SBLAW would like to provide the client some information about anti-counterfeiting in Vietnam as follows:
Q. Is there any difference between criminal protection and administrative protection? Is it practicable to claim for compensation?
A: Yes, there are differences between criminal protection and administrative protection.
You could only request the authority state bodies to settle an infringement case based on penal code in case the infringement action is carried out on the commercial scale.
The procedure for settling this case will be regulated by the criminal procedure code.
The infringer may be sentenced up to three years of imprisonment. There is not any clear regulation on the commercial scale, however, in practice, it could be considered as the commercial scale in case the value of the infringement products is higher than the amount of 500,000,000 VND (Five hundred million Dong) equivalent to $US25,000.
Regarding the administrative protection, the infringer may be imposed a fine with the highest amount is 500,000,000 VND (Five hundred millions Dong) – about 25,000 USD.
Regarding the claim for compensation, please be confirmed that you always have the right to claim for compensation in case the infringement action leads to your actual damage.
You could claim the compensation at criminal court or civil court but not administrative procedure.
However, at any time, you could negotiate this matter with the infringer. You are required to prove your actual damage, in case you could not prove this matter, the compensation will be judged by the court and the highest amount of the compensation is 500,000,000VND (Five hundred million Dong) – about 25,000 USD.
Q: What documents must be prepared for conducting an action?
A: In order to conduct an action in Vietnam, you are required to submit the following documents:
– The document proving your right with the intellectual protection object, i.e. trademark, design, patent or copyright;
– The document/information proving the infringement action of the infringer;
-The conclusion of examination of Vietnam Authority, namely Vietnam Intellectual Property Research Institute (VIPRI); Enforcement of Intellectual property shall be proceeded only if the Authority concluded that there is a infringement to your rights. We could conduct this work for you.
– The information of the infringer such as name, address;
– The notarized and legalized Power of Attorney;
– The sample or picture of the infringement products.
Q: How to carry out the trademark protection action in Vietnam? Is there any standard procedure? Which enforcement authorities have the rights to carry out the raid action?
A: The following steps are the procedure for settling an IP infringement in Vietnam:
-Step 1: Investigating and collecting the evidence for proving the infringement. We could assist you in performing this step.
-Step 2: Requesting VIPRI to examine whether the alleged products could be considered as the infringement element against your protected right or not? It is not a compulsory action but the conclusion of examination will be the most important evidence for settling the case.
-Step 3: Based on the conclusion of VIPRI and your request, you could take the following measure for settling the infringement action:
i. Sending a warning letter: We will send a warning letter to the infringer and request them to stop the infringement. It is not compulsory action but recommended.
ii. Request the authority state bodies to handle and settle the infringement action based on the criminal or administrative procedure depending on the result of Step 1 and Step 2. With the administrative procedure, it may take about 3-12 months with the administrative procedure or about 12 – 18 months with the criminal procedure based on the complication of each case.
iii. Bringing the case before a civil court.
The police and/or the inspector of Ministry of Science and Technology (MOST) or Department of Science and Technology of province (DOST) will have the right to carry out the raid action.
Namely, checking the office/store/manufacturer of the infringer based on a request of the owner of the intellectual property right.
Q. After completing a raid action, is there any requirement for identifying infringing products? Is an identification report issued by the intellectual property right holder at its headquarter in its mainland country, e.g. Germany, or by others? If yes, it there any requirement for the time of identification? Is it possible to apply for sampling inspection?
A. In practice, the authority state bodies will perform the raid action based on a request in which the holder of the intellectual property object must submit the evidence proving the infringement action and the conclusion of examination of VIPRI.
The holder may be required to submit an identification report in case the authority state bodies need the further evaluation. The time limit for this action will be set by the authority state bodies. You always have the right to apply for sampling inspection.
Q. How those seized products will be dealt with? Will they be destroyed and if so, will any additional expense occur? Are there any measures, such as fine, mandatory measure, etc., taken for infringers?
A: The seized products will be destroyed in case the infringement element could not be removed from the products. In case the infringement element may be removed from the seized products, the infringer is requested to take this action.
The seized products may be sell without the profit by the authority state bodies in case this action is not against the right of the owner as well as the public. The expenses occur will be paid by the infringer.
The infringer will be punished a fine in case their action is concluded the infringement action against the right of others. The highest amount of the fine is 500,000,000 VND, about $US25,000, depending on the volume of the infringement products.
Q. What is the cost for you to carry out such cases?
A: Our estimated cost will be calculated as below table:
|
No. |
Work |
Our agency fee (USD) |
|
1 |
Investigating the infringer | 800 – 5,000 depending on the scale/complication of the investigation. Please provide us more detail of the infringer so that we could fix the quotation. |
|
2 |
Requesting VIPRI to examine (per request/per class of goods/services). | 500.00 |
|
3 |
Sending the warning letter (per time) | 350.00 |
|
4 |
Requesting the authority state bodies to handle and settle the case | 3,000 – 7,000 depending on the scale/complication of each case |
|
5 |
Bringing the case to the court (criminal or civil court) | 4,000 – 7,000 depending on the scale/complication of each case. |
The above fee is exclusive 5-10% VAT of our agency fee and the disbursement fee such as fee for traveling, translation fee ($US6/100 words), and the fee for notarization or legalization. We will inform you the disbursement fee for your consideration before taking any action.
Q. Any other involved problems in the actual action, if yes, please kindly tell us
A: It is really difficult to remark this matter with you at this time. However, we will give you our advice with any arising problem in each case based on the provided information from your side or from the result of the investigation.
