Border control measures against IPR infringement in Vietnam, what’s new under Circular No.13/2020/TT-BTC (2020)?
Customs have a very significant role to play in enforcing intellectual property rights at the border. Once the goods are sold abroad, they must go through the customs to leave one country for another. Thus, border controal measures serve as a useful tool in tackling the trade of counterfeit or infringing products in the world, including Vietnam.
Border control measures can be interpreted as those acts taken by the local customs authorities with regard to goods under their jurisdiction, in particular, though not exclusively, at the exit and entry of products into the internal (national or economically integrated) market. In this regard, it has to be acknowledged that the final destination of goods passing through customs may not always be the national-internal market. Various activities are pertaining to customs procedures such as importation, exportation, re-exportation, placement under a suspensive procedure or mere control. In any case, border control measures are an efficient way of preventing acts of infringement, as it is always easier to avoid the delivery of to prevent distribution of counterfeit or infringing products at the border rather than after they have already been brought into or out of the country and put into circulation. Thus, IPR holders who are doing businesses in Vietnam should be more more aware of the role of customs recordal in Vietnam and how it can be an effective authority in helping protecting IPR and fighting against infringements.
What should be noted about recent amendment of customs control measures in Vietnam?
On 6 March 2020, the Ministry of Finance (“MIF”) of Vietnam issued Circular No.13/2020/TT-BTC on amendment to Circular No.13/2015/TT-BTC on the inspection, supervision and temporary suspension of customs procedures of imports and exports that are subject matters of intellectual property rights (“IPR“), control of counterfeits and goods infringing IPR. The aforesaid Circulars are hereinafter referred to as “Circular 13“. Circular 13 will take effect on 20 April 2020.
KENFOX would like to provide the following major changes introduced in Circular 13 below.
(i) E-Customs recordal system in Vietnam:
Per Article 6, requests for customs recordal as well as all required documents can be electronically filed with (Customs Control and Supervision Department (“the CCSD”)) under General Department of Vietnam Customs. In case the e-customs recordal system is not yet available or there is any error, the requests or supplemental documents could still be physically submitted to the Customs.
(ii) Submission of supplemental documents in case of deficiencies:
As provided under Article 7, Circular 13, upon receipt of request for customs recordal in Vietnam, within five (05) working days, where a dificiency is found, Customs shall issue a Notice thereon. Accordingly, the applicant has ten (10) working days from the issuing date of the Customs’ notice to submit supplemental documents. Any submission beyond the 10-day deadline will result in reject of the customs recordal request.
(iii) Deadline for renewal of a customs recordal:
Under Article 8.1, Circular 13, requests for renewal of a customs recordal must be submitted to the Customs at least 20 days prior to the expiry date as specified in the notification of acceptance of such customs recordal. No grace period is granted to the IPR holders for late submission.
(iv) The Customs’ right in cancellation of the validity of the customs recordal:
Per Article 8.2, Circular 13, validity of the customs recordal in Vietnam shall be cancelled in the 3 following cases, i.e., (a) The applicant fails to submit a renewal request before the expiry of the effective period as specified in the Notice of Acceptance issued by the Customs; (b) The applicant submits an official letter on terminating the customs recordal; and (c) the IP Office of Vietnam (“IP Vietnam”) sends a Notice on cancellation/invalidation of the IPR protection certificates based on which the customs recordal is made.
In cases (b) and (c) above, the CCSD shall send a written notification to the provincial Customs Department, Smuggling Investigation and Prevention Department and applicant within 5 working days from the date on which the applicant’s official letter or IP Vietnam’s notification is received.
(v) Customs Recordal is a pre-condition for requesting suspension of customs procedures
Per Article 9, Circular 13, in case the IPR holders’ requests for customs recordal, despited having been filed, has not been officially accepted, they arestill entitled to submit a request for a suspension of customs procedures for shipment, provided that the following documents must be submitted to the Customs: (a) copies of the requests and the supporting documents as filed; (b) a request for suspension of customs procedures under form No. 02-DTD/SHTT/2020; (c) proof of payment for the regulated deposit or bank guarantee documents; and (iv) proof of payment for the customs fee.
(vi) Suspension of customs procedures:
Under the old regulations, the timing for obtaining assessment conclusion of infringement or expert opinion from relevant state agencies will not be calculated in the deadline for suspension of the customs procedures. However, per Article 10, Circular 13, the time limit for suspension of the customs procedures is fixed at 10 days and extendible for a maximum of another a 10-day period for justified reasons.
(vii) More specific details on the content for inspection of exports and imports that are subject to requests for IPR protection, including an inspection of customs dossier and a physical inspection of goods:
Inspection of customs dossier by the Customs officier will include the following activities:
- Inspecting/Checking information about goods (the custom declarant is required to sufficiently and accurately declare name, brand, description, specifications, composition, model, sign/notation, features and uses of goods);
- Inspecting and comparing information on the customs declaration with those on documents in the customs dossier (in terms of name, brand, origin, value, description, specifications, composition, model, sign/notation, features and uses of goods and goods transport route in order to determine their conformity);
- Inspecting and comparing information about name of the importer/exporter, name and brand of goods with information provided by the General Department of Vietnam Customs and information collected by the customs authority to determine whether the goods are suspected of infringing IPRs or counterfeit (if any).
A physical inspection of goods by the Customs officier will include the following activities:
- Inspecting and comparing goods name and brand written on packages or goods with those written by the customs declarant on the customs declaration, documents in the customs dossier and warning information upon inspection of customs dossier (if any) so as to determine their conformity;
- Inspecting and comparing goods with those specified in the customs recordal that has been accepted by the CCSD (photos, description and characteristics intended for identifying genuine goods) to determine whether goods are counterfeit or inspected of infringing IPRs.
- If the grounds for determining goods are suspected of being counterfeit or infringing IPRs are not sufficient, it is required to carry out verification and investigation; the customs official shall request the head of the sub-department to transfer the case to the customs smuggling control force affiliated to the Smuggling Investigation and Prevention Department or transfer it to the Smuggling Investigation and Prevention Department (if the case is complicated) to carry out verification and investigation and carry on customs procedures.
In a nutshell, Circular 13 has provided more detailed guidance for the Customs which will facilitate the detection, interception and seizure of counterfeit and infringing goods at the border. For any question, please contact KENFOX at firstname.lastname@example.org or email@example.com.