VIPRI opinion for IPR enforcement in Vietnam. What important points you need to know?

I. What is Industrial Property Assessment/Appraisal in Vietnam?

In general, “intellectual property assessment” is a term used to denote specialized services that provide expert opinions/expert witness on IPR related issues pertaining to IPR infringement, valuing IP rights and determining the value of damages caused by IPR infringement. In Vietnam, intellectual property assessment is typically carried out at the request of one or both parties to an IPR dispute or at the discretion of the Vietnamese IPR enforcement agencies in order to resolve alleged IPR infringements. A professional performing assessment is called a assessor (assessment expert), who has qualification in conformity with each area of assessment, has been trained, has appropriate professional skills and experience to provide expert opinions /expert witness to settle disputes or address IPR infringement.

As provided under Article 201.1, Vietnam IP Law, “Intellectual property assessment means the use by competent organizations or individuals of their professional knowledge and expertise to make an assessment of and conclusions on matters related to cases of IPR infringement”.

Under 39.2, Decree No. 105/2006/ND-CP dated 22 September 2006, revised by Decree No. 119/2010/ND-CP dated 30 December 2010, intellectual property assessment covers the following areas: (i) assessment of copyright and related rights, (ii) assessment of industrial property rights, and (iii) assessment of the rights to plant varieties.

Per Point I.1, Circular No. 01/2008/TT-BKHCN dated 25 February 2008, revised by Circular No. 04/2012/TT-BKHCN dated 13 February 2012, industrial property assessment covers 4 sector as follows: (i) assessment of inventions and layout designs of semiconductor integrated circuits, (ii) assessment of industrial designs; (iii) assessment of marks and geographical indications and (iv) assessment of other industrial property rights.

Intellectual property assessment (which includes industrial property assessment) covers the following contents: (i) determining the scope of protection of the intellectual property right subject matter (“assessment of protection status”), (ii) determining whether or not an object in question fully meets the conditions for being treated as an intellectual property right infringing element (“assessment of infringing element”), (iii)  Determining whether or not there exists an identicalness, equivalence, similarity, confusability, indistinctness or duplicability between an object in question and a protected object (“assessment of similarities”), (iv) Determining the value of the intellectual property rights and the value of damage (See Article 39.1, Decree  No. 119/2010/ND-CP).

Vietnam Intellectual Property Research Institute (“VIPRI”) is an institute under Ministry of Science and Technology accredited for delivering expert opinions relating to IP infringement cases concerning industrial property subject matters such as inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, geographical indications. The requesters may request the VIPRI to (i) determine scope of protection of industrial property rights, (ii) assess similarity, (iii) determine infringing element, and (iv) determine damages. However, at current stage, due to limited human resources, the VIPRI only provide assessment services concerning inventions, industrial designs, geographical indications and trademarks. The VIPRI will not opine on matters of unfair competition, trade name or copyright.

II. How important is Industrial Property Assessment Conclusion/Appraisal in enforcement proceedings in Vietnam?

In current practice of IPR enforcement in the world and in Vietnam, industrial property assessment is considered as an effective tool to protect and handle IPR infringement, making an important contribution to improving the efficiency in the IPR enforcement proceedings, protecting the rights and legitimate interests of rights holders, creating a fair and equitable business and production environment, encouraging investment and creativity.

1. Industrial property assessment serves as a supporting role for the enforcement authorities to resolve IPR infringement/disputes

In principle, in order to assess and conclude whether or not an infringement has occurred, IPR enforcement agencies (specialized inspection agencies, customs authorities, market management bureaus, police authorities and People’s Committees of all levels, court) must accept the case, evaluate the evidence, review the entire documents provided by the concerned parties so that conclusions on IPR infringement and measures to handle such infringement can be made.

Assessment organizations and assessors only serves a role of rendering their objective opinions based on their professional knowledge to assist Vietnamese competent agencies in assessing and concluding acts of infringement as reflected in Article 201, Vietnam IP Law.

Industrial property assessment conclusion is expressed in the form of a document called “assessment conclusion document”. This document is one of the assessment products of the IP assessment organization. As said above, assessment conclusions by assessors or assessment organizations are made on the basis of examining IP related issues rights by using their own professional knowledge and skills. In other words, an assessment conclusion is deemed an expert opinion or expert witness. Therefore, assessment conclusions in a dispute or IPR infringement case are of professional assistance to enforcement agencies and/or related parties; assessment conclusions are not binding upon those agencies or parties; assessment conclusions are not administrative documents although assessment organizations may be state ones.

“Additional assessment” or “Re-assessment”

In the event that the enforcement agencies and/or the concerned parties do not agree with the assessment conclusions, they may solicit/request the same organization/individual who had previously conducted the assessment or other the organization/ individual to conduct a “re-assessment”. If the assessment conclusion is insufficient and unclear regarding the contents subject to the assessment, or if new circumstances arise and need to be made clear, enforcement agencies and/or the concerned parties are entitled to request an “additional assessment”. Under Article 50, Decree No. 105/2006/ND-CP dated 22 September 2006, “re-assessment” can be performed if the assessment solicitor or requester disagrees with the assessment result, or if outcomes of assessments on the same issue are contradictory. The re-assessment may be performed by the assessment organization or assessor, who has performed the previous assessments, or by another assessment organization or assessor as requested by the assessment solicitor or requester. Meanwhile, “additional assessment” can be performed if the assessment conclusion is insufficient and unclear regarding the contents subject to the assessment, or if new circumstances arise and need to be made clear. The request for additional assessment and performance of additional assessment shall comply with the provisions applicable to the initial assessment.

In light of the foregoing provision, in order to assess and conclude on the elements of IPR infringement, the enforcement agencies and/or its stakeholders have the right to decide whether or not to conduct an assessment request /solicitation, as well as whether or not to use the results stated in the assessment conclusion document.

A VIPRI opinion, if rendered in favour of right holders can be submitted to an enforcement agency, such as the Ministry of Science and Technology (MOST) Inspectorate, the Market Surveillance Department (MSD), customs, etc. Then, based on the non-binding opinion, the enforcement agency can consider whether to proceed with enforcing the IP rights of the complainant, such as by proceeding with an administrative raid and issuance of sanctions (such as fines, seizure and destruction of infringing products, etc.). Courts can also rule on IP cases, of course, and a VIPRI opinion can be very persuasive evidence for the court to rule in the rights holder’s favor.

2. Industrial property assessment is an effective tool for self-protection of industrial property rights

Per Article 198, Vietnam IP Law, IPR holders have the right to apply the following measures to protect their IPRs: (i) to apply technological measures to prevent acts of infringement of its intellectual property rights, (ii) to request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages, (iii) to request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws; (iv) to initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder

In the course of exercising the right to IPR self-protection, the IP right holders, related parties in the dispute and/or IPR infringement cases can rely on IP assessment as a tool for the purpose of solving the disputes or IPR infringement by themselves. Assessment requests are filed in case the disputing parties have difficulties in making their conclusion on the disputes and/or determining the infringing element, or they need to possess expert opinions on nature of the case or collate more evidence on protection scope, level of similarity, infringing element, etc. to substantiate their arguments before the enforcement authorities or the alleged infringers.

As a matter of fact, industrial property assessment can be used as an effective tool which enables the right holders to exercise their rights to self-protection of their industrial property rights or the related parties to protect their legitimate rights and interests. Request of industrial property mainly aims at assisting the enforcement actions, in detail, (i) to submit the petition to handle IPR infringement, (ii) to warn the alleged infringer based on which requesting him/her to voluntarily cease the infringement or to oppose another’s allegations of IPR infringement, (iii) to re-consider the validity of the protection or the scope of protection for which industrial property rights have been established; (iv) other purposes for protecting (enforcing) IP rights.

3. Industrial property assessment conclusion serves as a source of legal evidence in industrial property enforcement

Under Article 51.1, Decree No. 105/2006/ND-CP, written assessment conclusion shall be considered as evidence used by the competent enforcement authority to handle the case. Such document provides principal information as follows: name and address of the assessment organization or assessor, name and address of the agency soliciting assessment or the organization or individual requesting assessment, object, contents and scope of assessment, mode of assessment, assessment conclusions, time and place of performance and completion of the assessment. As evidence, IP assessors provide their assessment conclusions based on their knowledge and expertise, thus, such conclusions serves as IP expert opinions.

In light of the foregoing, the assessment conclusion document is considered to be a document expressing the objective assessment of the assessment organization/individual to provide the competent agency with a reference document in the assessment and conclusion whether or not there is an infringement.

Per Article 26.4, Decree No. 99/2013/ND-CP on sanctioning of administrative violation in industrial property, IPR infringement handling agencies (i.e. specialized inspection agencies, customs authorities, market management bureaus, police authorities and People’s Committees of all levels, court) are competent to consider and make conclusions on acts of infringement based on documents and evidence included in the case file (including evidence and documents provided by parties (rights holders, alleged infringer and related parties, etc.); evidences, documents collected by the competent authorities in the process of settlement; assessment conclusions …) and must be liable to their conclusions and decision on imposing administrative sanctions.

VIPRI Opinion Related Tips

(i) What should be taken obtain a VIPRI opinion in favor of the petitioner?

IPR holders or alleged infringer are all entitled to file a request for the VIPRI opinion on whether an infringing element over a trademark, industrial design or patent has been established. The request requires basic information such as the trademark or patent registration number of the petitioner. Samples of the infringing product (or sample photographs) may be submitted with the request.

To improve likelihood of receiving a favorable VIPRI opinion, a written document which explains any nuances of the case, or provide more detailed analysis, such as by presenting a claim chart and infringement analysis in a patent infringement case should be submitted alongside the VIPRI petition. In cases where it is desirable to illustrate the distinctive nature of a trademark or design, a market survey showing various third-party marks should be submitted to reinforce the uniqueness of the rights holder’s trademark or design. Additionally, some information on the well-known or wide use status and recognition in Vietnam of a trademark or design may also presented in support of a VIPRI petition and may be convincing. We note, however, that the documents manifesting well-known or wide use status of a mark is of supporting value only. The VIPRI does not opine on well-known status for their assessment purpose. This is mainly because (i) well-known marks have not been officially recognized by any Vietnamese authorities and (ii) the VIPRI has no competence to recognize a mark as a well-known one in Vietnam. Thus, the VIPRI is not in position to conduct the assessment based on the ground that the trademark based on which the VIPRI opinion is assessed is a well-known one. Thus, the VIPRI can only predicate on a trademark which has been registered in Vietnam for assessment purpose.

(ii) Whether or not obtaining VIPRI opinion is necessary step in order to file an industrial property infringement lawsuit in Vietnam.  If the patentee does not obtain the VIPRI, cannot the patentee file an infringement suit?

The Vietnamese authorities are working toward improving training for court officials, judges, customs authorities, and other IP enforcement agencies, but there is still some inconsistency in court decisions based on the location of the court chosen for the legal action. In many cases judges in rural areas lack the right experience and legal training to bring fair judgements in line with Vietnamese law. Thus, obtaining an assessment in favor of the IPR holders before taking enforcement action is strongly recommended.

In principle, the industrial property right holders are entitled to file an infringement suit without the VIPRI opinion. Nevertheless, obtaining the VIPRI opinion, although not mandatory, is necessary for a patent infringement lawsuit in Vietnam. This is because of that (i) there is no IP court in Vietnam at the moment, and (ii) IP-related lawsuits, especially those pertaining to patent matters remain relatively new and complicated to many Vietnamese judges, who possess limited knowledge and experience in handling IP-related disputes. Therefore, the VIPRI opinion, if in favour of the IPR holders, will strengthen the latter’s argumentations against the IPR infringement and thus, is recommendable.

(iii) Whether or not the court must be bound to the VIPRI opinion.  If not, how much that opinion influences the court’s judgment?

The VIPRI opinion takes the role of an evidence submitted by the plaintiff, and it will be reviewed by the court during the proceedings. The court is not statutorily bound by the VIPRI opinion. Under both the laws and practice, during the court proceedings, the court can, if deems necessary, collate documents and evidence on its own through prescribed court procedures, such as soliciting expert assessments, or requiring certain individuals/ organizations to provide evidence relating to the lawsuit. Therefore, in our experience, the VIPRI opinion may still have quite big influence on the court’s initial viewpoint on the case, as well as stance of the experts/individuals/ organizations whom the court may solicit, given the weakness and inexperience on IPR related matters of the court judges in Vietnam.

(iv) Procedures for obtaining a VIPRI opinion?

Generally, upon receipt of a petition for the VIPRI opinion, the VIPRI will assign the case to an officer, who will then examine the request and draft the VIPRI opinion. The draft VIPRI opinion will be presented to the VIPRI qualified expert, who will do the final review and then issue the VIPRI opinion. The VIPRI opinion will be available in about 45 working days in normal cases. If the IPR holders requests for an expedited examination, the VIPRI opinion may be issued in about 25 working days from the date of request.

(v) Should we continue enforcement action with unfavorable VIPRI opinion?

Many rights holders tend to give up on an infringement action if an unfavorable VIPRI opinion on infringement is issued. We emphasize that VIPRI opinion serves as an expert opinion and thus, not binding to the Vietnamese enforcement authorities. Thus, in case of an unfavorable VIPRI opinion, following actions should be taken into account: (a) Providing new evidence and arguments and requesting the VIPRI to conduct an “additional assessment” or “re-assessment”, (b) Seeking the IP Vietnam’s expert opinions on another matter of law (e.g. unfair competition), and (c) Still submitting a petition for handling IPR infringement to the Vietnamese enforcement authorities as they are at their own discretion to take actions without the VIPRI opinion.

For more detail, please contact KENFOX at info@kenfoxlaw.com or kenfox@kenfoxlaw.com

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