PADEMARK - Patent Attorneys/Trademark Attorneys in Vietnam

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).