ENFORCEMENT OF INDUSTRIAL PROPERTY RIGHT IN VIET NAM
IP rights includes trademark, industrial design, invention, utility solution, …Normally, these rights are created by registering with the IPOVN, through ip certificates such as trademark registration, patent for industrial design, patent for invention/utility solution,…
(Sample of IP Certificates)
When industrial property rights are infringed, industrial property rights owners can use CIVIL MEASURES, ADMINISTRATIVE MEASURES, CRIMINAL MEASURES to protect the industrial property rights.
MEASURES FOR IPR ENFORCEMENT IN VIETNAM
* CIVIL MEASURE:
- This measure is provided in the Intellectual Property Law of 2005, amended 2019. As the intellectual property right is a civil right, the owner of intellectual property rights may request competent authorities to compel the infringer, to terminate the infringing act and to pay a compensation for the damages
- The IPR owner shall bear the burden of proving the claimed infringement. The complaint submitted to the Court must be accompanied by documentary evidence of the concerned IPR and proof of the infringement, namely:
+ Certified copy of protection title (trademark registration certificate, patent, registration certificate of trademark or patent license, certified copy of Registration …)
+ Evidence proving the infringement, including the information concerning the alleged infringer (name, address, business premises), samples of the genuine and infringing articles, scope of infringement ...,
+ The Vietnam Intellectual Property Research Institute (VIPRI)'s opinion of the acts of the infringement (which is not mandatory by laws but obviously helpful in later proceedings due to the lacking of Judges specialized in the IP field in Vietnam) and
+ Substantial damages and ground for calculation of damages in case claiming damages
+ Advance of costs of trial.
+ Expert Opinion regarding to Infringing Elements from VIPRI
* ADMINISTRATIVE MEASURE:
- This procedure is against those intellectual property infringements which are not serious enough to be subjects to criminal procedure and the right holder does not wish to take this case in front of the Court to be dealt with Civil Code 2015.
- Requirements for Petition against IPR infringement
IPR owner upon discovery of infringement over his IPR is entitled to submit a Petition to IPR enforcement bodies asking to stop such act. The Petition shall be accompanied by the following:
+ Certified copy of IPR protection title - depending on each particular case the protection title shall be Trademark Registration Certificate or Patent for Design or Invention or Utility Solution or Registration Certificate of License Agreement.
+ Evidence of infringement and information of infringer(s).
- Enforcement authorities involved in settlement of IPR infringements:
+ People's Committees of provincial and district levels
+ Science and Technology Inspectorate and Information and Communication Inspectorate
+ Economic Police
+ Market Management Controllers
+ Customs Offices
- The legal basis
+ Intellectual Property Law No. 50/2005/QH11 (IP Law 2005) amended according to Law No. 36/2009/QH12 (IP Law 2009)
+ Government Decree No. 105/2006/ND-CP dated Sep 22, 2006 that was amended according to Decree No. 119/2010/ND-CP dated 30 Dec 2010. The Decree specifies particularly acts of IPR infringement, nature and extent of infringement of intellectual property rights, identification of damage, requests for handling of infringements and settlement of those requests, handling of infringements by administrative measures, control of exports and imports related to intellectual property, assessment of intellectual property, and state management of intellectual property.
+ Government Decree No. 99/2013/ND-CP dated 28 August 2013 that specifies Administrative Penalty in the Industrial Property Field
* CRIMINAL MEASURE:
Criminal measures shall be applied in case of dangerous acts, which show signs of constituting an intellectual property crime in accordance with the provisions of the Penal Code. Article 192-195, Criminal Code 2015, amended and supplemented 2017.
STEPS FOR IP ENFORCEMENT
* Assessment of IP
- Assessment of industrial property means the use by organizations or individuals with their professional knowledge and expertise to assess and make conclusion on matters related to industrial property rights.
- State agencies competent to handle acts of infringing upon industrial property rights may request industrial property assessment when handling cases or matters they have accepted.
- Industrial property right holders and other related organizations and individuals may request industrial property assessment to protect their legitimate rights and interests.
- VIPRI (Vietnam Intellectual Property Research Institute), a quasi-governmental organization, is the only agency in Vietnam authorised to provide expert opinions (statutorily known as assessment conclusions) on IP infringement.
- Sample of Report of assessment result
* Main works for IP enforcement
• Step 1: Warning, that is imposed to unintentional violation and on minor first-time violation with mitigating elements
• Step 2: Request competent state agencies to handle violations by one of three measures as analyzed above. In this step, the IPR owner must prove his IPR and provide information and evidence about the infringing party's violations, such as purchase invoices, photos of signs, images of industrial property rights violations, etc.
Please contact us:
A DONG IP – TRANSLATION – CONSULTANCY COMPANY
Room F2&F3, No. 2 Phung Khac Khoan Street, Da Kao Ward, District 1, Ho Chi Minh City, Viet Nam
Tel: 84-28 3926 0120 – 39260125
Email: firstname.lastname@example.org; email@example.com
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