Date: 8 December 2021
Writer: Tuyen Pham
Nowadays, although the protection of intellectual property rights (“IPR”) in Vietnam has been focused on, there are still many cases where individuals/organizations have “accidentally or intentionally” infringed on others’ IPR. Infringing actions can be listed as follows: using trademarks, trade names, or other identification signs without the permission of the owner. What is the Vietnamese regulation for dealing with the infringement of IPR in Vietnam?
Through this article, BLawyers Vietnam would like to present some solutions to this issue.
I. Requesting organizations/ individuals to terminate the acts of infringement
When identifying the infringing acts and the infringer, the IPR owner can issue a written notice requesting termination of such acts to any organization or individual who commits an act of infringement. Accordingly, the infringer will be requested to terminate such acts, make a public apology or rectification, and compensate for damage. This is considered a self-protection right of IPR owners. Of note, this request must be in writing with proving evidence.
II. Dealing by civil measure
If the application of requesting the infringing organization/ individual to terminate such act has no result, the IPR owners may initiate a lawsuit at the Court. If there is sufficient evidence to prove that the acts of IPR infringement occurred, the Court will apply the following civil measures to handle the organizations and individuals who committed the IPR infringement, including:
- Forcing for a public apology and rectification.
- Forcing for the performance of civil obligations.
- Forcing for the compensation for loss.
- Forcing for destruction, distribution, or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of goods which infringed IPR provided that such destruction, distribution, or use will not affect the exploitation of rights by IPR owners.
III. Dealing by administrative measure
In addition to civil measures, IPR owners have the right to request competent authorities to administrative penalty for the infringement by individuals/ organizations. Administrative sanctions for IPR infringement include a warning and a fine. Depending on the nature and seriousness of the infringement, one or more of the following additional forms may be applied: (i) confiscation of counterfeit goods in terms of intellectual property, raw materials, materials, and means primarily used for the production and trading of counterfeit goods on intellectual property; and/or (ii) suspension of doing business in the field in which the infringement occurred for a definite period.
Dealing with IPR infringement by administrative measures including the following steps:
- Step 1: IPR owner prepares and submits a request letter for handling infringement to the competent authority.
- Step 2: Competent authority accepts the request letter.
- Step 3: Competent authority requests related parties for explaining the request.
- Step 4: Competent authority conducts handling procedures or refuses to handle infringement.
- Step 5: Competent authority makes records of infringement and issues a decision imposing an administrative penalty.
IV. Dealing by criminal measure
Any individual who commits an act of infringement of IPRs involving a criminal element shall be criminally prosecuted in accordance with the criminal law.
The procedure for settling the criminal case is carried out according to the following steps:
(i) Step 1: Criminal case initiation
After receiving denunciations and reports of crimes, the investigating authority will verify them and decide to initiate criminal proceedings.
(ii) Step 2: Investigation
From the time that the case is prosecuted, the investigating authority will conduct the investigation work within the prescribed time limit. The time limit for investigating criminal cases shall not exceed 02 months for less serious crimes, 03 months for serious crimes, and 04 months for profoundly serious crimes and particularly serious crimes.
(iii) Step 3: Prosecution
When closing the investigation, the investigating authority shall issue decisions to prosecute. Within 05 days upon receiving a decision to prosecute and case files, the Procuracy shall make one of the following decisions: (1) Prosecuting the suspect before a Court via the decision to prosecute; (2) Deciding not to prosecute the suspect and dismiss the case; (3) Returning documents for further investigation; (4) Suspending the case; or (5) Dismissing the case.
(iv) Step 4: Trial
Within 30 days for less serious crimes, 45 days for serious crimes, 02 months for profoundly serious crimes, and 03 months for particularly serious crimes upon the admission of the case, the presiding judge, shall make one of the following decisions: (1) Hearing the case; (2) Returning documents for additional investigation; (3) Suspending or dismissing the case.
V. Handling with measure controlling intellectual property related imports and exports
Inspection and supervision to detect goods showing signs of infringement of IPR mean a measure taken at the request of an IPR owner to collect information for the exercise of the right to request suspension of customs procedures.
Measures to control import and export goods related to IPR include:
- Suspension of customs procedures for goods suspected of infringement IPR; and
- Inspection and supervision to detect goods showing signs of infringement IPR.
In short, it is overly critical to understand the regulations for dealing with intellectual property rights infringements in Vietnam. It is also the basis to help individuals and organizations in protecting their legitimate rights and interests against intellectual property rights infringement of others.
Should you have any questions about the above contents, please revert to BLawyers Vietnam at consult@blawyersvn.com. We are more than happy to hear from you!
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