Questions on border control measures in Vietnam
1. Whether it exists the customs filing for trademarks in Vietnam. If exists, please kindly send us the basic introduction of the customs system.
Our advice: Yes, it does. Statutorily, in Vietnam, IPR holders are entitled to take border control measures which include (i) Customs supervision and (ii) Temporary suspension of customs procedure to protect their IPRs. Border control measure appears to be effective to stop and prevent infringing and counterfeit products from penetrating into the internal market.
1.1. Customs supervision: An IPR holder is entitled to file with the Customs Supervision Department (“CSD”) a request for customs supervision measure (“Request for Supervision”) for a 2-year term, which can be renewed for another 2-year term. This measure is implemented at all Vietnamese border gates to detect any alleged counterfeits/infringing goods (“Alleged Infringing Goods”) imported into Vietnam. The IPR holder can then request for a temporary suspension of customs procedure over such Alleged Infringing Goods once they are detected.
Main procedures for customs supervision process are summarized as follows:
(i) Filing: IPR holders (directly or through their authorized representatives) file a Request for Supervision with the CSD.
(ii) Acceptance/Refusal: The CSD issues a Notification of Acceptance or Refusal of the request in 20 working days from the date of full receipt of required documents (Article 7.4, Circular No. 13/2015/TT-BTC). In case of acceptance, the following actions will be taken:
– The CSD updates the database system of IPR protection and send a copy of Notification of Acceptance to the Provincial/Municipal Customs Departments and the Anti-smuggling and Investigation Department (“ASID”) to commence the inspection and supervision.
– The Provincial/Municipal Customs Departments and the ASID, upon receipt of the CSD’s Notification, proceed with customs supervision.
– Sub-department of Provincial/Municipal Customs Departments, based on the CSD’s Notification, commence measures of customs supervision and inspection of exported and imported goods which have signs of infringing intellectual property rights.
(iii) Requesting to suspend customs clearance: In case any Alleged Infringing Goods is found during the supervision, the CSD will notify the IPR holders thereof. The IPR holder can request for a customs suspension over the Alleged Infringing Goods
1.2. Temporary suspension of customs procedure: In case the Alleged Infringing Goods has been found imported into Vietnam, the IPR holder is entitled to file with a Customs Branch a request for temporary suspension of customs procedure over such Alleged Infringing Goods (“Request for Suspension”). The temporary suspension will, once applied, enable the IPR holder to enforce as well as seek for injunctions against the Alleged Infringing Goods.
Main procedures for temporary suspension of customs procedure are summarized as follows:
(i) Filing an Request of Suspension: Upon detecting that Alleged Infringing Goods that has been imported into Vietnam, the GI owner is entitled to file with a Customs Branch a request for temporary suspension of customs procedure over such Alleged Infringing Goods.
(ii) Receiving/Checking: evidence proving the right holder status of the applicant and information about the suspected goods, etc. (Article 9, Circular 13/2015/TT-BTC).
(iii) Paying guarantee amount: The applicant must deposit an amount of money equal to 20% of the value of the shipment or VND 20 million dong (~US$870) (in case the value of the shipment cannot be identified) or a document of guarantee from a bank/credit institution (Article 217, Vietnam IP Law).
(iv) Issuing a Decision on temporary suspension: Within 02 working hours upon receipt of sufficient documents and deposit, a Decision on temporary suspension must be issued (Article 10.1, Circular 13/2015/TT-BTC).
Time limit of suspension: 10 working days from the date of issuance of the Decision for Suspension, which can be extended once for another 10 working days upon request by the IPR holder, provided that an additional deposit is paid (Article 10.2, Circular 13/2015/TT-BTC).
– If the requester of suspension of customs clearance fails to meet requirements set out in point (ii) and (iii) above, the customs authority will issue a Notice of refusal of the request for customs suspension.
– Upon discovering the alleged infringing goods, the customs authority will issue a decision on suspension of customs clearance (either at the request of the IPR holder or to exercise the power to impose administrative sanctions) (Article 36, 37, Decree No. 105/2006/ND-CP).
– While suspension of customs clearance is on progress, the customs authority will take the following actions: (i) Request goods owners, IPR holder to provide documents related to the goods (catalog, assessment conclusions, etc.), (ii) Solicit assessment to identify signs of infringement of intellectual property, (iii) Request the organizations and individuals to take samples for assessment, etc. to determine whether there is IPR infringement or not.
(v) If infringement is found, the customs authority shall issue a decision on official receipt of the IP infringement case for their settlement under administrative procedure if the infringement is confirmed and the case is under Customs Branch’s competence (Article 10.4 (a), Circular 13/2015/TT-BTC).
(vi) If no infringement is found, the customs authority issues a decision on continuing the customs procedure for the Alleged Infringing Goods (Article 10.4 (b), Circular 13/2015/TT-BTC).
(vii) Other actions that the Customs Office may take (Article 10.4 (c, d, e, f), Circular 13/2015/TT-BTC):
– to implement the court’s order if the IPR holder initiates a civil proceedings;
– to transfer the case to a relevant enforcement authority if the case is beyond the competence of the customs offices;
– to temporarily suspend the handling of the alleged infringement in case of receiving from other state authorities notifications on disputes over the IPR ownership, or scope of protection, etc.;
– to transfer the case to a relevant authority for criminal proceedings in case indication of a criminal offence is found.
2. The specific requirements (application materials) for filing the customs.
Our advice: The documents/information needed for a customs application include:
– An application (to be prepared by us);
– A notarized & legalized Power of Attorney by the trademark holder;
– A certified/notarized copy of the trademark registration certificate (we can assist the client to obtain the certified copy/copies from the NOIP);
– Pictures of authentic products (if any);
– Pictures of counterfeit products (if any);
– A comparison chart between the authentic and counterfeit products (if any);
– A list of authorized importers/exporters;
– An assessment on the IPR infringement issued by the IPR assessment state body of Vietnam (if any); and
-Information on possible time and destination of the shipment of the counterfeit products (if known).
3. The fees for filing the customs, including official fees and your service expenses.
Our advice: No official fees for filing the customs are payable. We will provide you with our professional fees for making necessary preparations and filing a customs recordal request with the CSD upon being requested.
4. The time required for filing the customs.
Our advice: It may take us 2-3 working days to make necessary preparations and file a request for customs supervision with the CSD. The CSD issues a Notification of Acceptance or Refusal of the request in 20 working days from the date of full receipt of required documents. The Customs recordal will be completed if sufficient documents are supplemented (if required) to the CSD.
5. The protection period of the customs filing for a trademark.
Our advice: The customs supervision is effective within 2 (two) years from the date of acceptance by the CSD.