Protecting your company’s brand, reputation and, most importantly, market share, demands vigorous enforcement of your trademarks. Regardless of intent, third parties may seek to register or use similar marks that can cause confusion in the marketplace, dilute your brand and infringe on your intellectual property. Subject to nature and severity of IPR infringement, the IPR holders may take civil, administrative or criminal measures against the infringers. KENFOX IP lawyers are here at your disposal, starting with sending a cease and desist letter demanding that the infringing party stop using the mark. If the infringement continues, then proceedings with enforcement actions may be necessary.
KENFOX works closely with clients to develop an enforcement strategy to uncover and stop third parties from using or registering infringing marks. We also conduct ongoing due diligence by performing trademark searches and monitoring registration activity on behalf of clients. If additional measures are necessary, our attorneys can produce effective cease and desist letters and pursue required proceedings before Vietnamese enforcement authorities of Vietnam.
1. General
Under Article 199 of the IP Law of Vietnam, subject to the nature and severity of IPR infringement, when IPR infringements occur, the holder may resort to administrative, civil, criminal procedures, or border control measures in order to protect their rights
2. Administrative proceedings
Vietnamese enforcement authorities are liable to handling IPR infringement under administrative proceedings:
- The People’s Committees at the district and the provincial level;
- The Inspectorates on Science and Technology (under the supervision of the Ministry of Science and Technology);
- The Inspectorates on Culture and Information (under the supervision of the Ministry of Culture and Information);
- The Market Control Forces (under the supervision of the Ministry of Trade);
- The Economic Polices (under the supervision of the Ministry of Police).
Administrative remedies to imposed on the infringer:
- Warning order; or
- Monetary fine.
Depending on the seriousness of the infringement, the following additional sanctions may be imposed on an IPR infringer:
- Confiscating IP counterfeit goods, implements and materials predominantly used for production or trade of such IP counterfeit goods;
- Revoking for a limited term the relevant business activities;
- Compelling destruction, distribution or use for non-commercial purposes of the IP counterfeit goods, materials and implements predominantly used for production or trade of such counterfeit goods;
- Compelling delivery out of the territory of Vietnam of the transiting goods, which involve infringement of IPR or re-export of the IP counterfeit goods, after having removed infringing elements.
Administrative preventive measures
In case there is a risk that infringing acts may cause serious damages to consumers or the public; or there is a risk that infringing articles may be dispersed or destroyed by infringers; or to ensure the enactment of administrative sanctions, IPR holders may request competent state enforcement authorities other than the Court to apply administrative preventive measures. These administrative preventive measures are quite similar to injunction/provisional measures applied by the Court.
3. Civil proceedings
Under Law on Civil Procedures of Vietnam 2015, the following courts are competent to hear IPR infringement cases:
First Instance Court:
- The People’s Courts at the district level (including the Civil Courts);
- The People’s Courts at the provincial level (including the Civil Courts and the Economic Courts).
Appeal Court:
- The People’s Courts at the provincial level (including the Civil Courts and the Economic Courts);
- The Supreme People’s Court (including the Civil Court and the Economic Court).
- The remedies may be imposed are as follow:
- Compelling termination of the act of infringement of intellectual property rights;
- Compelling public rectification and apology;
- Compelling performance of civil obligations;
- Compelling compensation for damages;
- Compelling destruction or distribution or put to use for non-commercial purposes of goods, materials and implements predominantly used for production and trade of goods infringing IPR, provided that such distribution and use does not influence the exploitation of rights of IPR holder.
The plaintiff may request the court to apply injunction/provisional measures as follows:
- Seizing;
- Enumerating;
- Sealing; forbidding of changing the existing situation; ban of moving;
- Forbidding of transfer of the ownership of rights.
At the request of the plantiff, other injunction measures stipulated by Law on Civil Procedure also may be applied by the court when necessary and for the purpose of avoiding the dispersal of the infringing products by the defendant/infringer. In particular, one or a combination of the following forms of injunction measures may be taken:
- Blockading of accounts or assets;
- Forbidding the defendant/infringer from conducting a certain action or forcing the defendant/infringer to conduct a certain action.
- To request for the application of the provisional measures, IPR holder shall be requested to pay a deposit or provide with a bank guarantee.
Compensation
The plaintiff may request compensation for actual damage caused by infringing acts that shall be calculated basing on actual material damages and moral detriment caused by the infringer.
4. Criminal procedures
The infringing acts which cases serious consequence (articles 170 and 171 of the Criminal Act) will be imposed the criminal procedures:
Competent Authorities of Police Authorities, People’s Prosecuting Institutes and Competent Court which are responsible for handling a criminal case. This is applied according to the regulations under our Law on Criminal Procedures.
One of the following criminal penalties may be imposed on an IPR infringer:
- Warning order, or;
- Monetary fine;
- Non-detained re-education for up to 3 years, or;
- Imprisonment for a period of 6 months to 20 years or life imprisonment or death penalty;
- Besides, the IPR holders may request the following additional sanctions on infringer:
- Confiscation of part or whole of assets;
- Prohibition from holding an official position or conducting a business within a certain period of 1 to 3 years.
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