Expertise opinions/IP assessment in IPR enforcement proceedings in Vietnam and several notable obstacles

1. Expertise opinions/IP assessment in IPR enforcement in Vietnam

In recent years, despite improvements in IPR enforcement with joint efforts made by multiple Vietnamese government authorities, generally, the IPR infringement has still been omimous and prevalentl in various areas of Vietnam, with an increase in the number of infringement products and a high level of seriousness. The most common modes of IPR infringement, in trademark rights for instance, include:

Use of a sign confusingly similar to a registered trademark;
Use of a packaging design similar to a prior used (but not registered as any IP subject matters) packaging design of the others
Use of registered trademarks of others as their tradenames;
Registration or retention of the right to use the domain names identical with, or confusingly similar to protected trademarks of others.

Currently, upon detection of IPR infringements, before taking enforcement actions, Vietnamese enforcement authorities (e.g. Market Management Force, Police, etc.) normally solicit expert opinions/expert witness from Vietnam Intellectual Property Research Institute (“VIPRI”), an institute under Ministry of Science and Technology accredited for delivering expert opinions relating to IP infringement cases concerning industrial property subject matters, based on which to determine whether an IPR infringement has been committed. This fact has, one one hand, reflected the complexity of IPR infringment and, on the other hand, required a high level of expertise in determining whether an IPR infringement has constituted or not. On the part of IP rights holders, given that it is quite challenging to determine/assess themselves whether IP rights are infringed, especially in circumstances where a sign used by a third party is not identical, but merely similar to their registered trademark, before filing a petition for handling of IPR infringement, most of the IP rights holders often actively file with the VIPRI a request for assessment on likelihood of infringement and subsequently use the VIPRI’s assessment conclusion as legal ground to prove a finding of infringement, and convince Vietnamese enforcement authorities to handle the act of infringements in their favor.

Practices indicates that a clear assessment conclusion/expert opinion is critical in enforcing IP rights in Vietnam. This assessment conclusion/expert opinion not only aids Vietnamese enforcement agencies to impose appropriate sanctions but also convince the alleged infringers that a violation is likely to occur. In many cases, in order for a case to be resolved objectively and fairly, Vietnamese enforcement agencies often solicit and seek industrial property assessment, while other individuals and organizations also file requests for assessment conclusions to ensure their legal rights. Therefore, obtaining assessment/expert opinion has become an indispensable need for IPR enforcement in Vietnam.

Intellectual property assessment in general and industrial property assessment in particular are also considered to be part of judicial expertise, which is defined in the Law on Judicial Expertise effective as of 01 January 2013.

2. Obstacles in obtaining expertise opinions/IP assessment for IPR enforcement in Vietnam

2.1. Facts

As provided in 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 assessment of and conclusion on matters related to IPR infringement cases”.

On 24 May 2007, Minister of Science and Technology released Decision No. 846/QD-BKHCN establishing the Vietnamese Intellectual Property Research Institute as the first IP assessment organization of Vietnam. This can also be considered as the first public judicial assessment organization providing IP assessment services in Vietnam. No other IP assessment organization has been established since 2007, resulting in the current IP assessment situation as follows:

(i) As mentioned above, IP assessments can be regarded to constitute internal properties of the judicial expertise; however, unfortunately, IP assessment is not mentioned in the Law on Judicial Expertise, specifically, Clause 1, Article 14, Law on Judicial Expertise only stipulates that “Judicial expertise offices are non-public judicial expertise institutions established in the areas of finance, banking, construction, antiques, relics and copyright “

(ii) It has not been explicitly provided whether persons working in the IP sector granted a “judicial expert” license, are entitled to conduct the IP assessment. In reality, recently, a Court in Ho Chi Minh City has solicited IP assessment from a judicial expert.

(iii) Currently, only the VIPRI has the function of conducting assessment in the field of industrial property rights in Vietnam

Basically, industrial property assessment activities have focused on the following two main objectives in recent years.

Fight against IPR infringements; and
Avoidance of IPR infringements.

Albeit non-mandatory, the assessment conclusion serves as one of the important sources of evidence for Vietnamese competent agencies to settle IPR infringement related cases. Silmultaneously, the assessment conclusion is viewed as clear and solid ground for businesses to determinde whether to proceed or terminate their request for handling of an alleged IPR infringements. In addition, the assessment conclusion can help businesses to avoid either rendering inappropriate requests or committing the acts of infringement upon the IP rights of other individuals or organizations. Nevertheless, there remain several notable obstacles related to IP assessment as stated below.

2.2. Notable obstacles:

Apart from the positive aspects of IP assessment activities, several notable obstacles remain, and thus, should be overcome to improve IP assessment activities in the coming time as follows:

(i) A lack of IP assessors to meet the social needs:

To date, only 4 assessors (namely, Mr. Pham Dinh Chuong, Mr. Vu Khac Trai, Mr. Tran Viet Hung and Mr. Pham Phi Anh) have been issued IP assessor licenses/permits. The number of IP assessors has not increased since 2009. Meanwhile, in recent years, IPR infringements in Vietnam have continued to increase, occurring in different regions, seeing a large number of infringing products and a high decree of seriousness. The infringement consists of various forms as follows:

Use of a technical solution highly equivalent to the one that has been protected as an invention / utility solution;
Use of a sign confusingly similar to a registered trademark;
Use of a packaging design similar to the one which was prior used (but not registered yet) by other individual/organization.
Use of the registered trademark of others as a tradename;
Registrationor retention of the right to use the domain names identical with, or confusinglysimilar to protected trademarks of others.

A lack of IP assessors makes it challenging for the assessment activities to be widely introduced and expanded to the rights holders to support their IPR infringement claims. This deficiency also contributes to the likelihood of delayed/inadequate responses to the assessment time required by the right holders to obtain the assessment/expert opinion. The standard assessment time is 30 days, so the infringing products may be dispersed/sold out before the assessment conclusions are issued.

(ii) Intellectual property assessment documents issued by the VIPRI have not been standardized, so the assessment documents are sometimes incomplete and vague.

(iii) No assessment service in “trade name” disputes.

Trade names also constitute a form of industrial property in Vietnam, like other IP objects (e.g. Trademarks, Geographical Indications, Inventions, Industrial Designs, etc.). A trade name means a designation of an organization or individual in business activities, capable of distinguishing the business entity bearing it from another entity in the same business domain and area. However, the right establishment mechanism of a trade name is different from Trademarks, Inventions and Industrial Designs. Industrial property rights to a trade name shall be established on the basis of lawful use thereof (Article 6.3(b), Vietnam IP Law).

Although the trade name is also an IP subject matter, trade-name based assessment service has not been available up to date, meanwhile, in fact, trade names are objects that are quite vulnerable to infringement. In particular, it is common that enterprises with the later trade names use a part of the trade names of the previous enterprises in order to create the enterprise/company names and use them in their business activities.

Per Article 129.2, Vietnam IP law, “All acts of using commercial indications identical with, or similar to, others’ trade names having been used earlier for the same or similar type of goods or services, that cause confusion as to business entities, establishments or activities under such trade names shall be regarded as infringements of the rights to trade names.” However, since there has not been any assessment service on the basis of trade name rights, cases related to disputes / infringements of trade names are often protracted, therefore, the owners of trade names hesitate to pursue actions to resolve infringement actions. The enforcement authorities find it embarrassing to identify the acts of infringements. This situation persists, resulting in the fact that very few cases of trade name dispute / infringement being settled so far.

In addition, infringement of the rights to a trade name is also very difficult to handle in case the owner of the trade name had used their trade name in the business activities first, then they discovered that a third party has been granted registration certificate for identical trademark.

(iv) No infringement assessment service in cases of “unfair competition”.

Currently, it can be seen that due to the needs to expand the markets, given that a large amount of designs and types of products are brought to the markets for commercialization of the products, it is is almost impossible for the manufacturers to register packaging designs of the products to protect themselves as industrial property subject matters. On the other hand, even if the manufacturers register the same, it takes quite a long time to obtain the protection titles thereof.

This foregoing situation leads to a fact that some organizations / individuals always keep close watch at reputable companies to design / copy / create goods labels, goods packaging, packaging designs with presentation, lines, colors that are confusingly similar to those of the famous companies for illicit profits.

However, like trade names, no assessment service for unfair competition have been available, whilst, the initiation of administrative proceedings is also complicated because it is required to prove that their commercial indications are widely and continuously used and known to many people, from that we have a basis for determining the right to fight against unfair competition. It is normally difficult to submit the clear evidences, especially in circumstance where their packaging design have been copied and imitiated right after being launched to the market. The IPR holders almost have no choice but to send a Cease and Desist Letter hoping that the infringer will voluntarily stop the infringement.

(v) Inconsistency between assessment conclusions and expert opinions

Although Vietnam has only one official assessment organization, in reality, there exist two assessment mechanisms, namely the assessment conclusion given by the VIPRI and the expert opinion rendered by the Intellectual Property Office of Vietnam (“IP Vietnam”).

In some alleged trademark or industrial design infringement cases, as a matter of practice, apart from filing an assessment request at the VIPRI, the Industrial Property Rights holders tend to seek expert opinions from the IP vietnam. Noticeably, in the same scenario, the VIPRI and the IP Office of Vietnam have had contradictory opinions.

The above contradictory assessment conclusion (from the VIPRI) and expert opinion (from the IP Vietnam) has placed Vietnamese enforcement authorities at the dilemma in circumstances where the alleged infringer provides the assessment conclusion of non-infringement issued by the VIPRI, while the IP right holder provides the expert opinions from the IP Office of Vietnam which confirmed an infringement.

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