PADEMARK - Patent Attorneys/Trademark Attorneys in Vietnam

The following acts of IPR infringements shall be subject to the administrative remedies:

a) Committing an act of infringement of intellectual property rights, which causes loss to consumers or the society;

b) Not terminating an act of infringement of intellectual property rights, even if a written notice has been served by the intellectual property right holder;

c) Producing, importing, transporting, and trading in intellectual property counterfeit goods referred to in Article 213 of this Law or assigning others to do so;

d) Producing, importing and trading in articles bearing a mark or a geographical indication that is identical with or confusingly similar to a protected mark or a protected geographical indication or assigning others to do so;

The civil judicial procedures must be fair and equitable in respect of any activity infringing intellectual property rights which are ensured by certain principles (Article 42). Defendants are entitled to written notice which is timely and contains sufficient details of the claims. Parties must be allowed to be represented by independent legal counsel, and procedures may not impose overly burdensome requirements concerning mandatory personal appearances. All parties are entitled to substantiate their claims and to present all relevant evidence, while confidential information must be identified and protected.

Evidence should be applied in certain situations. In a situation where evidence that is likely to be important for one party is in the possession of the opposing party, the court must be empowered, provided that certain conditions are met, to order the latter party to produce that evidence. Courts may be authorized to make their decisions on the basis of information presented to them, if a party refuses without good reason access to evidence that is in his or her possession, subject to providing the parties an opportunity to be heard.

Remedies include injunctions (Article 44), damages (Article 45) and other remedies (Article 46). Injunctions i.e. to order a party to desist from infringements, include the possibility to prevent imported infringing goods from entering into domestic distribution channels. Damages mean an order by courts to an infringer, at least if he or she acted in bad faith, to pay the right holder adequate damages including the attorney's fees. In appropriate cases, the courts may be authorized to order recovery of profits and/or payment of pre-established damages even where the infringer acted in good faith. Other remedies include measures that force the infringing goods to be disposed of outside the channels of commerce, or destroyed, where constitutionally possible, it must be possible to dispose of materials and instruments predominantly used in the production of the infringing goods. In respect of counterfeit trademark goods, it is clarified that the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.

Right of information: Judicial authorities may be authorized to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution (Article 47) aiming at assisting the right holders to find the source of infringing goods and to take appropriate action against other persons in the distribution channels.

Indemnification of the defendant: to prevent abuse of enforcement ensured by the judicial authorities to order the applicant who has abused enforcement procedures to pay an adequate compensation to the defendant who has been wrongfully enjoined or restrained to cover both the injury suffered and expenses (Article 48).

Provisional measures (Article 50)

Prompt and effective provisional measures shall be applied when it is necessary to prevent an infringement from occurring, and to prevent infringing goods from entering into the channels of commerce (this includes preventing imported infringing goods from being dispersed into domestic distribution channels) and where such measures are needed to preserve relevant evidence in regard to the alleged infringement.

Inaudita altera parte where appropriate: the judicial authorities must have the authority to adopt provisional measures inaudita altera parte, i.e. without prior hearing of the other side, where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed (Article 50, paragraph 2).

Further procedures: The courts may require the applicant to provide any reasonably available adequate evidence that the applicant is the right holder and that the applicant's right is being infringed or that such infringement is imminent (paragraph 3). The applicant may also be required to supply information necessary for the identification of the goods (paragraph 5). Where provisional measures have been adopted inaudita altera parte, the parties affected must be given notice, without delay after the execution of the measures at the latest. The defendant has a right to review with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed (paragraph 4).

Safeguards against abuse of provisional measures: The judicial authority may require the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse (paragraph 3). Provisional measures shall, upon request by the defendant, be revoked or otherwise cease to have effect, if the applicant fails to initiate proceedings leading to a decision on the merits of the case within a reasonable period to be determined by the judicial authority ordering the measures. In the absence of such a determination, this period may not exceed 20 working days or 31 calendar days, whichever is the longer (paragraph 6). Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant to provide the defendant appropriate compensation for any injury caused by these measures (paragraph 7).

Provisional measures ordered as a result of administrative procedures shall also comply with the above principles (paragraph 8).

Coverage: criminal procedures shall be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale (Article 61).

Remedies: Sanctions must include imprisonment and/or monetary fines sufficient to provide a deterrent, consistent with the level of penalties applied for crimes of a corresponding gravity. Criminal remedies in appropriate cases must also include seizure, forfeiture and destruction of the infringing goods and of materials and instruments used to produce them.

Coverage of border measures must include at least counterfeit trademark and pirated copyright goods, except for goods under parallel import (Article 51), small quantities of goods of a non-commercial nature contained in travelers' personal luggage or sent in small consignments (Article 60) or infringing goods destined for, or goods in transit.

Competent authority could be administrative or judicial in nature, to which applications by right holders for customs action shall be lodged (Article 51). The right holder lodging an application to the competent authority shall be required to provide adequate evidence of a prima facie infringement of his IPR and to supply a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities. The competent authorities shall then inform the applicant whether the application has been accepted and, if so, for what period, and give the necessary directions to customs officers (Article 52). After this, it is the responsibility of the applicant to initiate proceedings leading to a decision on the merits of the case.

The Agreement requires a system to be put in place under which action will be taken on the basis of an application from a right holder, but leaves it to determine whether they require competent authorities to act upon their own initiative in accordance with provisions under Article 58.

Safeguards against abuse of border measures: The competent authority may require the applicant to provide a security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. However, such security or equivalent assurance may not be such as to unreasonably deter recourse to these procedures (Article 53.1). The importer and the applicant must be promptly notified of the detention of goods (Article 54). If the right holder fails to initiate proceedings leading to a decision on the merits of a case within ten working days, the goods shall normally be released (Article 55).

Where goods involve the alleged infringement of industrial designs, patents, layout-designs or undisclosed information, the importer must be entitled to obtain their release on the posting of a security sufficient to protect the right holder from any infringement, even if proceedings leading to the decision on the merits have been initiated (Article 53.2).

Once judicial proceedings on the merits of a case have been initiated, the judicial authority may continue the suspension of the release of goods in accordance with a provisional judicial measure. In that case, the provisions on provisional measures in Article 50 shall be applied.

The applicant may be required to pay appropriate compensation to persons whose interests have been adversely affected by the wrongful detention of goods or through detention of goods released pursuant to the failure of the applicant to initiate in time proceedings leading to a decision on the merits of the case (Article 56).

Right of inspection and information: The competent authorities must be able to give the right holder sufficient opportunity to have any goods detained by the customs authorities inspected in order to substantiate his or her claims. Where goods have been found infringing as a result of a decision on the merits, the Agreement leaves it to Members whether to enable the right holder to be informed of other persons in the distribution channel so that appropriate action could also be taken against them (Article 57).

Remedies: include the destruction or disposal outside the channels of commerce of infringing goods in such a manner as to avoid any harm to the right holder. The principles contained in Article 46 on civil remedies, such as the need for proportionality, apply also to border measures. In regard to counterfeit trademark goods, the authorities may not allow the re-exportation of the infringing goods in an unaltered state or subject them to a different customs procedure. These remedies are without prejudice to other rights of action open to the right holder, such as to obtain damages through civil litigation, and are also subject to the right of the defendant to seek review by a judicial authority (Article 59).