INFRINGEMENT

Under the Vietnam IP laws any use of the protected object, determined as belong to the exclusive rights of the owner of IP object as provided below, of any third party, without the authorization from the owner, and for the commercial purpose, shall be qualified as an act of infringement.

1. In respect of patents

The owner of a patent for invention has the exclusive rights:

As regards product patents:

to manufacture, use, import, sell, advertise, store  or offer for sale the product;

As regards process patents:

To apply the process, use, import, sell, advertise, store or offer for sale products obtained by  process.

Please note that: Does not constituted an act of infringement: Furnishing means for infringement; offer for sale of process; Repair to the extend that there is a complete reconstitution of the product; possession of infringing product;

2. With respect to an industrial design

Owner of a patent for industrial design has the exclusive rights: to manufacture, use, import, sell, advertise, store  or offer for sale the product on which the design has been applied;

3. In respect of trademarks and appellation of origins

The owner of a registered mark and right holder of a registered appellation of origins will has the exclusive rights to apply, mark, use, the mark, appellation on the goods, their packaging, service means or commercial documents; and to import, sell, advertise, store  or offer for sale the goods bearing the mark or appellation.

Please note that: The prior use of a trademark is not provided for and if the proprietor of a mark continue to use it even in good faith will be deemed as infringement;

4. In respect of copyrights

There is no provision in the Civil Law as well as sub-law that expressly define what will be regarded as an act of  violation of copyrights. Violations must be, at current time, indirectly determined  on the basis of the protected rights of author or right of the owner of copyrights as provided by the provisions of the Civil Law and Decree presuming that there is a correspondence between right and violation.

B. INFRINGEMENT ACTIONS IN VIETNAM

I. Civil and criminal remedy for infringement

The law system of Vietnam had many of the characteristic of the civil law system. Three-level court system with civil and criminal jurisdiction was established. The first instance court is the local people's court for minor case. Appeals were handled by provincial court and at the highest level the Supreme court. The Supreme Court had the power to issue directives to all inferior courts  which is also a source of law and binding to all.

In all cases at first level, the judge had to trial with two people's assessors who have the equal rights with the judge. Cases should be tried independently in accordance with the substantive and proceeding laws, in open court.

A very important institution is the People’s Inspectorate who has the duties of investigation, prosecuting and the power of supervision over judicial decision and over the legality of administrative actions. Emphasis is placed on investigation before trial, in criminal proceedings the case is only brought to trial if the Inspectorate became convinced of the suspect’s guilty and so the public trial consisted primarily with verifying the prosecution’s works.

1.1. Civil action

Please note that under the Civil Code, Vietnam is still lacking of specific regulations for handing infringement of Copyrights and Industrial Property rights, in particular relating to procedures and remedies.

There is no specialized court or Judges for IP cases. In respect of civil cases the competent jurisdiction is the People’s Court of province level. In the case which is involving at least one foreign party, the competent court will be the Hanoi or Ho Chi Minh City People’s Court, at the plaintiff’s choice.

Complaints are lodged with People’s High Court of the province, town or city which is directly responsible to the central government. Where one of the parties to the action is a foreigner, the case must be filed with the People’s Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity takes place or other parties may reside.

In practices, it takes 6 months to 1 year for a case to come to trial. Decisions of the People’s Court are generally not issued until two or three years after trial.

Decisions of the Court may be appealed to the Supreme Court, which is the highest at final court. Decisions are usually issued by the Supreme Court within one year of appeal.

Complains must be submitted personally or throughout a domestic representative in the case of foreign entities. The complaint must be accompanied by (1) documentary evidence of the ownership and registration of the trademark and (2) proof of infringement, including samples of both the genuine and infringing articles.

1.2. Civil remedies.

A trademark owner may seek an order, damages and/or destruction of counterfeiting products.

Courts are empowered to grant an interim or interlocutory injunction to stop the infringing activity pending determination at trial, provided the evidence in  the complaint justifies such action. Damages are calculated on the basis of the actual amount of the owner’s loss or illegal profits made by the infringer. There is no fine in civil proceedings.

Cost to the owner of Industrial Property rights such as attorney’s charges, are not awarded in civil action. The plaintiff must pay the legal costs of the law suit, calculated on the basis of the damages claimed, and if convicted by court decision the infringer have to recover this advance in payment.

Public apology at infringer’s expenses are not available as a fine that may be imposed by civil court by may be proposed in settlement between the parties.

Please be noted that: In general Civil actions on industrial property are long, uncertain for the same reason, the lacking of specialized judges in Industrial Property.

2.1. Criminal action.

For violation serious to public order, the Criminal code provide penalties against offenses in relation to the making and selling of counterfeit goods - trademark - and to the author rights and IP rights granted by a patent. the competent court is the local court (district level).

A trademark owner is entitled to initiate a criminal actions against an infringer. Petitions can made for reasons other than counterfeiting of products (for example, misrepresentation, or providing fake products/services). Counterfeit goods are defined to include goods bearing the trademarks (non-registered) of another legal entity where the trademark owner has not agreed to such use, and goods bearing trademarks confusingly similar to and existing registered mark.

Prosecutorial authority lies with :(1) the police who can investigate, seize goods and arrest infringers, and (2) the prosecutorate who have, in addition to having the same powers as police, the authority to indict and prosecute infringers. The police generally initiate investigations upon a trademark owner’s formal complaint.

The trademark owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed trademark and its business interests and locations, as well as the names of the alleged infringers and the nature of the infringing act.

If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before court.

Case are brought before the People’s Court of the district, province, city or town which is directly responsible to central government, nearest to where the alleged infringement occurred. If once of the parties is foreign, the competent Court will be Court  of Hanoi or Ho Chi Minh City.

Decisions of the People’s Court may be appealed to the Supreme Court, the highest and final court.

2.2. Criminal remedies.

The punishment can be very severe, ranging from one to seven years’ imprisonment if the counterfeit goods are foods, to five to fifteen years’ imprisonment or even the death sentence for extremely serious crime.

Please noted that: In practice, criminal remedies are almost reserved for counterfeit acts considered as very serious to public order for example in relation to medicines, food stuffs, fertilisers and construction materials.

II. Administrative measures.

A vast category of offenses could not come to the criminal law or court but be handled as administrative offenses, punishable summarily, on the spot by the competent State authorities, by a fine, etc.

1. Competent authorities.

The Inspectorates (within Ministries of Science and Technology and Culture and Information) is importance administrative authorities coordinator among different competent authorities such as Market Management Office (MMO) of the Ministry of Commerce Economic Police, Customs, to enforce trademark matters. Complaints are filed with the Inspectorates, MMO or economic Police at the national level, or the Bureau at provincial level or teams at the local/district level where the infringement has occurred. If the infringement is national, the complaint is filed direct with the head offices.

The National Office of Industrial Property, NOIP, does not involve directly in the actions such as, investigation, control, seizure, issue injunction etc. but plays a very important role through the following activities:

Upon request of the competent authorities, owner or its patent attorney, NOIP will examine the case and based on its merit give an official written opinion on whether  there is an infringement or not. This  official opinion can be served as basis for other authorities to apply available remedies against the infringer or a warning to stop the act of infringement.

2. Complaint.

A complaining trademark owner must furnish : (1) documentary  evidence of ownership and registration of the infringed trademark and (2) proof of infringement, including sample of both the infringing and genuine articles. In practice, the competent authorities shall conduct investigations and take action provided that these materials are found as satisfactorily justified.

3. Remedies.

The competent authorities have been granted broad powers with respect to trademark matters :

  - Enter and search any market and business premises;

  - Issue orders to stop infringing activities;

Confiscate or destroy infringing goods or order the infringer to remove or delete the infringing mark;

  - Impose fines;

  - Revoke and infringer’s business license.

Please note that: According to our own experience in dealing with infringement in Vietnam, administrative remedies may be viewed as the most appropriate in term of cost and time when the infringement is obvious to the administrative agencies, for example identical reproduction of a registered mark on identical goods. But it would be inefficient in case of more complicated infringement such as imitation of marks and or the goods are not identical, without talking about infringement of an invention. This is due mainly to the lack of awareness on IP of the enforcing officials and, a good co-ordination between them, and specific regulations set forth the procedures, and measures in order to them to take a quick decision.

C. GENERAL COMMENT

In general, and in particular for the enforcing authorities, the awareness and familiarity with the patent, design, trademark and copyright are very limited and growing in that order. It will be more difficult to deal with an infringement of patent than with copyright or trademark.

There is no regulation on passing off and also a general misconception in Vietnam on the passing off. No industrial property protection is provided for unregistered rights, then it occurred that some officials, agencies refused to take action against the fake product bearing a mark which is not yet granted registration for example.

As advised above there are no regulations or doctrine on passing off, only counterfeits under some circumstance be considered as illegal by the Criminal law.

Since in an infringement case, NOIP, having no power of injunction, acts only as counseling agency to the law enforcing bodies, such as Inspectorates, Economic Police, Customs, Market Management, not all infringement cases are brought to its knowledge unless they are complicated enough, i.e. when enforcing bodies are not able to determine the infringement. Therefore, the statistics contained in this section reflects only in some extent the situation of infringement over Industrial Property right in the whole country.

The enforcement in Vietnam system definitely needs regulations and detailed provisions that clearly determined the competent state authority for the administrative remedies and the jurisdiction of the court for civil proceeding as well as the practical guidance for the distinction between administrative offenses and crimes under the Criminal code to be really effective.

In the view of the above, the vigilance of the owner of intellectual property rights, in cooperation with an attorney in Vietnam and other authorities, would be the key factor for a successful protection of Industrial Property rights in Vietnam. Survey, watching and search on the market, combined with immediate and appropriate actions are highly recommended. Understand that, offering pro-active reports to clients is one of our principal services.  

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