Related Questions on IPR Enforcement in Vietnam

Related Questions on IPR Enforcement in Vietnam

1. Could you tell us what is a situation of administrative raids?
We: Currently in Vietnam, administrative sanctions are the most effective means to enforce IPRs in terms of cost-effectiveness and time-efficiency. Most right holders choose to take administrative action, rather than civil action against IPR infringements. Practice shows that administrative action, rather than civil action, carries the possibility of a more prompt and more effective result.Despite the above, we find that administrative raids conducted by the Vietnamese enforcement authorities against IPR infringing goods remain insufficient. This may result from the fact that the enforcement authorities in Vietnam lack the financial resources, manpower, expertise, knowledge and confidence to deal with unusual cases. Thus, the number of administrative raids against IPR infringing goods is still limited.
2. Please explain a procedure and a flow of a raid.
We: The principal procedure and flow of a raid are as follows:
(i) Filing: Right holder/IP agent files a petition for handling IPR infringement with the Vietnamese competent enforcement authority under Article 198 and Article 200 of the IP Law; 
(ii) Checking: Enforcement authority checks (i) evidence proving the right holder status, (ii) KF information about the suspected goods or in order to detect IPR infringing goods. If requirements are not met, right holder/IP agent is required to submit additional evidence / explanation within 30 days. If requirements are not met, the enforcement authority will issue a Notification on refusal to handle the case as provided in Article 23, 24 , 25, 27(c) of Decree No. 105/2006/ND-CP.
(iii) Acceptance/Inspection Decision: Within 10 days if all requirements are met, enforcement authority issues a Decision on Inspection. Right holder/IP agent kf may join and witness the infringement handling process if accepted by the enforcement authority.
(iv) Raiding: a raid on the alleged infringer will be launched within 45 days from the date of Inspection Decision in accordance with Article 46.1(b) of the Law on inspection No. 56/2010/QH12. A Minutes of infringement will be made if administrative violation is found during the inspection. 
(v) Issuing a Sanctioning Decision: Enforcement authority will issue a Sanctioning Decision on the infringer within 07 days from the date of Infringement Minutes under  Article 66 of Law No. 15/2012/QH13 on handling of administrative violation). Caution or monetary fine will be indicated in the Sanctioning Decision imposed on the infringer. Besides, subject to nature and severity of the infringement, some additional sanctioning forms and remedies may be applied, e.g. confiscation of material evidence and means used in the commission of administrative violations, destruction of the infringing goods, removal of the infringing signs out of the goods, etc. in conformity with Article 03 of Decree No. 99/2013/ND-CP.
(vi) Implementation of the Sanctioning Decision: Infringer, within 10 days from the date of the Sanctioning Decision, must implement the Sanctioning Decision as provided in Article 73 of Law No. 15/2012/QH13 on handling of administrative violation.
III) Please explain features of an administrative measure compared with the other measures.
Features Administrative measure Civil measure Criminal measure
Procedure Simple. Complicated. Complicated.
Cost Low cost High cost of civil proceeding Borne by the authorities conducting the criminal prosecution
Time frame Less time-consuming (01-03 months)   Time-consuming (6 months to several years), with a lot of delaying possibilities Time-consuming (6 months to several years), with a lot of delaying possibilities
Enforcement authorities More abundant and experienced Limited knowledge and experience in handling IPR related matters Limited knowledge and experience in handling IPR related matters
Deterrent effect Deterrent More deterrent Most deterrent
Preference More preferred Less preferred Less preferred

 During we coordination with Vietnamese enforcement authorities, we find that Administrative measure is regarded as the most effective way to deal with IPR infringement in Vietnam if the ultimate goal of IPR holders is to stop infringement of their rights. The procedures to request the enforcement bodies to handle the IPR infringement are quite simple. Most of IPR infringement cases in Vietnam are handled under administrative route. Thus, administrative enforcement authorities (e.g. Market Management Bureau, Police, specialized Inspectorates, etc.) have gradually improved their skills and become more experienced in handling IPR infringement. As a result, kf attorneys that administrative action, rather than judicial, carries the possibility of a more prompt and effective result. However, under administrative procedures, the plaintiff shall not be able to claim for damages.

In our opinion, by initiating civil proceedings, an IPR holder can request a competent court in Vietnam to grant civil remedies against organizations and individuals who have committed infringing acts in accordance with Article 202 of the IP Law. As a matter of fact, a lawsuit before the court may be tempting in terms of punitive effects. However, this measure becomes less attractive when one considers the strict procedures, length of time to bring a case to court and costs for the lawsuit. The limited qualification and capacity of the judges in dealing with IPR matters will also discourage IPR holders. There kf has been no specialized IP court in Vietnam up to now. IP remains a relatively new and complicated issue to many judges in Vietnam and the majority of judges currently have a limited knowledge of IP protection and little experience in handling IP related cases. Given the aforesaid facts, the judges may have to consult IP experts (e.g. the National Office of Intellectual Property of Vietnam, Vietnam Intellectual Property Research Institute, Inspectorate of Ministry of Science & Technology) and therefore, the court’s judgment may be heavily influenced by the opinion of the IP experts.

In respect of criminal measure, this is applied to those individual who willfully commit acts of infringement of the copyright, related rights and industrial property rights to the trademarks and geographical indications being protected in Vietnam on the commercial scale. Practice shows that criminal procedure is available in the law, in addition, criminal penalties such as fine or imprisonment are of harshest deterrence, but it has actually not has been effectively implemented against IPR infringement. As a matter of fact, prosecution authorities are somewhat reluctant to apply criminal sanctions unless it is a very strong case involving counterfeit medicine or baby food or dangerous to consumer’s health.

For more information, please refer to our attached Memo on dealing with IPR infringement under civil, administrative and criminal measures.