Vietnam Law No. 02/2011/QH13 on complaints offers a valuable framework for streamlining the complaint process, allowing the Complaint Settlement Authority to form a separate advisory board to help in the second stage of the resolution of complaints (2nd complaint). In detail, per Article 26.2 of Law on complaints, [for a complicated case, when finding it is neccessary, a second-time complaint settler may set up an advisory council to give advice on the complaint settlement]. In respect of IP related complaints, per Circular No. 16/2016/TT-BKHCN (Point 22.8), depending on the complexity of the case, the Complaint Settlement Authority, can seek the views of independent experts or the Advisory Council.
On 12 February 220, the Intellectual Property Office of Vietnam (“IP Vietnam“) released Decision No. 362/QD-SHTT on promulgating the Regulation on Advisory Activities in Complaint Settlements on Industrial Property Matters (hereinafter referred to as the “Regulation“) to include more information on this matter.
KENFOX would like to provide a summary of the Regulation below.
1. Application scope of the Regulation
The Regulation applies to all relevant units and individuals with the IP Vietnam; An Advisory Council is established by the IP Vietnam’s General Director and independent experts are requested to provide advice on legal and technical issues and solutions in the course of resolving IP claims. Members of the Advisory Council include independent experts or other individuals with appropriate professional qualifications.
Independent experts are those having appropriate professional expertise, selected from the list of IP experts approved by the IP Vietnam’s General Director and from other sources (in case no suitable experts are available in that list).
The IP Vietnam’s General Director shall determine, according to the substance and nature of the IP complaints, to set up an Advisory Council or to consult an independent expert.
2. Advisory contents
The Advisory Council or an independent consultant may advise on legal and technical issues and their approaches to the following:
(i) The right to file applications for registration industrial property rights;
(ii) Registrability of industrial property objects;
(iii) Scope of protection of industrial property rights;
(iv) Ways to figure out bad faith and unfair competition acts related to industrial property rights;
(v) Evaluation of the nature of evidence provided by the complainant and its appropriateness to the arguments;
(vi) Other contents to be decided by the IP Vietnam’s General Director.
3. Organizational Structure of Advisory Council
An Advisory Council shall be formed under a decision of the IP Vietnam’s General Director, and composed of five to seven members, depending on the content and nature of the complaint. An Advisory Council includes a chairman, vice chairman, and other members who are experts. An officer of the IP Vietnam’s Department of Enforcement and Complaint Settlement will serve as the administrative secretary of the Advisory Council.
Members of the Advisory Council shall have the following responsibilities:
- The chairman shall decide the meeting timelines of the Advisory Council; chair and oversee the operations of the Advisory Council; delegate dueties to the members of the Advisory Council; sign the minutes and other relevant documents of the Advisory Council; take overal responsibility for proposing the plans for the complaint settlement; request the IP Vietnam to hold direct discussions with the complainant, the defendant, and the relevant persons; conduct on-site surveys for complaints with complicated specifics and multi-party complaints in accordance with the law, if necessary, etc.
- When the chairman is absent, the vice chairman shall exercise the duties and powers of the chairman and report the results of the meetings to the chairman; assist the chairman in guiding and carrying out the tasks of the Advisory Council during the meetings; track and advise the members of the Advisory Council to carry out their duties per the assignment of the chairman; carry out the tasks and powers of the Advisory Council member; etc.
- The other members shall participate fully in the meetings and activities of the Advisory Council when summoned; shall have the right to present,vdebate and vote on matters within the competence of the Advisory Council; shall have rights to hold their own opinions
In compliance with Vietnam’s laws and practices, independent consultants are obliged to give their views on appeal matters in an honest, subjective, and fair manner.
Complaints in the IP sector are quite common in Vietnam, but such cases can take several years to be resolved, especially when the complaints are complicated, and the number of pendings complaints is rather high at the moment. One explanation for this protracted settlement of IP complaints in Vietnam is the shortage of human resources at the IP Vietnam in charge of settlement of complaints. Whether the issuance of Decision No. 362/QD-SHTT on promulgating the Regulation on Advisory Activities in Complaint Settlements on Industrial Property Matters may serve as an effective way to resolve IP complaints remain questionable. However, the recent issuance of the Regulation has given much hope to the IP practitioners and IP owners that with the IP complaints, especially the complicated one will be resolved effeciently and faster.
For more details on IP related complaints in Vietnam, please contact KENFOX at info@kenfoxlaw.com or kenfox@kenfoxlaw.com.