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Court’s jurisdiction and litigant’s burden in IP right disputes

 1. Jurisdiction to resolve intellectual property disputes in Court

Vietnamese laws provide for the jurisdiction of the People’s Court in resolving intellectual property disputes, including: copyright, related rights and industrial property rights, and technology transfer between individuals, organizations. The settlement of this type of dispute is based on the principles, orders and procedures prescribed in the Civil Procedure Code.

According to the provisions of Clause 4 Article 26 and Clause 2 Article 30 of the Code Civil Procedure 2015, the Court’s competence to resolve intellectual property disputes under civil procedures is determined as follows:

a) If an intellectual property dispute is purely a civil dispute, the dispute shall fall under the jurisdiction of the District Court;

b) If an intellectual property dispute is purely a civil dispute but there exists an involved litigant or an intellectual property object in foreign countries, the dispute shall fall under the jurisdiction of the Provincial Court;

c) If an intellectual property dispute exists between an individual or an organization and is for profit purposes, it shall be regarded as a commercial or business dispute and fall under the jurisdiction of the Provincial Court.

2. Litigant’s rights and burden of proof

The rights and burden of proof of litigants in civil cases on intellectual property rights are specified in Section III.B of Joint Circular No. 2/2008/TTLT-TANDTC-VKSNDTC-BVHTT & DL-BKH & CN-BTP.

First, as discussed above, civil disputes over intellectual property rights are one of the types of civil disputes under the jurisdiction of the People’s Courts in accordance with the Civil Procedure Code. Consequently, plaintiffs and defendants have the rights and obligations to prove under Article 91 of the Civil Procedure Code and the provisions of Article 203 of the Intellectual Property Law.

Due to the particular nature of intellectual property rights, depending on each type of disputes and specific requirements, plaintiffs shall exercise the rights and obligations to prove as follows:

a) The plaintiff proves that he/she is the owner of intellectual property rights by one of the pieces of evidence specified in Clause 2, Article 203 of the Intellectual Property Law and Article 24 of Decree No. 105/2006/ND- CP dated 22 September 2006 detailing and guiding the implementation of a number of articles of the Intellectual Property Law on protection of intellectual property rights and on state management of intellectual property.

b) In case a dispute arises from any infringement of intellectual property rights, in order to prove that his/her intellectual property rights are infringed, the plaintiff must provide evidence of the infringement of intellectual property rights or unfair competition acts as prescribed in Clause 3, Article 203 of the Intellectual Property Law and Article 25 of said Decree No. 105/2006/ND-CP.

c) When considering whether or not an infringement of intellectual property rights is claimed by the plaintiff in the lawsuit petition, the Court shall base itself on Articles 28, 35, 126, 127, 129 and 130 of the Intellectual Property Law providing for acts of infringement upon copyright, related rights and industrial property rights. Simultaneously, the provisions of Chapter II, from Article 5 to Article 15 of said Decree No. 105/2006/ND-CP, must be applied to identify elements infringing intellectual property rights. Due to the characteristics of intellectual property rights, in some cases, individuals and organizations using intellectual property objects shall not be considered to infringe intellectual property rights. Therefore, depending on specific intellectual property objects, the Court shall apply the provisions of Articles 25, 26, 32 and 33, Clauses 2 and 3, Article 125, 133 and 134 of the Intellectual Property Law to determine whether or not there exists an infringement.

Under Clause 4, Article 203 of the Intellectual Property Law, as for a lawsuit on infringement of rights to inventions related to a manufacturing process, the burden of proof is on the defendant. The defendant must prove that his/her product is manufactured according to a process different from the protected process in the cases specified at Points a and b, Clause 4, Article 203 of the Intellectual Property Law. The Court shall request the defendant to present evidence proving that he/she does not infringe the plaintiff’s intellectual property rights in and to the invention.

Second, the plaintiff is entitled to request the Court to issue a decision compelling the evidence controlling party to present such evidence as prescribed in Clause 5, Article 203 of the Intellectual Property Law and Article 94 of the Civil Procedure Code and Article 12 of Resolution No. 4/2012/NQ-HDTP guiding the implementation of a number of provisions of the Civil Procedure Code regarding “Proof and evidence” issued by the Council of Judges – the Supreme People’s Court.

Third, the plaintiff must prove the damage which has occurred to him/her, present evidence proving the actual damage incurred (the types of damage, losses in each of such types of damage, etc.) and specify the bases for determining the level of compensation in accordance with Article 205 of the Intellectual Property Law.

Readmore: Civil procedure for IPR enforcement in Vietnam