Which of the following measures can be used to cope with infringement of design rights in Vietnam?
(a) Administrative measures
(b) Criminal measures
(c) Civil measures
(d) Customs injunction
Subject to the nature and severity of IPR infringement, when an industrial design infringement occurs, the holder may resort to administrative, civil or border control route to fight thereagainst. If the alleged infringing products are found to be imported into Vietnam via customs, priority should be given to recordal of customs supervision for the design patent in Vietnam.
• Under Administrative route, the infringement can be compelled to cease and infringers may be subject to monetary (up to 250,000,000 VND for individual - equivalent to about 10,800 USD; up to 500,000,000 VND for legal entity - equivalent to about 21,600 USD) and some additional sanctions (g. seizure of the imitation/infringing products, destruction of imitation/infringing products, suspension of the production, trading or provision of infringing products, forcible remittance of illicit earnings from the commission of administrative violations) may be imposed on the infringer. Under this route, the monetary will be paid to the government. Of note, industrial design holders cannot seek damages under the administrative proceedings.
As a matter of practice, most of industrial design infringement cases in Vietnam are handled through Administrative route. This results from the fact that (i) administrative enforcement authorities in Vietnam are quite abundant and experienced, (ii) required documents and procedures to settle an alleged industrial design infringement case in Vietnam are quite simple and thus, the industrial design infringement case be ceased swiftly (normally, within 1-3 months) and (iii) it is not as costly as taking enforcement actions under civil route.
• Civil proceeding is another route to enforce against industrial design infringement in Vietnam. Under Civil route, the Courts can compel the infringers to pay the damage compensation to industrial design holder. There is no maximum multiple of the compensation amount, provided that the industrial design holder can calculate the damage and prove the damages caused thereto are actual losses directly caused by acts of the infringer. To this end, the industrial design holder must provide the Court with evidence proving that they have been actually and directly damaged due to the industrial design infringement in Vietnam, such as loss in property and/or decrease in income, profits and/or losses in business opportunities and/or reasonable expenses for prevention and remedy of damage.
In practice, IPR litigations in general, and industrial design litigations in particular, before the courts of Vietnam are not very popular since this measure in the IP field is quite costly, time consuming, and thus ineffective. This mainly results from the fact hat Vietnam has not had a specialized IP court yet, so IPR litigations have been settled in civil courts where the judges have very little or no knowledge in relation to the IP matter. Most claims for damages filed by IP owners are dismissed for being ungrounded or not actual loss directly caused by the acts of IPR infringements. Then, the compensation awarded by the Court is normally just a small amount. As such, very few industrial design dispute/infringement cases have been brought to the court in Vietnam for hearing.
• If the alleged infringing products are found to be imported into Vietnam via customs, priority should be given to recordal of customs supervision for the products subject to industrial design protection in Vietnam. The customs authority in Vietnam serves as a “gatekeeper” with full competence to monitor, block and seize the suspicious goods at the borders. After receipt of the customs recordal request and once accepting the customs recordal request, the Customs Control and Supervision Department of Vietnam shall disseminate such request and other supporting documents to all the provincial and city Customs Authorities in Vietnam nationwide for monitoring imports bearing identical or confusingly similar mark to your client’s. If detecting any suspicious goods, the customs authority in Vietnam will inform us for our further actions. This border control measure constitutes a useful and effective tool to fight against counterfeit goods since it helps stop and prevent fake products from circulating into internal market if the counterfeit products are imported into Vietnam via customs. However, it is not effective if the goods are smuggled via borders without customs declaration.
• Criminal sanctions are not applicable to industrial design infringement in Vietnam.
