IP Enforcement Guide in Vietnam
The integration into the World Trade Organisation and the application of Trade-Related Aspects of Intellectual Property Rights Agreement have been considered key milestones for both the standards and the enforcement of IP rights of Vietnam.
Subsequently Vietnam has negotiated and signed various FTAs with a specific chapter on IP standards and enforcement, such as: the CPTPP in 2018, EVFTA in 2019, and the RCEP in 2020, which has resulted in further improvement of legal framework for the IP right enforcement in the country.
Under the prevailing laws, the IP rights in Vietnam could be enforced under four different remedies, namely: civil enforcement, criminal enforcement, administrative enforcement, and customs border enforcement.
While the administrative proceedings are still popular for the enforcement of IP rights in Vietnam, the judicial (civil and criminal) enforcement have been increasingly used by IP right holders to protect their rights and interests.
For many IP right holders, especially foreign owners, various questions and concerns on the IP enforcement in Vietnam still remain. Consequently, it takes people a much longer time to consider what measures to use to enforce their IP rights for their best interests. Below is an IP enforcement guide in Vietnam for easy understanding and application.
What are the IP enforcement measures available in Vietnam?
IP Right | Civil | Criminal | Administrative | Customs |
Copyright and related right | Yes | Yes | Yes | Yes |
Patent | Yes | – | Yes | Yes |
Industrial design | Yes | – | Yes | Yes |
Trademark | Yes | Yes | Yes | Yes |
Geographical indication | Yes | Yes | Yes | Yes |
Trade secret | Yes | – | Yes | – |
Unfair competition/ passing off | Yes | – | Yes | – |
Civil Enforcement
What is the civil procedure for IP enforcement in Vietnam?
To initiate the civil enforcement of IP rights, the right holder needs to file a complaint with necessary documents and evidence to the court. The court shall review the complaint to ensure that it meets all of the procedural requirements before accepting and handling the case.
During the process, the parties would file claim[s] or counterclaim[s], answers and pleadings for their rights and interests, and the court shall open evidence disclosure and mediation hearings and a trial.
It’s worth noting that civil actions against IP infringement can be complex and time-consuming, but they are increasingly and highly recommended to protect the rights and interests and seek justice for IP right holders.
Does Vietnam have a specialized IP judiciary?
Currently, Vietnam has not established a court specialized in handling IP disputes.
What courts have jurisdiction to hear civil IP disputes?
Provincial-level economic courts have jurisdiction over all the commercial IP disputes while non-commercial IP disputes come under the jurisdiction of district-level courts.
What is the average time to handle a civil IP case in Vietnam?
In practice, the time period for handling a civil IP case typically ranges between 12 to 30 months depending on the scale and complexity of the case or infringing act. It may take even longer based on the case’s complexity and the court’s current workload.
On what basis could interim injunctions be granted?
IP right holders shall request the court to apply provisional measures in the following cases:
- There exists a danger of irreparable damage to right holders;
- Goods suspected of infringement of IP rights or evidence related to the IP infringing act[s] are likely to be dispersed or destroyed unless they are protected in time.
What claims could the right holders make?
In case of a dispute regarding IP rights, the IP right holders have the legal right to make the following claims:
- Compelling the termination of infringing act[s];
- Compelling the public apology and rectification;
- Compelling the performance of civil obligations;
- Compelling the payment of damages;
- Compelling destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and means used largely for the production or trading of IP infringing goods, provided that such destruction, distribution or use does not affect the exploitation of rights by the right holders.
On what basis are damages for IP infringement calculated?
To recover damages from the infringer[s], the IP right holders must provide evidence of actual loss and damage. The total compensation for damages shall be determined on the basis of:
- the total material damages calculated as a monetary amount, plus profit derived by the defendant from conducting the infringing act; or
- the licensing price of the IP asset (with the assumption that the defendant was licensed by the plaintiff to use that object under a license contract within a scope corresponding to the act of infringement which was committed); or
- material damages by another calculation method provided by the rights holders in accordance with the provisions of law; or
- statutory damages, depending on the extent of loss but not exceeding VND500,000,000 (~USD21,000) in the event that the right holders cannot determine the amount of material damages through the above-mentioned methods.
Do the court need to request the expert opinion on IP infringement when handling civil IP cases?
The prevailing laws do not require the court to request expert opinions on whether an IP infringement exists when handling civil IP cases. However, the court often solicit opinions of IP national agencies due to the diversity of IP subjects and the complexity of IP disputes.
Criminal Enforcement
Conditions for an act of infringing trademark or geographical indication to be considered a crime?
An individual will be criminally charged with the offense of infringing upon trademark or geographical indication in case he/she intentionally commits an act of infringing protected trademark[s] or geographical indication[s] without permission of the right holders, involving trademark or geographical indication counterfeit goods, and:
- on a commercial scale; or
- earns an illegal profit from VND100,000,000 (~USD4,200); or
- causes loss from VND200,000,000 (~USD8,400); or
- counterfeit goods worth from VND200,000,000 (~USD8,400).
Conditions for an act of infringing copyright or related rights to be considered a crime?
An individual will be criminally charged with the offense of infringing upon copyright or related rights in case he/she intentionally commits an act of infringing the reproduction right or distribution right of the right holders without their permission, and:
- on a commercial scale; or
- earns an illegal profit from VND50,000,000 (~USD2,100); or
- causes loss from VND100,000,000 (~USD4,200) to the right holder[s]; or
- counterfeit goods worth from VND100,000,000 (~USD4,200).
Does a legal entity incur criminal liability for IP offenses?
A legal entity might incur criminal liability for infringing trademark or geographical indication or copyright or related rights if an infringing act as described above occurs, but with some other different conditions compared to a natural person’s act:
- illegal profit earned is from VND200,000,000 (~USD8,400); or
- loss caused to the right holder[s] is from VND300,000,000 (~USD12,600); or
- counterfeit goods worth from VND300,000,000 (~USD12,600).
What are criminal penalties for IP offenses?
An individual infringer of trademark or geographical indication or copyright or related rights might be criminally sanctioned with a fine of up to VND1 billion (~USD42,000) or an imprisonment of up to 3 years withan additional fine of up to VND200,000,000 (~USD8,400) or a prohibition from holding certain positions or practicing in certain industries or doing certain works within up to 5 years.
A legal entity infringer might be criminally sanctioned with a fine of up to VND3 billion (~USD126,000) for infringing copyright or related rights and VND5 billion (~USD210,000) for infringing trademark[s] or geographical indication[s] or with up to 2 years’ suspension of operation.
The legal entity infringer may also be sanctioned with an additional fine of up to VND300,000,000(~USD12,600) for infringing copyright or related rights and VND500,000,000 (~USD21,000) for infringing trademark[s] or geographical indication[s] or a ban from doing business or operations in certain fields or raising fund for business within up to 3 years.
What is the criminal procedure for IP enforcement in Vietnam?
Under the new version of Criminal Procedure Code of Vietnam, criminal proceedings against the infringement of trademark[s] or geographical indication[s] or copyright or related rights may be commenced upon the ascertainment of the crime[s] from any source of criminal information. Accordingly, there is no need of the victim’s denunciation to initiate the criminal proceedings for IP enforcement, and the proceedings could not be suspended even though the victim files a petition for the infringer[s] to be exempted from the criminal liability. However, for an effective enforcement of IP rights, it is recommended that the right holders file a criminaldenunciation to the police or procuracy’s agency for duly execution.
What is the average time to handle a criminal IP case in Vietnam?
In practice, the time period for handling a criminal IP case shall generally range from 6 to 30 months depending on the scale and complexity of the case or infringing act.
Administrative enforcement
What authorities have jurisdiction to conduct administrative enforcement of IP rights in Vietnam?
Under the prevailing laws, the administrative enforcement of IP rights could be conducted by different authorities, depending the type of IP rights.
- Inspectorate of the Ministry of Culture, Sports and Tourism (MoCST) and Department of Culture, Sports and Tourism (DoCST) have the authority to administratively enforce the infringement of copyright and related rights.
- Inspectorate of the Ministry of Science and Technology (MoST) and Department of Science and Technology (DoST) have the authority to administratively enforce the infringement of industrial rights.
- Inspectorate of the Ministry of Information and Communication and Department of Information and Communication are responsible for cooperating with the inspectorate of MoST and DoST and other relevant authorities to handle domain names infringing IP rights.
- Economic Police (EP) may directly conduct administrative enforcement against trademark counterfeits and cooperate with the inspectorate of MoCST and DoCST for action against copyright piracy.
- Market Management Bureau deals with cases involving counterfeits and piracy at the market level and right holders often opt for this agency for quick action against infringers.
- Customs have the authority to prevent the import of counterfeit and piracy goods.
What should the right holders do to initiate the administrative enforcement of IP rights?
To initiate the administrative enforcement of IP rights, the right holders or their authorized representative should file a written request for handling the infringement to the competent authorities. The request needs to be enclosed with evidence and documents to demonstrate the right holders’ status and the infringing act, including description or photos of goods or services, the time and location when and where the infringing act occurs, the estimated value of the infringing goods, etc.
What is the average time to handle an administrative IP case in Vietnam?
In practice, the time period for handling an administrative IP case generally ranges from 4 to 15 months depending on the scale and complexity of the case or infringing act.
Customs Border Enforcement
What are the measures for customs enforcement of IP rights in Vietnam?
Customs measures for enforcement of IP in Vietnam include:
- Suspension of customs procedures for suspected infringing goods;
- Inspection and supervision for detecting goods with signs of IP infringement.
What is the procedure for customs enforcement of IP rights in Vietnam?
To initiate the customs enforcement of IP rights, IP right holders may file customs recordals with the customs agencies. Upon the acceptance of the application, the customs agencies shall stop customs procedures and notify the right holders if they detect possible IP infringement in a consignment. Within three working daysupon the receipt of the notice on suspected infringing goods, the right holders must request a suspension of customs and deposit a guarantee amount equivalent to 20% of the value of suspected infringing goods or of VND20,000,000 (~USD840) if unable to determine that value or submit a deed of guarantee issued by a bank or credit institution. The suspension period is ten working days from the date of issuing the suspension decision and extendable for further ten days if expert opinions are in need.
After the suspension period, customs agencies shall either accept the case, or detain the goods, or impose administrative sanctions if there is sufficient evidence of infringement, or transfer the case to the EP for criminal investigation and prosecution if the value of the counterfeit and piracy goods meets the thresholds for criminal prosecution. If the right holders do not file a lawsuit or the customs agencies do not accept the case, customs agencies shall resume the customs procedures for the consignment.
If you have any questions or concerns about IP Investigation and Enforcement, please contact us at info@letranlaw.com