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.