by Russin & Vecchi's lawyers
- Setting up and operating in Vietnam - Part 1
- Setting up and operating in Vietnam - Part 2
- Setting up and operating in Vietnam - Part 3
- Setting up and operating in Vietnam - Part 4
- Setting up and operating in Vietnam - Part 5
- Setting up and operating in Vietnam - Part 6
- Setting up and operating in Vietnam - Part 7
- Setting up and operating in Vietnam - Part 8
- Setting up and operating in Vietnam - Part 9
- Setting up and operating in Vietnam - Part 10
- Setting up and operating in Vietnam - Part 11
- Setting up and operating in Vietnam - Part 12
SUMMARY OF THE AGREEMENT ON TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
To become a member of the World Trade Organization ("WTO") in 2007, Vietnam agreed that intellectual property matters will be governed in accordance with the Agreement on the Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement"), which comprises Annex 1C of WTO's Trade Agreement. The TRIPS Agreement covers all intellectual property subjects to which the international community has previously agreed and which are included in international multilateral treaties managed by the World Intellectual Property Organization ("WIPO"). The TRIPS Agreement requires WTO members to apply a high standard to protect and to enforce intellectual property rights. In addition, all disputes that arise from the application and implementation of the TRIPS Agreement will be resolved in accordance with general mechanisms established under WTO. Vietnam is not yet fully compliant with the TRIPS Agreement.
The TRIPS Agreement is divided into three parts:
Part I of the TRIPS Agreement sets out general provisions and basic principles, notably a national-treatment commitment under which the nationals of other parties must be given treatment no less favorable than that accorded to a party's own nationals with regard to the protection of intellectual property. It also contains a most-favoured-nation clause, a novelty in an international intellectual property agreement, under which any advantage a party gives to the nationals of another country must be extended immediately and unconditionally to the nationals of all other parties, even if such treatment is more favorable than that which it gives to its own nationals.
Part II of the TRIPS Agreement addresses each intellectual property right in succession.
Parties are required to comply with the substantive provisions of the Berne Convention for the protection of literary and artistic works, in its latest version (Paris 1971), though they will not be obliged to protect moral rights as stipulated in Article 6 bis of that Convention.
It ensures that computer programs will be protected as literary works under the Berne Convention and lays down on what basis data bases should be protected by copyright. An important addition to existing international rules in the area of copyright and related rights are the provisions on rental rights. The TRIPS Agreement requires authors of computer programs and producers of sound recordings to be given the right to authorize or prohibit the commercial rental of their works to the public. A similar exclusive right applies to films where commercial rental has led to widespread copying which materially impairs the right of reproduction. The TRIPS Agreement also requires performers to be given protection from unauthorized recording and broadcast of live performances (bootlegging). The protection for performers and producers of sound recordings would be for no less than 50 years. Broadcasting organizations would have control over the use that can be made of broadcast signals without their authorization. This right would last for at least 20 years.
With respect to trademarks and service marks, the agreement defines what types of signs are eligible for protection as a trademark or service mark and what are the minimum rights conferred on their owners. Marks that have become well-known in a particular country enjoy additional protection. In addition, the agreement lays down a number of obligations with regard to the use of trademarks and service marks, their term of protection, and their licensing or assignment. For example, requirements that foreign marks be used in conjunction with local marks would, as a general rule, be prohibited.
3. Geographical indications
In respect of geographical indications, the agreement sets out that all parties must provide means to prevent the use of any indication which misleads the consumer as to the origin of goods, and any use which would constitute an act of unfair competition. A higher level of protection is provided for geographical indications for wines and spirits, which are protected even where there is no danger of the public's being misled as to the true origin. Exceptions are allowed for names that have already become generic terms, but any country using such an exception must be willing to negotiate with a view to protecting the geographical indications in question. Furthermore, provision is made for further negotiations to establish a multilateral system of notification and registration of geographical indications for wines.
4. Industrial designs
Industrial designs are also protected for a period of 10 years. Owners of protected designs would be able to prevent the manufacture, sale or importation of articles bearing or embodying a design which is a copy of the protected design.
As regards patents, there is a general obligation to comply with the substantive provisions of the Paris Convention (1967). In addition, the TRIPS Agreement requires that 20-year patent protection be available for all inventions, whether of products or processes, in almost all fields of technology. Inventions may be excluded from patentability if their commercial exploitation is prohibited for reason of public order or morality; otherwise, the permitted exclusions are for diagnostic, therapeutic and surgical methods, and for plants and (other than microorganisms) animals and essentially biological processes for the production of plants or animals (other than microbiological processes).
6. Plant varieties
Plant varieties, however, must be protectable either by patents or by a sui generis system (such as the breeder's rights provided in a UPOV Convention). Detailed conditions are laid down for compulsory licensing or governmental use of patents without the authorization of the patent owner. Rights conferred in respect of patents for processes must extend to the products directly obtained by the process; under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
7. Layout designs
With respect to the protection of layout designs of integrated circuits, the TRIPS Agreement requires parties to provide protection on the basis of the Washington Treaty on Intellectual Property in Respect of Integrated Circuits which was opened for signature in May 1989, but with a number of additions: protection must be available for a minimum period of 10 years; the rights must extend to articles incorporating infringing layout designs; innocent infringers must be allowed to use or sell stock in hand or ordered before learning of the infringement against a suitable royalty: and compulsory licensing and government use is only allowed under a number of strict conditions.
8. Trade secrets and know-how
Trade secrets and know-how which have commercial value must be protected against breach of confidence and other acts contrary to honest commercial practices. Test data submitted to governments in order to obtain marketing approval for pharmaceutical or agricultural chemicals must also be protected against unfair commercial use.
The final section in Part II of the TRIPS Agreement concerns anti-competitive practices in contractual licenses. It provides for consultations between governments where there is reason to believe that licensing practices or conditions pertaining to intellectual property rights constitute an abuse of these rights and have an adverse effect on competition. Remedies against such abuses must be consistent with the other provisions of the agreement.
Part III of the TRIPS Agreement sets out the obligations of member governments to provide procedures and remedies under their domestic law to ensure that intellectual property rights can be effectively enforced by foreign right holders as well as by their own nationals. Procedures should permit effective action against infringement of intellectual property rights but should be fair and equitable, not unnecessarily complicated or costly, and should not entail unreasonable time-limits or unwarranted delays. They should allow for judicial review of final administrative decisions. There is no obligation to put in place a judicial system distinct from that for the enforcement of laws in general, nor to give priority to the enforcement of intellectual property rights in the allocation of resources or staff.
The civil and administrative procedures and remedies spelled out in the text include provisions on evidence of proof, injunctions, damages and other remedies which would include the right of judicial authorities to order the disposal or destruction of infringing goods. Judicial authorities must also have the authority to order prompt and effective provisional measures, in particular where any delay is likely to cause irreparable harm to the right holder, or where evidence is likely to be destroyed. Further provisions relate to measures to be taken at the border for the suspension by customs authorities of release, into domestic circulation, of counterfeit and pirated goods. Finally, parties should provide for criminal procedures and penalties at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment and fines sufficient to act as a deterrent. Dispute settlement would take place under the integrated GATT dispute-settlement procedures as revised in the Uruguay Round.
With respect to the implementation of the TRIPS Agreement, it envisages a one-year transition period for developed countries to bring their legislation and practices into conformity. Vietnam became a member of the WTO in 2007, and has a 11-year transition period. Developing countries which do not at present provide product patent protection in an area of technology would have up to 10 years to introduce such protection. However, in the case of pharmaceutical and agricultural chemical products, they must accept the filing of patent applications from the beginning of the transitional period. Though the patent need not be granted until the end of this period, the novelty of the invention is preserved as of the date of filing the application. If authorization for the marketing of the relevant pharmaceutical or agricultural chemical is obtained during the transitional period, the developing country concerned must offer an exclusive marketing right for the product for five years, or until a product patent is granted, whichever is shorter.
Subject to certain exceptions, the general rule is that the obligations in the agreement would apply to existing intellectual property rights as well as to new ones.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.