The enforcement system of IP rights in Vietnam offers three different avenues, namely civil, administrative and criminal actions. Practically, the IPR holders are always advised to approach the infringers to reach amicable settlement by sending a cease-and desist letter before taking official actions as below mentioned. The avantage of this measure is that it is simple and rapid and it shows in practice that the infringer upon realizing its act of infringement may voluntarily stop the infringement.
I/ Administrative Procedures
Administrative procedure is regarded as the most effective way to deal with IPR infringement in Vietnam perhaps because the Vietnamese are culturally familiar with the administrative ways of settling disputes. Practice showns that administrative action, rather than judicial, carries the possibility of a more prompte and effective result. However, there is no award of damages for infringement under administrative procedures. The infringer may be ordered to pay compensation to the IPRs owners up to a limit of VND 1 million (70US$). If the owner is claiming higher damages, he must pursue such damages in court.
The administrative authorities involved in the IPR enforcement include: (i) specialized Inspector of Industrial Property; (ii) People’s Commitees at local levels; (iii) Customs Office; (iv) Market Control Office; (iii) Economic Police. These authorities have been granted very broad powers to enforce rights. They can, for example:
- temporary detention of persons in accordance with administrative procedure;
- temporary detention of things used in the alleged infringement;
- search of person in accordance with administrative procedure;
- search of means of transport and other things, search of places; and
- other administrative preventive measures.
The Goverment’s Decree No. 106/2006/ND-CP dated September 22, 2006 on Dealing with Administrative Offences in relation to Industrial Property, which replaced Decree No. 12/1999/2006, provides in detail for administrative authority competence and procedure for handling administrative violation of industrial property (IP) rights. It also identifies types of conduct constituting such violations and corresponding penalties. As before, main penalties include warning and fines. Additional penalties (such as confiscation of evidences and means of violation, suspension of infringer’s business activities etc…) and compulsary remedial measures (such as removal of infringing elements from the infringing goods, destruction or distribution for non commercial purpose of infringing goods, publication of corrective notices etc…) may also be imposed. Under Decree 106, penalties for administrative violation of IP rights have been increased in line with the scale of infringement i.e. penalties can be calculated based on the actual value of detected infringing goods.
II/ Civil Procedures
IPR holders can initiate civil proceedings against infringement of his rights at the court and seek the following:
- Preliminary injunction measures: Competent Courts may apply preliminary injunction measures in civil cases. Preliminary injunction measures include (i) seizure; (ii) inventory; (iii) seal off ; and (v) other measures as stipulated by the Civil Procedure Code. The person who requests such measures has to deposit an amount worth 20% of the value of the goods on which such measures are to be applied; or a minimum amount of VND20.000.000 (US$1.300), if the value of the goods can not be determined.
- Award of damages which include material damage and moral damage. Material damage is determined on the basis of actual losses. If such losses can not be determined, the Court will determine the level of compensation in its sole discretion, but the total amount of compensation for damage can not exceed VND500.000.000 (US$32.000). Moral damage can be compensated between VND5.000.000 (US$320) and VND50.000.000 (US$3.200).
- Other remedies including the destruction of infringing goods and the means of production of infringing goods.
The court of jurisdiction over IPR infringement or disputes shall be the People’s Court of the city or province where the defendant is located. Where one of the parties is foreigner, the case must bring to the People’s Court in Hanoi or Ho Chi Minh City.
The plaintiff must bear the burden of proving the infringement claimed. The complaint must be accompanied by documentary evidence of the concerned IPR and proof of the infringement. Before the Court decides to bring the case to a hearing, a conciliation process between the parties must be arranged. If the agreement is reached between the parties during the conciliation process, the Court will recognize the agreement and the case is thus finalized.
At any time during the process of the case, the Court itself or, as requested by the parties or the People’s Prosecutor, may apply preliminary injunction measures as mentioned above. These measures may, however, be protested by the defendant or suspended by the People’s Prosecutor. The Court will make a decision to bring the case to a hearing at the first instance within 4 months or 6 months from the date the court receives the complaint. The hearing will then be opened within 1 month or 2 months (in complicated cases) from the date of issuance of the said decision. After 15 days from the date on which the court of first instance makes judgment or decision, the parties may appeal to the Supreme People’s Court in Hanoi, whose ruling is final.
III/ Criminal Procedures
IPR infringements may be subjected to criminal liability in some serious cases. The authority to bring a criminal action lies with the police and the public prosecutors. Due to lack of resources, it can be difficult to persuade the police or prosecutor to act. The IPRs holder does not have any effective control over the progress of a criminal action.
Under Article 126, those who infringe upon copyrights or patent rights of other persons shall be subjected to a warning, monetary fine of up to 5,000,000 VND or imprisonment of from three months to one year.
Under Article 167 regarding offences of production and trade in counterfeit goods, the penalty ranges from one to seven years of imprisonment. In serious cases where counterfeit goods are goods, pharmaceuticals, or the volume of counterfeit goods are substantial, then the offender shall be subject to 20 years of imprisonment or even life imprisonment or death penalty.