Related Questions on IPR Enforcementin Vietnam
Related Questions on IPR Enforcementin Vietnam
I) Chu Thanh Tu, the Deputy Manager of KENFOX’s IP Practice, could you tell us what is a situation of administrative raids?
KENFOX: Currently in Vietnam, administrative sanctions are the most effective means to enforce IPRs in terms of cost-effectiveness and time-efficiency. Most right holders choose to take administrative action, rather than civil action against IPR infringements. Practice shows that administrative action, rather than civil action, carries the possibility of a more prompt and more effective result.Despite the above, we find that administrative raids conducted by the Vietnamese enforcement authorities against IPR infringing goods remain insufficient. This may result from the fact that the enforcement authorities in Vietnam lack the financial resources, manpower, expertise, knowledge and confidence to deal with unusual cases. Thus, the number of administrative raids against IPR infringing goods is still limited.
II) Chu Thanh Tu, the Deputy Manager of KENFOX’s IP Practice, please explain a procedure and a flow of a raid.
KENFOX: The principal procedure and flow of a raid are as follows:
(i) Filing: Right holder/IP agent files a petition for handling IPR infringement with the Vietnamese competent enforcement authority under Article 198 and Article 200 of the IP Law;
(ii) Checking: Enforcement authority checks (i) evidence proving the right holder status, (ii) KF information about the suspected goods or in order to detect IPR infringing goods. If requirements are not met, right holder/IP agent is required to submit additional evidence / explanation within 30 days. If requirements are not met, the enforcement authority will issue a Notification on refusal to handle the case as provided in Article 23, 24 , 25, 27(c) of Decree No. 105/2006/ND-CP.
(iii) Acceptance/Inspection Decision: Within 10 days if all requirements are met, enforcement authority issues a Decision on Inspection. Right holder/IP agent kf may join and witness the infringement handling process if accepted by the enforcement authority.
(iv) Raiding: a raid on the alleged infringer will be launched within 45 days from the date of Inspection Decision in accordance with Article 46.1(b) of the Law on inspection No. 56/2010/QH12. A Minutes of infringement will be made if administrative violation is found during the inspection.
(v) Issuing a Sanctioning Decision: Enforcement authority will issue a Sanctioning Decision on the infringer within 07 days from the date of Infringement Minutes under Article 66 of Law No. 15/2012/QH13 on handling of administrative violation). Caution or monetary fine will be indicated in the Sanctioning Decision imposed on the infringer. Besides, subject to nature and severity of the infringement, some additional sanctioning forms and remedies may be applied, e.g. confiscation of material evidence and means used in the commission of administrative violations, destruction of the infringing goods, removal of the infringing signs out of the goods, etc. in conformity with Article 03 of Decree No. 99/2013/ND-CP.
(vi) Implementation of the Sanctioning Decision: Infringer, within 10 days from the date of the Sanctioning Decision, must implement the Sanctioning Decision as provided in Article 73 of Law No. 15/2012/QH13 on handling of administrative violation.
III) Please explain features of an administrative measure compared with the other measures.
|Features||Administrative measure||Civil measure||Criminal measure|
|Cost||Low cost||High cost of civil proceeding||Borne by the authorities conducting the criminal prosecution|
|Time frame||Less time-consuming (01-03 months)|
|Time-consuming (6 months to several years), with a lot of delaying possibilities||Time-consuming (6 months to several years), with a lot of delaying possibilities|
|Enforcement authorities||More abundant and experienced||Limited knowledge and experience in handling IPR related matters||Limited knowledge and experience in handling IPR related matters|
|Deterrent effect||Deterrent||More deterrent||Most deterrent|
|Preference||More preferred||Less preferred||Less preferred|
During KENFOX coordination with Vietnamese enforcement authorities, we find that Administrative measure is regarded as the most effective way to deal with IPR infringement in Vietnam if the ultimate goal of IPR holders is to stop infringement of their rights. The procedures to request the enforcement bodies to handle the IPR infringement are quite simple. Most of IPR infringement cases in Vietnam are handled under administrative route. Thus, administrative enforcement authorities (e.g. Market Management Bureau, Police, specialized Inspectorates, etc.) have gradually improved their skills and become more experienced in handling IPR infringement. As a result, kf attorneys that administrative action, rather than judicial, carries the possibility of a more prompt and effective result. However, under administrative procedures, the plaintiff shall not be able to claim for damages.
In our opinion, by initiating civil proceedings, an IPR holder can request a competent court in Vietnam to grant civil remedies against organizations and individuals who have committed infringing acts in accordance with Article 202 of the IP Law. As a matter of fact, a lawsuit before the court may be tempting in terms of punitive effects. However, this measure becomes less attractive when one considers the strict procedures, length of time to bring a case to court and costs for the lawsuit. The limited qualification and capacity of the judges in dealing with IPR matters will also discourage IPR holders. There kf has been no specialized IP court in Vietnam up to now. IP remains a relatively new and complicated issue to many judges in Vietnam and the majority of judges currently have a limited knowledge of IP protection and little experience in handling IP related cases. Given the aforesaid facts, the judges may have to consult IP experts (e.g. the National Office of Intellectual Property of Vietnam, Vietnam Intellectual Property Research Institute, Inspectorate of Ministry of Science & Technology) and therefore, the court’s judgment may be heavily influenced by the opinion of the IP experts.
In respect of criminal measure, this is applied to those individual who willfully commit acts of infringement of the copyright, related rights and industrial property rights to the trademarks and geographical indications being protected in Vietnam on the commercial scale. Practice shows that criminal procedure is available in the law, in addition, criminal penalties such as fine or imprisonment are of harshest deterrence, but it has actually not has been effectively implemented against IPR infringement. As a matter of fact, prosecution authorities are somewhat reluctant to apply criminal sanctions unless it is a very strong case involving counterfeit medicine or baby food or dangerous to consumer’s health.
For more information, please refer to our attached Memo on dealing with IPR infringement under civil, administrative and criminal measures.
Conducting trademark investigations and market surveys on trademark to identify if the targeted trademark has been used in Vietnam or not
KENFOX represents clients at every stage of trademark disputes—pre-enforcement analysis, investigation, cease and desist, preliminary injunctions and, conducting coordinated raids with law enforcement bodies (namely, Customs authorities, Market Management Bureau, Police, specialized Inspectorates of Science & Technology or Inspectorate of Culture, Sports and Tourism), mediation, trial and appeal.
While there is no “one size fits all” approach to fight against counterfeit and or IP infringement goods, an effective, cost-efficient and credible internal investigation requires selecting the appropriate investigators, defining a sufficiently narrow investigation scope, preparing an action plan with achievable deadlines, and collaboratively executing the plan. And KENFOX Investigation Team is here to assist you. Our Investigation Team is built on our associates and other outsourcing forces in case required by KF clients. In particulars, there are specialist IP investigators of KENFOX who are able to track infringing and counterfeit product from manufacturing source in Vietnam and based on the investigation’s result of other outsourcing forces, release their conclusions on the possible IPRs infringements and resolution of dispute and enforcement.
The enforcement team of our firm has extensive expertise and experience in fighting against IPR infringement, preventing the counterfeit/infringing goods at the customs and deterring the potential infringers. Our experience extends to all kinds of intellectual property, including patents, designs, trademarks (anti-counterfeiting), copyrights (anti-piracy), domain name, trade names, trade secrets, and unfair competition.
KENFOX IP lawyers rely upon strong trademark policing efforts and the judicious use of protest letters to afford clients ongoing protection against trademark dilution while relieving them from the burden of conducting their own policing investigations. Such efforts frequently enable KENFOX clients to put a halt to third party encroachment before expensive and time-consuming enforcement actions under civil, criminal or administrative route can be taken.
When disputes rise to necessity of taking civil, criminal or administrative actions, KENFOX IP lawyers represent clients before relevant enforcement authorities, such as Market Management Bureau, Police, specialized Inspectorates of Science & Technology or Inspectorate of Culture, Sports and Tourism or Courts. We have extensive experience handling all type of complex IP infringements as our lawyers have successfully coordinated with various enforcement authorities in Vietnam in anti-counterfeit campaigns conducted nationwide.
Apart from handling IPR infringement cases, we also effectively manage smaller proceedings, such as hundreds of opposition and cancellation proceedings before Department of Enforcement and Appeal Settlement, National of Intellectual Property of Vietnam, Ministry of Science & Technology of Vietnam as well as various cases in need of expert witness (or expert opinions) from Vietnam Intellectual Property Research Institute (VIPRI) annually.
Conducting trademark investigations and market surveys on trademark to identify if the targeted trademark has been used in Vietnam or not.
At KENFOX, we have teams of investigators who have been well-trained and has years of experience. Through years of operation, KENFOX has received many requests for trademark investigation and market surveys on trademark due to different purposes such as conducting a trademark search in the Vietnamese market to collect evidences for filing a cancellation or termination action against a trademark registration, for assignment or license purpose, or for entering into a cooperative relation with the trademark proprietor.
Contact us if you wish to obtain your desired result of trademark investigation and market surveys on trademark.
Besides, we are able to conduct in-depth investigation into targets suspected infringing trademarks, copyrights and patents or others engaging in unfair competition. Specifically, we can perform the followings pieces of work:
1) Collecting information on products distributing channels
Information on agents and stores distributing and selling counterfeit goods in Vietnam
Information on sales volume of counterfeits
Information on counterfeit distribution
Information on relationship between distributors and manufacturers
Other information relating to counterfeit goods.
2) Collecting information on manufacturer of the counterfeit
Company name, address of counterfeit producers/distributors
Production scale of counterfeit producers
Production capacity of counterfeit producers
Information on counterfeit output
3) Collecting evidences
Collecting counterfeit samples / Purchasing counterfeit directly from store or from manufacturer / and collecting sales receipt
Collecting Photos, wrapping bags, leaflets
Collecting other evidences
Analyzing resemblance and difference between genuine and counterfeit
Cease & Desist Letters, a way effective or detrimental in anti-counterfeiting campaign?
Cease and Desist Letters are sent to warn alleged infringers of an IPR holder’s potential enforcement of rights if infringing activity is not stopped. While cease and desist letters may lead to enforcement actions, they can also result in cooperative relationships and licensing negotiations or be sent merely as an intimidation tactic. KENFOX has extensive experience in advising clients on whether to send Cease and Desist Letters based on their specific circumstances. We can also help clients evaluate their options in responding to Cease and Desist letters.
KENFOX understands that concerns regarding counterfeiting and piracy have become increasingly acute as markets have globalized and many goods sold in Vietnam are imported. Practically, counterfeit goods with unauthorized use of trademarks are usually sold at below market prices which erodes profits and damages the mark owners’ brand in the marketplace.
More progress in customs recordal has been made in Vietnam recently. More positive amendment has been made to the customs related laws, aiming at encouraging the IPR owners to vigorously fight against counterfeits at the customs. Recording trademarks with Customs Supervision Department, under General Department of Customs of Vietnam is now more straightforward and inexpensive. Thus, it can be a quick and cost-effective method of preventive enforcement of a trade mark owner’s rights However, each trade mark recorded must be constructed carefully to avoid the accidental seizure of the owner’s own goods or the goods of an authorized licensee or distributor
KENFOX IP lawyers have expertise not only securing national and international protection of trademark rights, but also recording registered trademarks with the customs offices in Vietnam. The process of recording a mark with customs to protect against counterfeit must be handled with care and precision. Our trademark attorneys can help you protect your brand identity from counterfeit goods that flow into domestic commerce, safeguard your profits, and preserve your reputation.