Who Can Act on Behalf of Applicants before the IP Vietnam?
Nguyen Thi Thu Ha, Vision & Associates (Vietnam)
On 23 November 2020, the IP Office of Vietnam (“IP Vietnam”) issued Notification No. 13822/TB-SHTT (“Notification”), tightening the requirements for signatories on behalf of the applicants / IP holders before the IP Vietnam. According to the Notification, only signatories holding the titles of either Chairman of Board of Members, Chairman of Board of Management, President, Director or General Director can sign on behalf of the applicant/ IP holders before the IP Vietnam. For signatories holding other titles, documents proving authorization granted to them to sign on behalf of the applicants / IP holders are required.
The Notification was met with controversy and even frustration by the Vietnam IP community, first, because the Notification was interpreted to be applicable retroactively to all pending cases filed with the IP Vietnam before the date of issuance of the Notification, and second, because it was quite a big change that may result in revocation of all documents that had already been executed by the applicants/ IP holders and that were in use, for example, Powers of Attorney issued to IP agents, or otherwise, additional documents that were required to support these existing documents. During the time of lockdown during the COVID-19 pandemic, re-execution or additional execution of documents would be too cumbersome, and in some cases, nearly impossible.
The IP community responded by way of numerous complaints and letters to the IP Vietnam, claiming that the Notification lacked good grounds. Even the Vietnam Intellectual Property Association voiced up against the IP Vietnam’s viewpoints. As a result, implementation of the Notification was halted during the period between December 2020 and January 2021. The standstill also caused much difficulties to the IP lawyers, as they could not be certain as to how to advise the client in respect of this change.
Discussions on the matter were then resumed in February 2021 with a draft guideline on the Notification, under which the IP Vietnam intended to lift the requirements for procedures concerning IP prosecution, while still maintaining a strict stance on “any procedures that may cause changes in ownership”, which may include (i) assignment of IP rights, (ii) renunciation of IP rights, (iii) withdrawal of applications, and (iv) issuance of Letters of Consent to a third party.
The guidelines have not been issued as it is still under debate, but it is said that these regulations have been applied de facto. Hence, while the IP community of Vietnam can breathe a sign of relief, as the Notification appears not to be applicable to filings, and thus existing POAs can be used for filing new applications of the same holders as per normal. Yet, the community will still need to keep an eye on what happens and what may happen if the guidelines are eventually issued, because if they are issued, they will put too much pressure on the procedure for recording trademark assignments, which, as it stands now, is considered too strict.