Vietnam, there is no concept of ‘genuine use’. According to Thomas J. Treutler, partner and managing director at Tilleke & Gibbins, the introduction of this requirement is a positive one as it “may help to clear the register from marks that are not genuinely used by the mark owners”.

Another significant trademark-related change is that the EVFTA sets out a requirement that a trademark can be revoked  as a result  of “inactivity of the proprietor, the common name (ie, generic)  in the trade  for a product or service  in respect of which it is registered”. Once again, Vietnam’s IP law does not specifically mention this as a possibility for revocation. “The EVFTA’s requirement on this matter is helpful to formalize the practice and provide more certainty in legal action for the interested parties,” says Treutler.

When it comes to the enforcement of IP rights, the EVFTA sets out a “higher standard” for Vietnam – with changes that will be a boon for brand owners. Specifically, it requires the “active involvement” of customs authorities to target and identify shipments that contain goods suspected of infringing IP rights. At present, says Treutler, “rights holders typically need to be proactive to ensure the full involvement of the customs authorities”. With the EVFTA, that could change. Furthermore, the provisions will require customs authorities to cooperate with brand owners, especially around information for risk analysis.

Regarding the protection of geographical indications, the EVFTA will require more than 160 GIs from 28 EU member states be protected in Vietnam. On the flipside, 39 GIs from Vietnam will be protected in the EU. According  to Son Doan, IP attorney at IPMAX Law Firm, “this will open the opportunities for Vietnamese agricultural and food products to enter  the EU market”. Furthermore, according to Treutler, “the EVFTA provides a grandfather clause for certain GIs for cheese and wine, which shows the effort to harmonise the rights of stakeholders from different jurisdictions”.

Turning to designs, this is an area with some of the most significant changes. According to Treutler, at present, “the scope of design protection is quite narrow” in Vietnam” – something that the EVFTA appears to address. One major step is that Vietnam would need to participate in the Geneva Act of the Hague  Agreement within two years  of the EVFTA taking effect. Secondly, it would require Vietnam protecting partial designs and will clarify the protection of visible features of designs.

As a whole, the provisions are being praised by local practitioners. “With the signing of the EVFTA, following its accession to the CPTPP in January, Vietnam has  taken  another big step toward  reaching a true ‘international standard’ for IP protection,” claims Treutler, with Doan, adding: “I think businesses and investors of all sizes and in all industries, will greatly benefit from the agreement, and they are all positive about the opportunities being brought up.”

It is clear, then, that IP practitioners on the ground in Vietnam are positive  about the changes that will be implemented thanks to the provisions within the EVFTA. However, it is understood that the changes will be included in an amended IP law in 2020, so there’s still some waiting to go.

Source: Lexology