Official Notice of IP Office of Vietnam: https://interfive.com.vn/documents/CPTPP-VN.pdf
The CPTPP introduces a number of significant changes in Vietnam from an intellectual property perspective, some of which took immediate effect on 14 January 2019. (Per Article 5.3 of Vietnam’s Law on Intellectual Property as well as other laws such as the Law on Treaties of 2016, the CPTPP, as an international treaty, prevails over domestic IP law.) We briefly set out such changes below.
Recordal of Trademark License
The CPTPP eliminates the requirement for recording (registering) a trademark license to establish the validity of such license. Under Article 148 of Vietnam’s IP Law, such recordal serves as a prerequisite for the license to be valid against a third party. However, with the effectiveness of CPTPP, such requirement under the domestic law will no longer exist. The CPTPP also expressly indicates that the use of a trademark by its licensee shall inure to the benefit of the trademark owner.
Domain Name Dispute Resolution
Currently, domain name dispute resolution is a bone of contention between the relevant authorities. The Ministry of Science and Technology (MOST), which administers IP matters, and the Ministry of Information and Communication (MIC), which administers internet matters, have thus far been unable to reach an agreement to set up effective regimes for resolving domain name disputes involving country code top-level domains (ccTLD). The CPTPP requires Vietnam to set up an effective regime, which could be modeled after the UDRP proceedings.
Though this requirement has taken force, brand owners should not expect any immediate change. Rather, they must wait until Vietnam rolls out an amended version of the IP Law (particularly Article 130.1(d) on acts of unfair competition). While the timeline for such amended law is uncertain, it is expected to be considered in May 2019 when the National Assembly convenes. Hopefully, such amendment will bridge the gaps between MOST and the MIC, and fix the current loopholes. Complainants would then be able to easily freeze domain names amid the proceedings, call for ex parte proceedings, and retrieve pirated domain names, including domain names that have no active websites.