The annual statistics issued by the Intellectual Property Office of Vietnam (“IP Office”) in recent years show an increase in the number of IP transactions and applications to establish IP rights, including requests for the recordal of assignment of IP rights. Nevertheless, the numbers of trademark assignment recordals approved by the IP Office has not followed this trend, falling from 1,281 requests approved in 2022 to 1,120 requests approved in 2023. This decrease may be due to the IP Office’s overly strict viewpoint in approving trademark assignments, including its rejection of assignment recordal on the ground of conflict with the assignor’s trade name. IP Office’s practice on assignment recordal Vietnam’s IP Law restricts the assignment of trademarks in several cases, as set out in Article 139.4 that “the assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.” Thus, when an assigned mark is identical to the dominant element of the assignor’s company name, the IP Office will view that the assignee’s use of the mark will result in confusion with the assignor’s trade name, and then instantly reject the assignment request. In this case, the IP Office will only accept the assignment if the IP holder can submit documents issued by relevant authorities proving at least one of the following conditions: The assignor has assigned all business premises and operations under its name to the assignee; The assignor has removed business lines relating to the goods/services bearing the trademarks and such removal is recorded in the Enterprise Registration Certificate; The assignor has been dissolved or does not exist after signing the agreement; The assignor has changed its name after signing the agreement so that it does not contain any element identical or similar to the assigned

Starting October 15, 2024, Cambodia will implement a new penalty for late patent annuity payments and restorations, according to an unofficial announcement from the country’s Department of Industrial Property under the Ministry of Industry, Science, Technology, and Innovation. This new penalty will apply to patents, utility model certificates, and plant variety protection registrations. To avoid additional charges and prevent the abandonment of any pending applications or the lapse of registrations, applicants and registration owners must pay each annuity within the six months before the annuity period starts, or by its due date. If the annuity is not paid by the due date, a grace period of six months is allowed for late payment, with a daily charge of KHR 500 (approximately USD 0.125) per day. If payment is not made within this grace period, the patent will be deemed withdrawn or will lapse. However, the Patent Office can initiate the restoration process within the last six months of the annuity period. This requires a USD 25 restoration fee plus an additional daily charge of USD 0.125 from the start of the grace period until payment is completed. To avoid additional charges and prevent the potential abandonment of applications or registrations, companies and their appointees need to keep track of all annuity due dates for patents, utility model certificates, and plant variety protection registrations and pay all annuities well in advance of the due date. For more details on this penalty, or on any aspect of intellectual property protection in Cambodia, please contact Tilleke & Gibbins at [email protected].

Lawyers from Tilleke & Gibbins’ intellectual property team, under the guidance of Darani Vachanavuttivong, managing partner and managing director of the firm’s intellectual property department, have contributed an update to Thomson Reuters Practical Law’s Intellectual Property Rights in Thailand: Overview guide for 2024. This guide provides a comprehensive overview of intellectual property (IP) laws in Thailand, covering key areas such as patents, trademarks, copyright, trade secrets, and registered designs. It also addresses the enforcement of these rights, as well as the procedures for registering patents, trademarks, and other IP protections. The Thailand chapter outlines important aspects of IP law, including: The conditions and procedures for obtaining patents and registered designs, including the different types of patent protection available. Legal requirements for registering trademarks, including what constitutes a distinctive and legally protectable mark. The scope of copyright protection and the rights granted to creators of original works, including economic and moral rights. Protection of trade secrets and confidential information under the Trade Secrets Act, which safeguards valuable business information. This guide is a valuable resource for legal practitioners and businesses seeking to understand the nuances of Thailand’s IP landscape. To explore the latest version of Intellectual Property Rights in Thailand: Overview, please visit the Practical Law website and enroll in the free Practical Law trial to gain full access.

Background Since Thailand’s accession to the Madrid Protocol in November 2017, the trademark registration landscape in the country has undergone significant transformation. Brand owners can seek trademark protection in Thailand through a streamlined international process in addition to the national route. This alignment with global practices has somewhat simplified the registration process, offering businesses a valuable pathway to safeguard their brands in this key Southeast Asian market. However, despite the streamlined process, a technical glitch at the Trademark Office in Thailand’s Department of Intellectual Property has caused delays in issuing local certificates and statements of grant following provisional refusals — commonly referred to as ‘Model Form 5’. These documents are crucial for finalising trademark registrations and confirming their validity within Thailand. It is important to note, however, that this technical issue did not affect the issuance of statements of grant for international registrations (IRs) that had not been provisionally refused. Recent developments The good news is that, as of 19 August 2024, the Trademark Office has successfully resolved the technical issues impacting the issuance of these essential documents. With the glitch now fixed, the office has begun to process the backlog of local certificates of registration and statements of grant for IRs designating Thailand following provisional refusals. What this means for brand owners The resolution of this technical issue represents a significant milestone for brand owners who have been waiting for their local certificates. As the Trademark Office works to clear the backlog, the issuance of certificates and statements of grant is likely to proceed more promptly. For those affected by the delay, the end is in sight. The issuance of these documents will enable brand owners to officially complete their trademark registration in Thailand and benefit from the protections offered under Thai law. In the meantime, brand owners