Dealing with infringement of intellectual property rights in Vietnam
Under Vietnam IP Lawrelation to dealing with infringement of intellectual property rights, the owner of registered mark have rights to perform some measures as following:
• Warning action: to inform the infringer or fake product manufacturer of their rights and require the stop of infringement act; and/or
• Watching border procedures; and/or
• Administration action: to request the competent government authorities to take administrative measures for dealing with act of infringement or act of manufacturing fake goods; or
• Trial: To take action before the court in accordance with the civil proceedings in respects of trademark infringement case and fake products case.
1. Warning action
The owner could send directly a Cease-and-Desist or warning letter to Infringer in order to persuade the Infringer to give written undertaking as to stop manufacturing, selling of the infringing goods and/or fake products.
2. Watching border procedures
According to the current law in Vietnam, procedures for border control are divided into 02 procedures include Registration procedures for watching at border gates and Procedures for temporary suspension of customs clearance.They are indicated as below:
a) Registration procedures for watching at border gates
The application for border gate watching should be filed to the General Department of Vietnam Customs. The General Department of Vietnam Customs will convey watching contents to provincial Customs Department and then to local Customs Divisions at the border gates to implement measures for watching.
During the period of watching, if any imported product is suspected to be fake products, Customs officers will inform us to proceed with procedure for temporary suspension of customs clearance.
b) Procedures for temporary suspension of customs clearance
In case, the suspected consignment of products is found, Customs officers will temporarily suspend the procedures for customs clearance and request us to leave an amount of money as a deposit for damage compensation, if any (The deposit is equal to twenty percent (20%) of the value of the suspected consignment of products as stated in the contract or a minimum of 20 millions VND, equal to 1000 USD if the value of the suspected consignment of products is unknown).
Then concerning parties are invited to check, inspect and get information on the suspected consignment of products. Appraisal would be applied if needed. If the suspected consignment of products is identified to be fake products, the remedies will be imposed.
3. Administration action:
a) The Competent authorities are:
– The IP Inspectorates including IP Inspectorates within Ministry of Science and Technology and IP Inspectorates at province level;
– Market Management Office including Market Management within Ministry of Trade and Industrial and Market Management at province level;
– Economic Police including Economic Police within Ministry of Public Security and Economic Police at province level;
– Customs authorities (border control measures related imports and exports) including Customs within Ministry of Finance and Customs at province level.
Complaints are filed with the authority at the National level or the Bureau at provincial level where the infringement has occurred or at the trademark owner’s choice.
b) Remedies:
Organizations and individuals that have committed acts of infringement shall be compelled to terminate the infringement and subject to one of the following main remedies:
i) Warning;
ii) Monetary fine. The monetary fine rates shall be at least equal to the value of the discovered infringing goods but must not exceed 500 million VND.
Depending on nature and level of the infringement, the Infringer is liable to the following complementary remedies:
iii) Confiscation of counterfeit goods, materials, raw materials and implements mainly used for manufacturing or trading such counterfeit goods;
iv) Suspension of relevant business activities for a definite term;
v) Compelling destruction, distribution or use of the intellectual property counterfeit goods for non-commercial purposes and materials, raw materials and implements mainly used for manufacturing or trading such intellectual property counterfeit goods provided that such distribution and use does not affect the exploitation of rights by intellectual property right holder;
vi) Compelling delivery of the transiting goods out of the territory of Vietnam or re-export of the intellectual property counterfeit goods, implements and materials that are imported mainly for manufacturing or trading such intellectual property counterfeit goods, after having removed infringing elements.
4. Trial
The owner can take action before the court in accordance with the civil proceedings in respects of trademark infringement case and fake products case or take action before the court in accordance with the criminal proceedings in respects of fake products case.
The court shall take the following civil remedies to handle organizations and individuals that have committed acts of infringement of intellectual property rights:
- Compelling termination of the infringement of intellectual property rights
- Compelling public rectification and apology
- Compelling the performance of civil obligations
- Compelling compensation for damages
- Compelling destruction, distribution or use for non-commercial purpose in respect of goods, materials and implements the predominant use of which has been in the creation or trading of intellectual property right infringing goods, provided that such distribution and use does not affect the exploitation of rights by the intellectual property rights holder.
In practices, it takes about 06 months to 01 year for a case to come to trial.
Protecting intellectual property rights is the way to protect and develop human creativity and justice. The Owner can through lawyer for advice and implement the legal procedures.
In case you require more information or require advice on litigation and enforcement of IPRs as well as other IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: info@havip.com.vn
