Vietnam and Kazakhstan amend their IP legislation
Kazakhstan
On June 20, 2022, Kazakhstan adopted a set of amendments to several intellectual property laws introducing significant changes in the IP field spanning patents, trademarks, designs and geographical indications. The alterations to Kazakh legislation entered into force on August 21, 2022.
Trademark
The new law brings in a significant change in relation to the absolute refusal of a trademark. Prior to the amendments, marks with elements that were indistinguishable from another were refused on absolute grounds, unless a disclaimer was requested stating that the non-distinctive element does not occupy a dominant position in the mark. Under the amended law, indistinguishable elements will not result in the refusal of the mark so long as the applicant can demonstrate distinctiveness was acquired by the whole mark through use prior to the filing date.
The amended legislation has also extended the time limit for the duration of the formal examination of a trademark application from 10 working days to 1 month as of the filing date. The term of conducting the substantive examination has remained unchanged at seven months from the filing date.
The time limit for the IPO to record changes to registered trademarks has seen the opposite change, having been reduced from 1 month to 10 working days. Further, the IPO is now obliged to notify trademark holders of recorded changes within 5 working days, reducing from 2 months.
A new opposition procedure has been introduced for trademarks, as well as for AO's and GI's. As such, pending applications in relation to these types of IP will now be published on the Kazakh IPO website on a weekly basis, with third parties able to file objections based upon absolute or relative grounds within one month from the date of publication of the application. The applicant will be notified by the IPO of any objections within five working days with a copy of filed opposition, and will then have three months from the objection notification date to respond, with a decision being reached within seven months from the application filing date.
Patent
Patent legislation has also been impacted, with an expanded version of the list of non-patentable inventions being implemented, preventing the registration of patents that are considered to be contrary to public interest or morality.
As such, the scope of the list has widened to now include human cloning methods and human clones, methods that modify the genetic integrity of human embryo cells, and the use of human embryos for commercial, military and industrial purposes.
Further, the legislative changes have extended the time afforded to applicants for the submission of a proof of payment of the patent application filing fee. Previously, the proof had to be submitted upon filing, whereas henceforth, applicants have two months from the filing date to provide such evidence.
Industrial Design
The legislation in relation to industrial designs has reduced the validity term for this IP type from 15 years to 10 years, extendable by up to 3 periods of five years, bringing the new total maximum term of a design to 25 years from the date of filing. Prior to the implementation of the amendments, a design could only be extended by one period of 5 years, meaning the previous total term of design validity was 20 years.
The law also introduces the opportunity for unregistered industrial designs to be protected for 3 years from the date they were first made available to the public in Kazakhstan, provided the design meets the novelty and originality requirements. Public disclosure of the design is deemed to be made in circumstances where the design is published, exhibited, used in trade or accurately informed to the entities specialising in the applicable sphere of entrepreneurial activity in Kazakhstan. Such rights will be enforceable in Kazakh courts once established, and any confidential disclosure of an unregistered design to a third party will not be deemed to have been made public.
Geographical indications
The new laws introduce an official route of protection for Geographical Indications (GI's), a type of IP which distinguishes specific goods with a unique level of quality, reputation or other characteristic which directly correlates to the geographic origin of the product (for example, Champagne). The legislation also provides for the registration and use of foreign GI's, so long as they are protected in the country of origin.
Previously, it was only possible to register geographically related signs and names as Appellations of Origin (AO) in the country. Since AO's require a stronger link between the good and the location of origin, the introduction of GI protection will therefore open doors for applicants whose products fall short of the stringent requirements needed to obtain AO protection.
The examination of a GI application will be conducted within three months from the application filing date, with both GI and AO registrations being valid for an unlimited period of time. Certificate's granting the right to use an already registered GI or AO are valid for 10 years from the application filing date, extendable for an unlimited number of additional 10-year periods.
Vietnam
Vietnam passed an amended set of IP Laws on June 16, 2022, with the majority of the changes due to enter into effect as of January 1, 2023, aiming to align Vietnamese IP law with international standards as per the WTO TRIPS agreement.
Patent
The new Vietnamese legislation provides for a new compensation for applicants who experience delays in the issuance of licenses for the trade of pharmaceutical products. As such, a patent owner will not be obliged to pay the patent use fee for the period in which the license is delayed, not including any period of delay caused due to the fault of the applicant or any circumstances which are outside of the trading license authority's control. The amendments have also narrowed the scope of security checks of inventions prior to overseas filing.
In addition, as of January 14, 2024, it will be possible to obtain patent protection for test data for agrochemicals.
Trademark
One of the most significant changes to the IP law of Vietnam is the introduction of the possibility to register sound marks, an amendment which retroactively entered into effect on January 14, 2022. As per the legislation, sound marks must be graphically represented within an application in order to be considered. The inclusion of sound marks into Vietnamese trademark law brings the country closer in line to international standards of IP protection.
The legislation has also provided clarity on the definition of well-known trademarks, determining that marks that are "extensively known by relevant consumers in the territory of Vietnam” are deemed to be well-known. This change amends the previous law in which a well-known mark had to be extensively known by all consumers in general, thus narrowing the scope.
The definition of distinctiveness has also been refined, confirming that any trademarks that are identical or confusingly similar to already protected ones will be deemed as being indistinct, and will therefore be denied protection.
Moreover, the possibility of the cancellation of a trademark on the basis of bad faith has been introduced, with the definition of what constitutes bad faith still to be clarified.
Industrial Design
In relation to industrial designs, the amendments enshrine the possibility of partial design protection into law. Such protection was previously recognised in Vietnam, however the new law defines protectable designs as both complete products and components used to assemble complete products.
Lastly, the amended laws stipulate new limits in relation to third party objections to the issuance of IP registration certificates. As such, interested parties will have a period of 9 months from the date of publication to submit an objection regarding patent applications, 4 months for design applications, 5 months for trademarks, and 3 months for GI's.
The amendments to both Kazakh and Vietnamese IP legislation demonstrate a commitment by the jurisdictions to align their legislation with international standards, allowing for a higher level of protection for applicants and a more efficient IP system overall.