IPR enforcement concerning Geographical Indication in Vietnam
I. Acts of Infringement over Geographical Indication in Vietnam and Remedies
1. Infringement
The following acts, if performed without permission of the owner of a geographical indication (“GI”) registered in Vietnam, shall be considered as infringement of the rights over the registered GI:
(a) Using protected GIs for products which do not satisfy the criteria of peculiar characteristics and quality of products bearing GIs, although such products originate from geographical areas bearing such GI;
(b) Using protected GI for products similar to products bearing geographical indications for the purpose of taking advantage of their reputation and popularity;
(c) Using any sign identical with, or similar to, a protected GI for products not originating from geographical areas bearing such geographical indication, and therefore misleading consumers into believing such products originate from such geographical areas;
(d) Using protected GIs of wines or spirits for wines or spirits not originating from geographical areas bearing such geographical indication, even where the true origin of goods is indicated or GI are used in the form of translations or transcriptions, or accompanied by such words as “category,” “model,” “type,” “imitation” or the like.
2. Remedies
As a matter of law, an intellectual property right holder in general and a GI owner in particular shall be entitled:
(i) to take technological measures to prevent acts of infringement of GI rights;
(ii) to request that the accused infringers terminate the infringing acts, publicly apologize for and rectify the infringement, and compensate for damages;
(iii) to request the State competent authorities to handle the GI infringement; and
(iv) to institute a lawsuit before a competent court or arbitration proceedings to protect their legitimate rights and interests.
Geographical indication (“GI”) infringements may be dealt with under administrative route, civil route or criminal route. Goods or their packages bearing a mark or sign which is identical with or indistinguishable from a GI currently protected for those very goods, without permission from the organization managing the GI is defined as GI counterfeit goods. In case GI counterfeit goods are imported into Vietnam, the GI owner is entitled to take border control measure to monitor inbound shipments and seize GI counterfeit goods at border gates of Vietnam.
In light of the foregoing, in general, administrative, civil, and criminal remedies are available to enforce GI rights in case of infringement.
2.1. Administrative remedies
The main purpose of the administrative proceeding is to cease the infringement. GI holders cannot seek damages under the administrative proceeding. If infringements are found, GI infringers may face one of the following principal remedies/sanctions: (a) warning order, or (b) monetary fine.
The maximum monetary fine imposed on organizations committing GI infringement is 500 million VND (~US$21,700). Meanwhile, the maximum monetary fine imposed on individuals (national person) is 250 million VND (~US$10,850).
GI infringers may, subject to nature and severity of violations, the GI infringers may also be applied one or more of the following additional remedies/sanctions:
(a) Confiscation of material evidence and means used in the commission of administrative violations, including GI counterfeit goods; raw materials, materials and means used mainly for producing or trading in those goods;
(b) suspension of the production, trading or provision of infringing products, for between 01 and 03 months from the effective date of the sanction decision.
Apart from principal remedies/sanctions and additional remedies/sanctions, one or more of the following remedies may be imposed on GI infringers:
(a) forcible removal of infringing elements on their goods or means of business and destruction of infringing elements, forcible alteration of enterprise names, removal of infringing elements in enterprise names;
(b) forcible use for non-commercial purposes of GI counterfeit goods, raw materials, materials and means used mainly for producing or trading in these goods, after infringing elements on these goods are removed, provided such act does not affect the exercise of GI rights by the holders;
(c) forcible bringing out of the Vietnamese territory of transit goods infringing upon GI rights or forcible re-export of GI counterfeit goods, or imported means, raw materials and materials used mainly for producing or trading in these goods after infringing elements on these goods are removed;
(d) forcible destruction of GI counterfeit goods, means, raw materials and materials used mainly for producing or trading in these goods, evidence and means involved in violations on which infringing elements cannot be removed; infringing goods which may cause harms to the health of humans, domestic animals, plants and the environment; stamps, labels, and articles bearing counterfeit GI; stamps, labels, packages and other articles bearing infringing elements; protection titles, certificates or other documents which are modified, erased or counterfeited;
(e) forcible modification or addition of indications on industrial property;
(f) forcible public correction of errors, for acts of giving wrong indications on industrial property rights; (g) forcible confiscation of dispersed material evidence or means of violation;
(h) forcible remittance of illicit earnings from the commission of administrative violations or forcible remittance of an amount equal to value of material evidence or means of administrative violation which have been sold, dispersed or destroyed.
Administrative preventive measures/remedies:
Administrative preventive measures may include:
(a) temporary custody of involved persons;
(b) temporary custody of infringing products, material evidence and means;
(c) body search; and
(d) Search of means of transport and objects; search of places where infringing products, material evidence and means are hidden.
To seek administrative preventive measures, IPR holders needs to prove that a) infringement acts are likely to cause serious damage to consumers or society or (b) material evidence on infringements is likely to be dispersed or alleged infringers show signs of shirking their liabilities or (c) it is necessary to secure the enforcement of sanction decisions on administrative violations. The administrative preventive measures are quite similar to injunction/provisional urgent measures applied by the Court.
Despite available in the laws of Vietnam, no order of administrative preventive measures has been granted by administrative enforcement authorities in Vietnam concerning IPR infringement so far. In most IPR infringement cases settled under administrative route, an IPR holder or their IP agent must submit a petition for handling IPR infringement and all sufficient evidence in support of infringement claims for the administrative Vietnamese enforcement authorities to review and accept to handle under normal enforcement proceedings.
2.2. Civil remedies
Vietnamese courts shall apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon GI rights:
(i) compelling the termination of infringing acts;
(ii) compelling the public apology and rectification;
(iii) compelling the performance of civil obligations;
(iv) compelling the payment of damages;
(v) compelling destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and means used largely for the production or trading of intellectual property right-infringing goods, provided that such destruction, distribution or use does not affect the exploitation of rights by trademark right holders.
Injunction/Provisional Urgent Measures
IPR holders/Plaintiff are entitled to request a competent court in Vietnam to grant a preliminary injunction at the time of (or after) lodging their claim with the court. The IPR holders/Plaintiff may request the court to apply Provisional Urgent Measures/Injunction that includes:
(a) seizure;
(b) Distraint;
(c) Sealing, ban from changing the status quo, ban from movement; and
(d) Ban from ownership transfer.
In addition, other injunction measures stipulated by Civil Procedure Code 2015 also may be applied by the court at request of the plaintiff when necessary and for the purpose of avoiding the dispersal of the infringing products by the defendant/infringer. In particular, one or a combination of the following forms of injunction measures may be taken:
- Blockading of accounts or assets;
- Forbidding the defendant/infringer from conducting a certain action or forcing the defendant/infringer to conduct a certain action.
To seek Injunction/Provisional Urgent Measures, IPR holders should prove that (a) there appears a likelihood of irreparable damages sustained by IPR holders, or (b) there is a risk that infringing goods or other material evidence pertaining to such alleged infringement is destroyed or cannot be traced if they are not protected in time.
For Injunction/Provisional Urgent Measures to be accepted, the IPR holder/Plaintiff must (i) pay a deposit a sum of money equal to twenty (20) per cent of the value of the goods subject to the application of provisional urgent measures, or at least twenty million (VND 20 million) (~US$ 869) where it is impossible to value such goods or (ii) provide with a bank guarantee.
Despite available in laws of Vietnam, obtaining Injunction/Provisional Urgent Measures, in practice, is very difficult, nearly impossible. For example, it appears that a formal court action must be commenced and “accepted” by a Vietnamese court before such Injunction/Provisional Urgent Measures as seizure of counterfeit or infringing goods can be sought from the court. In practice, preparing and submitting a lawsuit petition in a form that will be accepted can be very onerous due to the requirement that lawsuit petition must be supported by evidence that has been notarized and/or legalized.
Compensation
Damages claimed under a civil proceeding may include material and spiritual damages. The extent of damage shall be determined on the basis of actual losses suffered by the holders due to acts of infringement. Practically, courts require strong evidence on damage to determine on specific amount of compensation to be paid by the infringers. In some cases, legal fees may be accepted as part of damage.
Damages shall be calculated based on one of the following:
Option 1: The total physical damage determined in an amount of money plus the profits gained by the defendant as a result of infringement if reduced profits of the plaintiff have not yet been included in the total physical damage. The total physical damage could include the property loss, reduce in income and profit, loss of business opportunity, and reasonable expenses for injunction and remedy;
Option 2: The value of the transfer of the right to use the IPR subject matter with the presumption that the defendant has been transferred by the plaintiff with the right to use that IPR subject matter under an agreement for using such IPR subject matter to the extent equivalent to the act of infringement committed;
Option 3: Where it is impossible to determine a rate of compensation for physical damages, a rate shall be fixed by the court depending on the loss level but not exceeding VND 500 million (~ US$21,700)
Apart from compensation of material damages, in case the plaintiff can prove their spiritual detriment caused by the IPR infringement acts, the amount of damage for spiritual detriment may be decided by the court in a range from VND5-50 million (~US$217-2,170).
In addition, the plaintiff may request the infringer to pay the reasonable lawyer fees.
2.3. Criminal remedies
For the infringer who is an individual (a natural person), one of the following main criminal remedies/penalties may be imposed on an offender who infringes upon GIs:
(i) a fine of from VND 50 to 500 million (~US$2,170-21,170) or a penalty of up to 3 years’ community sentence in cases of infringement upon GI rights protected in Vietnam on commercial scale, or earning an illegal profit of from VND 100 to under 300 million (~US$4,300-13,000), or causing a loss of from VND 200 to under 500 million (~US$8,600-21,170) to the owner of such GI, or the infringing goods assessed at from VND 200 to under 500 million (~US$8,600-21,170);
(ii) a fine of from VND 500 million to 1 billion (~US$2,170-42,340) or a penalty of 6 – 36 months’ imprisonment if the offence committed in any of the following cases:
a) the offence is committed by an organized group;
b) the offence has been committed more than once;
c) the illegal profit reaped is VND 300 million (~US$13,000) or over;
d) the loss incurred by the GI owner is VND 500 million (~US$21,170) or over;
e) the illegal goods are assessed at VND 500 million (~US$21,170) or over.
Apart from the main criminal penalties, the individual offender may be additionally subjected to a fine of from VND 20 to 200 million (~US$869-8,600) in case the monetary fine is not applied in the main criminal remedies/penalties, be prohibited from holding certain positions or doing certain works for 1 – 5 years.
For the infringer who is a legal entity/organization, criminal remedies are as follows:
(i) a fine of from VND 500 million to 2 billion (~US$21,170-84,680) if such entity infringes upon GI rights protected in Vietnam on commercial scale or earns an illegal profit of from VND 200 to under 300 million (~US$8,600-US$13,000) or causes a loss of from VND 300 to under 500 million (~US$13,000-21,170) to the GI owner or the infringing goods assessed at from VND 300 to under 500 million (~US$13,000-21,170); or earns an illegal profit of from VND 100 to under 200 million (~US$4,300-8,600), or causes a loss of from VND 100 to under 300 million (~US$4,300-13,000) to the GI owner or the infringing goods assessed at from VND 100 to under 300 million (~US$4,300-13,000) while having incurred an administrative penalty or having an unspent conviction for the same offence;
(ii) a fine of from VND 2 to 5 billion (~US$84,680-211,700) or suspension of operation for 6 – 24 months if the offense committed in any of the following cases:
a) the offence is committed by an organized group;
b) the offence has been committed more than once;
c) the illegal profit reaped is VND 300 million (~US$13,000) or over;
d) the loss incurred by the trademark owner is VND 500 million (~US$21,170) or over;
e) the illegal goods are assessed at VND 500 million (~US$21,170) or over.
Apart from the main criminal penalties, the infringing legal entity might also be liable to a fine of from VND 100 to 500 million (~US$4,300-21,170) in case the monetary fine is not applied in the main criminal penalties, be prohibited from operating in certain fields or raising capital for 1 – 3 years.
2.4. Border Control Measure
Border measures are provided for under Vietnamese laws and regulations to enable the IPR holders in general and GI owners in particular to effectively enforce and protect their IPRs in Vietnam.
Customs supervision: A GI owner is entitled to file with the Customs Supervision Department a request for customs supervision measure (“Request for Supervision”) for a 2-year term, which can be renewed for another 2-year term. This measure is implemented at all Vietnamese border gates to detect any alleged counterfeits/infringing goods (“Alleged Infringing Goods”) imported into Vietnam. The IPR holder can then request for a temporary suspension of customs procedure over such Alleged Infringing Goods once they are detected.
Temporary suspension of customs procedure: In case the Alleged Infringing Goods has been found imported into Vietnam, the GI owner is entitled to file with a Customs Branch a request for temporary suspension of customs procedure over such Alleged Infringing Goods (“Request for Suspension”). The temporary suspension will, once applied, enable the IPR holder to enforce as well as seek for injunctions against the Alleged Infringing Goods.
Remedies
In principle, administrative, civil and criminal remedies may be applicable to the counterfeit/infringing goods detected at the borders. As such, please refer to administrative, civil and criminal remedies as provided in point 7.1, 7.2 and 7.3 above. However, in practice, administrative remedies (as mentioned in section point 7.1) are generally applied to handle the counterfeit/infringing goods detected at the borders.
II. Handling infringements in Vietnam concerning Geographical Indication
1. Administrative procedure for GI enforcement:
Competent authorities:
- Scientific and Technological Inspectorates (including Inspectorate of Ministry of Science & Technology and Inspectorate of Departments of Science & Technology located in provinces of Vietnam);
- Market Management Offices;
- Customs Offices;
- Police Agencies.
Procedure:
Generally, under trademark-based enforcement practice, the Vietnamese competent enforcement authorities will set up an Inspection Team and may invite representatives from our firm and request local Police to join the inspection to ensure Inspection Team safe during raiding against the alleged infringer. The alleged infringer’s premise/factory/warehouse will be checked/inspected to detect and seize the infringing products. Minutes of administrative violation may be immediately made or a Working Minutes will be made first if necessary to have a meeting/discussion with the alleged infringer later before making a Minutes of administrative violation and a sanction decision imposed on the infringer.
The basic procedures:
(i) Submission of the Petition: Right holder/IP agent files a Petition for handling IPR infringement with Vietnamese competent enforcement authority.
(ii) Check: Enforcement authority checks (i) the Petition and (ii) evidence accompanied with the Petition. If lack of some required documents and/or evidence, right holder/IP agent is required to make additional submission within 30 days.
(iii) Acceptance/Refusal: Within 10 days if all requirements are met, enforcement authority issues a Decision on Inspection. Right holder/IP agent may join and witness the infringement handling process if accepted by the enforcement authority (Article 26.7, Decree No. 99/2013/ND-CP). If the Petition lacks required documents/evidence, the enforcement authority will require additional evidence/explanation case (Article 27.3, Decree No. 105/2006/ND-CP). A refusal to settle the case if failure to submit required documents/ evidence (Article 27.4, Decree No. 105/2006/ND-CP).
- The enforcement authority may request another enforcement authority to coordinate in handling IPR infringement (Article 29, Decree No. 99/2013/ND-CP).
- If the Petition is filed with the competent authority (i.e. fall within the settlement jurisdiction of another enforcement authority), the enforcement authority who received the Petition will provide guidelines to the requester as to which authority he/she should file the Petition or forward the Petition to the enforcement authority having competent to settle the case (Article 27.2, Decree No. 105/2006/ND-CP and Article 25.1(b), Decree No. 99/2013/ND-CP).
- If there is a dispute over or complaint about the registration right, ownership right (e.g. a cancellation/invalidation action) after the Petition is accepted for handling, the enforcement authority may take either of following action, (i) Requesting involved parties to carry out procedures for requesting settlement of the complaint, denunciation or dispute by a competent agency under the law on intellectual property; (ii) Requesting the industrial property rights holder to give explanations or make commitment or to request the state management agency in charge of industrial property to clarify the legal status of industrial property rights subject to the complaint, denunciation or dispute (Article 27, Decree No. 99/2013/ND-CP).
- The right holder may request for assessment conclusion on GI infringement (Article 40.2, Decree No. 105/2006/ND-CP). The enforcement authority may call upon the IP assessment/professional experts (Article 40.1, Decree No. 105/2006/ND-CP).
- If infringement act contains a sign of a criminal, the enforcement authority must forward the case to criminal procedure agencies for investigation and initiation of a criminal lawsuit (Article 62, Law No. 15/2012/QH13 on handling of administrative violation).
(iv) Raid: a raid on the alleged infringer will be launched within 15 days from the date of Inspection Decision (Article 44.2, Law on inspection No. 56/2010/QH12; Article 26.1, Decree No. 81/2011/ND-CP). A Minute of infringement will be made if administrative violation is found during the inspection/raid. Under Minute of infringement, the chief of inspection team may, at his/her own discretion, determine to confiscate the alleged infringing products under a Decision on temporary seizure and, then, make Minute of temporary seizure or to seal the alleged infringing products and requested the alleged infringer to preserve the sealed products, waiting for the decision from the competent person under a Decision on sealing and, then, make Minute of sealing.
(v) Issuance of sanction decision: Enforcement authority will issue a sanction decision on the infringer within 07 days from the date of Infringement Minutes (Article 66, Law No. 15/2012/QH13 on handling of administrative violation). Warning order or monetary fine imposed on the infringer will be indicated in the sanctioning Decision. Kindly note that under a monetary fine under a sanction decision against administrative violation will not exceed VND 500 million (approx. US$ 21,500) for the infringing entity.
Besides, subject to nature and severity of the infringement, some additional sanction forms and remedies may be applied, e.g. confiscation of material evidence and means used in the commission of administrative violations, suspension of the production, trading or provision of infringing products or services, for between 01 and 03 months from the effective date of the sanctioning decision, destruction of the infringing goods, removal of the infringing signs out of the goods, forcible remittance of illicit earnings from the commission of administrative violations or forcible remittance of an amount equal to value of material evidence or means of administrative violation which have been sold, dispersed or destroyed, etc. (Article 3, Decree No. 99/2013/ND-CP).
(vi) Implementation of the sanction decision: Infringer, within 10 days from the date of the sanction Decision, must implement the sanction decision (Article 73, Law No. 15/2012/QH13 on handling of administrative violation.)
Coercive implementation of the sanction decision will be applied if the infringer fails to voluntarily execute the sanction decision (Article 86, Law No. 15/2012/QH13 on handling of administrative violation).
(vi) Appeal against the sanction decision or file an administrative lawsuit: The infringer is entitled to either (i) appeal against the sanction decision (1st time) or (ii) initiate an administrative lawsuit at court (Article 7.1, Law on complaint No. 02/2011/QH13).
In case of appeal against the sanction decision (1st time), if unsatisfactory with the decision on settlement of the first-time appeal, the infringer may either (i) appeal to the upper agency (2nd time) or (ii) initiate an administrative lawsuit at court against the Decision on settlement of the first-time appeal (Article 7.1, Law on complaint No. 02/2011/QH13).
In case of initiating an administrative lawsuit at court (First Instant Court), if unsatisfactory with the First Instant Court’s verdict, the infringer may make appeal under appellate procedures (Article 273.1, Civil Procedure Code 2015).
2. Civil procedure for GI enforcement:
Competent authorities:
For IPR cases, proceedings must be commenced in the court for the province where the defendant resides or works or has its head office or if a dispute is relating to compensation for non-contractual damages, the plaintiff may request the Court of the locality in which his/her residence, work place or head office is located or where the case causing damage occurs to hear the matter (Article 40.1(d), Civil Procedure Code 2015).
Procedure:
Basic procedures in a civil case:
(i) Submission of a statement of claims (a lawsuit petition):
- To commence a civil action, plaintiff shall file a lawsuit petition, together with documentary evidences, to request the competent court to solve the dispute (Article 189, Civil Procedure Code 2015). With regard to IPR infringement cases, the plaintiff shall be requested to submit documentary evidence proving that he/she is a valid IPR holder as well as documentary evidence proving there has been IPR infringement. The submitted evidence must conform to the specific court’s guidance, normally legalized documents are required. (Article 478, Civil Procedure Code 2015).
- The lawsuit petition will then be checked to figure out if the documents/evidence are sufficiently provided and forward the lawsuit petitions to another competent Court for hearing (Article 191.3(c), Civil Procedure Code 2015).
- IPR holders/Plaintiff are entitled to request a competent court in Vietnam to grant a preliminary injunction at the time of (or after) lodging a lawsuit petition with the court when (i) there appears a likelihood of irreparable damages sustained by IPR holders, or (ii) there is a risk that infringing goods or other material evidence pertaining to such alleged infringement is destroyed or cannot be traced if they are not protected in time (Article 206.1, Vietnam IP Law). In such a case, IPR holders/Plaintiff who requests a preliminary injunction must deposit “a sum of money equal to twenty (20) per cent of the value of the goods subject to the application of provisional urgent measures, or at least twenty million (20,000,000) dong (approx. US$ 900) where it is impossible to value such goods” (Article 208.2 of Vietnam IP Law).
- If the lawsuit petition lacks required documents/evidence, the court will require additional document/evidence (Article 27.3, Decree No. 105/2006/ND-CP).
- The court may return the lawsuit petitions to the litigator in certain circumstances (Article 27.4, Decree No. 105/2006/ND-CP and Article 192, Civil Procedure Code 2015). In such case, the litigator are entitled to make a complaint to the Court (Article 192, Civil Procedure Code 2015).
(ii) Advance of Court Fees and Acceptance of the Case:
Within 03 working days upon receipt of a lawsuit petition, the Chief Justices of Courts shall assign one Judge for review. Within 05 working days from the date of being assigned, the Judges shall review the law petition. In case everything is in order, the Judge notifies the litigator to advance the Court fees which must be paid within 7 working days upon receipt of the Court’s notice on payment of Court fee in advance (Article 195.1 and 195.2, Civil Procedure Code 2015).
(iii) Preparation for hearing:
Within 3 days from the acceptance of the case, the Court shall notify the defendant of the plaintiff’s claims (Article 196.1, Civil Procedure Code 2015). In addition, within the next 15 days from receipt of the notice, the defendant must send to the Court his/her response.
During the preparation period for the hearing, the court shall conduct conciliation/mediation meetings between the involved parties with some exceptions (Article 205 and 206, Civil Procedure Code 2015)
As a matter of practice, at least two conciliation/mediation meetings will be held. If the parties reach an agreement during the conciliation/mediation process, then the court will make minutes of successful conciliation and issue a decision of recognition of the parties’ agreement exceptions (Article 212.1, Civil Procedure Code 2015).
Despite the fact that in practice it may take longer, under the laws within 2 months (or 4 months for complicated cases) from the date of the acceptance by the court, one of the following decisions shall be made by the court:
Within the trial preparation time limits (i.e. 04 months from the acceptance of the case), the Judges shall, on a case-by-case basis, issue one of the following decisions (Article 203.3(a, b, c and d), Civil Procedure Code 2015):
a) To recognize the agreement between the involved parties.
b) To suspend settlement of the case.
c) To terminate settlement of the case.
d) To bring the case to hearing.
(v) Court’s Hearing at the First Instance:
Within 01 month from the day on which the decision to bring the case to trial is issued, the Court must open the (first instant) Court session. This time limit might be extended to 2 months in case there is a legitimate reason to do so (Article 203.4, Civil Procedure Code 2015). The first-instant court hearing will involve the following procedures, namely, (i) procedure for commencing a court session (Articles 239-246, Civil Procedure Code 2015), (ii) oral argument in court session (Articles 247-263, Civil Procedure Code 2015) and (iii) deliberation and pronouncement of judgements session (Articles 264-269, Civil Procedure Code 2015), during this procedure, the court’s judge or decision will be issued.
(vi) Court’s Hearing at the Appellate:
In case that a party does not agree with the first instance court’s verdict, the party may make appeal in accordance with the appellate procedures. The appellate court for verdicts of the provincial people’s court in the IPR disputes is the supreme people’s court. The time limit for appeals is 15 days which runs from the date of judgment or, if the appellant was absent from the hearing, from the date the appellant receives a copy of judgment or the date when the judgment was posted (Articles 273.1, Civil Procedure Code 2015).
Appellant must pay the advance of the court’s fee in accordance with notice issued by the first instance court. Within 15 days from the receipt of the advance payment, first instant court shall send the appeal application together with the case’s file to the appellate court. The advance of court fees in the appellate courts are VND300,000 (~US$13) for civil disputes or VND2,000,000 (~US$87) for commercial disputes (Resolution 326/2016/UBTVQH14). Within 2 months from the date of acceptance (Article 286.1, Civil Procedure Code 2015), the appellate court shall make one of the following decisions:
a) To suspend the appellate trial over the case;
b) To terminate the appellate trial over the case;
c) To bring a case to appellate trial.
Within 1 month (or 2 months in case of having reasonable causes) from the date of the decision to bring the case to hearing acceptance (Article 286.2, Civil Procedure Code 2015), the hearing shall be held in accordance with the appellate procedures. The appellate court hearing will involve the following procedures, namely, (i) procedures for opening an appellate court session (Articles 293-300, Civil Procedure Code 2015) and (ii) oral argument in appellate court session (Articles 201-315, Civil Procedure Code 2015),during this procedure, the appellate court judgment will be issued.
(vii) Enforcement of Court’s verdict: Once the court’s verdict comes into effect, the plaintiff (if it is the winner) has the right to request the defendant to comply with the Court’s verdict. If the defendant is unwilling to implement the court’s verdict, the plaintiff is entitled to submit an application to enforcement agency for enforcement of the court’s verdict. The time limit for requesting the competent authority for enforcement is 5 years from the effective date of the court’s verdict (Article 30.1, Law on enforcement of civil judgements). Within 5 days from the date on which the enforcement agency receives the application for enforcement, such agency must make a decision on enforcement of the Court’s verdict. Under the prevailing laws, the plaintiff is liable to enforcement fees.
Review Proceeding: Under the Code, the case shall be settled in 2 levels, first instance and appellate. However, in some special cases, verdicts issued by the above courts may be reviewed under supervisor or rehearing proceedings by the supreme people’s court. Such procedures must be initiated by the authorized persons (Chief People’s Supreme Court and Chief People’s Supreme Procuracy) and conducted on the certain grounds as stipulated in the Code.
3. Criminal procedure for GI enforcement:
Competent authorities:
A provincial People’s Court is entitled to hear criminal cases related to defendants, crime victims or litigants who live abroad or in connection with property involved in other lawsuits occurring on foreign territories (Article 268.2 (b), Criminal Procedure Code 2015). As regards territorial jurisdiction, a Court, whose location is most adjacent to the scene of a crime, shall have jurisdiction over the criminal lawsuit against that crime.
Procedures:
Under the Criminal Procedure Code and the Penal Code, an IP criminal case shall only be instituted at the request of the GI owner as the victim of an IP criminal case.
To handle an infringer for his/her infringement act over GI rights under criminal procedure, the following actions shall be taken:
(i) Institution of a criminal case (Articles 143-162, Criminal Procedure Code 2015):
- The right holder files a petition for handling IPR infringement under criminal proceedings. The petition will then be checked to figure out if the documents/evidence are sufficiently provided. If the Petition lacks required documents/evidence, the enforcement authority will require additional evidence/explanation case (Article 27.3, Decree No. 105/2006/ND-CP). A refusal to settle the case if failure to submit required documents/ evidence (Article 27.4, Decree No. 105/2006/ND-CP)
- Administrative enforcement authorities (e.g. i) Inspectors of Science and Technology; (ii) Inspectors of Culture, Sports and Tourism; (iii) Market Control Agencies; (iv) Economic Police; and (v) Customs authority), if finding that the case contains sign of a criminal, will forward the case to criminal procedure agencies for investigation and initiation of a criminal lawsuit (Article 62, Law No. 15/2012/QH13 on handling of administrative violation).
(ii) Investigation of a criminal case (Articles 163-178, Criminal Procedure Code 2015):
The time limit for a criminal investigation shall not exceed 02 months for misdemeanors, 03 months for felonies and 04 months for horrific and extremely severe felonies (Article 172, Criminal Procedure Code 2015).
(iii) Issuance of a decision by procuracy to prosecute the accused before court by an indictment (Article 179-184, Criminal Procedure Code 2015):
- If a sign of criminal is found, a decision by procuracy to prosecute the accused before court by an indictment will be issued and a criminal case will initiated/prosecuted.
- If there is no sign of a criminal, but a sign of an administrative offence, the proceeding performing agency (under criminal procedures) shall forward the case to and request the competent administrative enforcement authority to impose an administrative penalty on that offence.
- No criminal lawsuit is initiated in some circumstances (Article 157, Criminal Procedure Code 2015) such as (i) criminal acts do not exist, (ii) acts do not constitute crime, (iii) persons committing dangerous acts against the society have not reached the age of criminal responsibility, (iv) persons whose criminal acts have been sentenced or lawsuits have been dismissed validly, (v) the prescriptive period for criminal prosecution passes, (vi) general amnesty has been granted, (vii) the person causing peril against the society is deceased, unless other persons must undergo reopening procedure, (viii) the crime victim or its representative does not petition for charges against offences.
- The investigation will be suspended if the petitioner withdraws his petition for charges and grounds for initiating criminal lawsuit are not established per Article 157, Criminal Procedure Code 2015.
- The case is suspended in the circumstances as provided under Article 247 (Suspension of cases), 248 (Dismissal of cases) and 359 (Annulment of the first-instance court’s judgment and dismissal of the case) Criminal Procedure Code 2015.
(iv) Hearing in a criminal case (at the first instance court) (Articles 268-326, Criminal Procedure Code 2015) and the appellate court (Articles 344-362, Criminal Procedure Code 2015))
(v) Execution of a criminal verdict (Law No. 41/2019/QH14 on enforcement of criminal judges, to be effective on 01 January 2020 in replacement of current Law No. 53/2010/QH12 on enforcement of criminal judges to be expired on 01 January 2020)
4. Border control measure for GI protection:
Border measures are provided for under Vietnamese laws and regulations to enable the IPR holders to effectively enforce and protect their IPRs in Vietnam.
Under the laws of Vietnam, border measures include (1) customs supervision, and (2) temporary suspension of customs procedure.
Competent Authorities:
Customs Supervision Department of the General Department of Vietnam Customs;
Customs Branches.
4.1 Customs supervision
Procedure for customs supervision:
A GI owner is entitled to file with the Customs Control and Supervision Department (“CCSD”) a request for customs supervision measure (“Request for Supervision”) for a 2-year term, which can be renewed for another 2-year term. This measure is implemented at all Vietnamese border gates to detect any alleged counterfeits/infringing goods (“Alleged Infringing Goods”) imported into Vietnam. The IPR holder can then request for a temporary suspension of customs procedure over such Alleged Infringing Goods once they are detected.
(i) Filing: IPR holders (directly or through their authorized representatives) file a Request for Supervision with the CCSD.
(ii) Acceptance/Refusal: The CCSD issues a Notification of Acceptance or Refusal of the request in 20 working days from the date of full receipt of required documents (Article 7.4, Circular No. 13/2015/TT-BTC). In case of acceptance, the following actions will be taken:
- The CCSD updates the database system of IPR protection and send a copy of Notification of Acceptance to the Provincial/Municipal Customs Departments and the Anti-smuggling and Investigation Department (“ASID”) to commence the inspection and supervision.
- The Provincial/Municipal Customs Departments and the ASID, upon receipt of the CCSD’s Notification, proceed with customs supervision.
- Sub-department of Provincial/Municipal Customs Departments, based on the CCSD’s Notification, commence measures of customs supervision and inspection of exported and imported goods which have signs of infringing intellectual property rights.
(iii) Requesting to suspend customs clearance: In case any Alleged Infringing Goods is found during the supervision, the CCSD will notify the IPR holders thereof. The IPR holder can request for a customs suspension over the Alleged Infringing Goods
4.2 Temporary suspension of customs procedure.
Procedure for customs supervision:
In case the Alleged Infringing Goods has been found imported into Vietnam, the GI owner is entitled to file with a Customs Branch a request for temporary suspension of customs procedure over such Alleged Infringing Goods (“Request for Suspension”). The temporary suspension will, once applied, enable the IPR holder to enforce as well as seek for injunctions against the Alleged Infringing Goods.
(i) Filing an Request of Suspension: Upon detecting that Alleged Infringing Goods that has been imported into Vietnam, the GI owner is entitled to file with a Customs Branch a request for temporary suspension of customs procedure over such Alleged Infringing Goods.
(ii) Receiving/Checking: evidence proving the right holder status of the applicant and information about the suspected goods, etc. (Article 9, Circular 13/2015/TT-BTC).
(iii) Paying guarantee amount: The applicant must deposit an amount of money equal to 20% of the value of the shipment or VND 20 million dong (~US$870) (in case the value of the shipment cannot be identified) or a document of guarantee from a bank/credit institution (Article 217, Vietnam IP Law)
(iv) Issuing a Decision on temporary suspension: Within 02 working hours upon receipt of sufficient documents and deposit, a Decision on temporary suspension must be issued (Article 10.1, Circular 13/2015/TT-BTC). Time limit of suspension: 10 working days from the date of issuance of the Decision for Suspension, which can be extended once for another 10 working days upon request by the IPR holder, provided that an additional deposit is paid (Article 10.2, Circular 13/2015/TT-BTC).
- If the requester of suspension of customs clearance fails to meet requirements set out in point (ii) and (iii) above, the customs authority will issue a Notice of refusal of the request for customs suspension.
- Upon discovering the alleged infringing goods, the customs authority will issue a decision on suspension of customs clearance (either at the request of the IPR holder or to exercise the power to impose administrative sanctions) (Article 36, 37, Decree No. 105/2006/ND-CP).
- While suspension of customs clearance is on progress, the customs authority will take the following actions: (i) Request goods owners, IPR holder to provide documents related to the goods (catalog, assessment conclusions, etc.), (ii) Solicit assessment to identify signs of infringement of intellectual property, (iii) Request the organizations and individuals to take samples for assessment, etc. to determine whether there is IPR infringement or not.
(v) If infringement is found, the customs authority shall issue a decision on official receipt of the IP infringement case for their settlement under administrative procedure if the infringement is confirmed and the case is under Customs Branch’s competence (Article 10.4 (a), Circular 13/2015/TT-BTC)
(vi) If no infringement is found, the customs authority issues a decision on continuing the customs procedure for the Alleged Infringing Goods (Article 10.4 (b), Circular 13/2015/TT-BTC).
(vii) Other actions that the Customs Office may take (Article 10.4 (c, d, e, f), Circular 13/2015/TT-BTC):e.g. to implement the court’s order if the IPR holder initiates a civil proceedings; to transfer the case to a relevant enforcement authority if the case is beyond the competence of the customs offices; to temporarily suspend the handling of the alleged infringement in case of receiving from other state authorities notifications on disputes over the IPR ownership, or scope of protection, etc.; to transfer the case to a relevant authority for criminal proceedings in case indication of a criminal offence is found.
NOTE:
Obtaining expertise opinion/assessment conclusion on IPR infringement from Vietnam Intellectual Property Research Institute (“VIPRI”) in support of handling an alleged infringement case in Vietnam
It is noted that in Vietnam, expert assessments are normally considered to be an important basic for enforcement bodies to take appropriate measures. For the first time, the IP Law 50/2005 allows competent organizations or individuals to use their professional knowledge and expertise in particular arts to provide expert assessments and conclusions on matters related to IPR infringement.
VIPRI is an institute under Ministry of Science and Technology accredited for delivering expert opinions relating to IP infringement cases. VIPRI is currently the only authorized organization in Vietnam who is qualified to provide expert opinions or assessments on IPR infringements in accordance with the IP Law. We note, however, that in some cases, besides the VIPRI’s assessment conclusion, the enforcement authorities in Vietnam may also additionally seek expert opinions from the NOIP for handling an IPR infringement case.
Presently, VIPRI provides expert opinions or assessments regarding alleged infringements over trademark, geographical indication, industrial design and patent. It does not provide expert opinions or assessments in the field of trade name, domain name, unfair competition or copyright related matters.
VIPRI’s assessment conclusions generally constitute a solid support in IPR infringement cases, likely to convince alleged infringers to comply with the IPR holders’ demands or competent agencies to confirm a violation.
Although the Vietnamese enforcement bodies may determine to take actions against a possible IPR infringement at their own discretion, practice indicates that they often rely on the VIPRI’s Assessment Conclusion to initiate enforcement actions. In this regard, it is recommended that VIPRI’s assessment conclusion should be obtained before submitting a case to Vietnamese enforcement bodies for enforcement actions.
Filing a request for VIPRI’s assessment conclusion:
Require documents:
- A Power of Attorney (PoA) in favour of our firm. The PoA should be signed by the IPR owner only. No notarization for the PoA is required;
- A copy of protection title;
- Documents, evidence of infringement for VIPRI’s assessment
Involved costs:
Official fees + Our fee will be provided to you upon being requested.
Time frame:
We note that it takes about 1-2 months for obtaining the VIPRI’s Assessment Conclusion in normal cases. Upon acceptance of the VIPRI, it is possible to speed up the assessment process to get the assessment conclusion earlier, e.g. within about 12-15 working days or even less, subject to an extra cost.
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