Filing applications for the registration of your intellectual property (IP) rights is an initial step toward establishing a legal base for IP protection. Nevertheless, how your IP rights can be subsequently protected and enforced in an emerging marketplace is another important matter. This is of special concern in a market that is fast becoming a hub of investment and trade like Vietnam following its accession to the World Trade Organization. Production and distribution of goods and services is now booming, and infringements of IP rights are becoming more frequent as well as sophisticated, as is the case in many developing countries.

Under Vietnamese law, IP right holders have several options for combating infringement activities. The 2005 Law on Intellectual Property ("IP Law") which went into effect on July 1, 2006, provides a toolkit of strong legal remedies to IP right holders for dealing with infringements of their IP rights and vested IP holders with the following rights (Section 198):

• The right to apply technological measures for precluding an infringement of IP rights;
• Right to request that infringers stop infringing actions, make a public apology, take corrective action and/or compensate for damages;
• Right to petition to competent state authorities to handle IP rights infringement; and the
• Right to make a claim at court or in arbitration to handle IP rights infringement.

Under the IP Law, the legal avenues available to IP right holders include civil and criminal, administrative, export-import control and unfair competition remedies.

Civil and Criminal Remedies

Vietnamese law stipulates certain civil remedies that IP right holders can take to stop infringement actions and request compensation for damages by lodging claims against infringers at the courts. The courts can, based on these claims and given evidence of infringement, call for infringers to take any or all of the following actions:

• Stop infringement actions;
• Make public rectification and apology;
• Fulfill specified other civil obligations;
• Compensate for damages;
• Destroy the infringing goods, raw materials and/or manufacturing facilities that are predominantly used for the production and trade of infringing goods; and
• Force the infringing goods, raw materials and/or manufacturing facilities predominantly used for the production and trade of infringing goods to be used or distributed for non-commercial purposes, provided that such infringing goods are of value for such use, that all infringing elements have been eliminated from the goods and that the non-commercial distribution or use does not unreasonably affect the normal exercise of the rights of the IP rights holder. Distribution or use for humanitarian purposes, charity and in the social interest is given priority.

Relevant provisions set forth in the IP Law, Decree 105, Decree 106, 2004 Civil Judicial Process Code and all other relevant laws and regulations shall be used for making such decisions.

Provisions for Preliminary Injunctions

Section 207 of the IP Law and Section 102 of the Civil Judicial Process Code further provide IP right holders with the right to request that the courts impose the following preliminary injunctions, whenever they are relevant, to the parties or goods suspected of infringing IP rights, including any raw materials or manufacturing facilities that are predominantly used for the production and trading of such goods.

• Seizure of the relevant goods
• Enumeration and distrainment of such goods
• Putting such goods under court seal
• Prohibiting any change in the state of such goods
• Prohibiting the moving of such goods
• Prohibiting the transfer of the ownership right to such goods

One of the statutory conditions for the courts to impose either or all of the above-mentioned injunctions is that IP right holders will have to take on the responsibility of compensating any party adversely affected by such injunctions if the court decides that no infringement has taken place. Therefore, the court can request IP right holders to provide a financial guarantee for the fulfillment of that responsibility by submitting a bank's guarantee to the courts for an amount equal to 20% of the value of such goods, or at least VND20 million (~US$1,300) if the value of such goods is undetermined. The guaranteed amount shall be reimbursed to IP right holders either in full or after deducting the compensation for damages caused, depending on the decision of the court.

Injunction relief will be applied at the request of IPR holders, when the party suffering under the injunction sends in assets or submits a third-party guarantee for the performance of its obligations or when the civil obligations of the party suffering injunction terminate.
IP rights infringers may be subjected to criminal liability in some cases, as Criminal Law sets out criminal punishments for serious infringements of IP rights, the production and trade in counterfeits, false advertising, etc.

Courts at Two Levels and Appeals

Depending on the nature and complexity of the dispute, IP right holders can request two courts to settle infringement actions in relation to their IP rights, at district or provincial court levels, for the first trial. If they disagree with the decisions of the court in the first instance, IP right holders shall be entitled to appeal such decisions at the court of appeal of the provincial court or Supreme Court. IP disputes related to foreign IP right holders must first be handled by the provincial court in the first instance and, in case of appeal, at the Supreme Court. Decisions given by courts of appeal can be put under judicial reconsideration at the protest of the director of the Supreme Court, the Supreme Procuracy. IP right holders can submit new circumstances or new evidences and proof to the Supreme Procuracy, Supreme Court.

In addition to forcing infringers to stop their infringing activities, IP right holders will not only benefit from claiming compensation for damages but also by strengthening the deterrence for other infringers or parties who intend to counterfeit the intellectual property of the rights holders. However, a disadvantage of the legal procedures are the long and complicated processes involved, as it takes about two months for simple cases to be resolved and four months for more complicated cases.

Intellectual property rights infringers who have been ruled against in a court judgment will be given a period in which to voluntarily comply with the court's decision. Failure to do this within the given period will give IP holders the right to request the Vietnamese authorities to initiate enforcement measures against the infringers.

Administrative Remedies

Administrative remedies are the most common way IP right holders seek to settle infringement actions. The advantage of this procedure is that it is a less complicated way for IP right holders to protect their interests. However, the disadvantage is that IP holders cannot claim compensation for damages this way, and may have to cope with the duplicity of officials who accept bribes from infringers.
Under these procedures, IP holders can file petitions to the IP management authorities, such as inspectorates, market control agencies, customs offices, police and the people's committee at all levels, requesting that they settle infringement actions by imposing administrative remedies upon infringers. If the infringement is clear, the IP management authorities will force infringers to stop the infringement actions and either issue a warning or levy a fine, being equal to the least value of the infringing goods and not exceeding five times such value.

Depending on the seriousness of the infringement, one of the following sanctions may be additionally imposed on infringers:

• Seizure of the goods, including the raw materials and manufacturing facilities that are predominantly used for the manufacture or trade of the infringing goods;
• Suspension of the infringers' business operations for a specific duration;
• Destruction of the infringing goods;
• Requiring the distribution or use of the infringing goods for non-commercial purposes, provided that such distribution or use satisfies the conditions applicable under civil remedies mentioned above; and
• Requiring the transit or re-export of infringing goods out of Vietnamese territory, after eliminating all the infringing elements from them.

Under other circumstances, IP right holders are entitled to request IP management authorities to initiate the following preventive or administrative remedies against infringers: provisional arrest; provisional confiscation of the goods and related means; personal searches; searching the means of transport, objects and places where infringing goods may be concealed; and exhibits.

Import-Export Control Remedies

The IP Law and the Law on Customs provide IP right holders with an additional legal tool, import-export control (IPEC) remedies, for protecting their IP rights by controlling the flow of infringing goods in and out of Vietnam.

IP right holders have the right to request that customs offices conduct investigations and take action to deter such goods from being brought into or out of Vietnam, if they believe such goods would infringe their IP rights. At the request of IP owners, customs offices can (a) provisionally suspend customs procedures related to goods suspected of IP infringement or (b) inspect the goods to determine if there is evidence of infringement that would allow IP holders to request a suspension of customs procedures.

A note of caution for IP right holders opting to use these mechanisms is that they must take responsibility for any adverse affect caused to a party by these IPEC remedies if a court fails to find sufficient evidence of infringement or the customs office, for whatever reason, does not accept the IPEC request. To guarantee the fulfillment of this responsibility, the customs office will request IP right holders to provide a financial guarantee similar to that for the application of injunctions under the civil remedies outlined above.

Border enforcement includes close coordination between customs offices and other competent state authorities, such as the National Office of Intellectual Property, the ministries of Finance, Science and Technology, and the General Customs Department.

Unfair Competition Remedies

IP right holders can request the Competition Control Administration Agency to apply administrative sanctions against manufacturers, traders and business establishments for unfair-competition actions that are deemed to infringe their IP rights under the 2004 Law on Competition. Actions that would be deemed unfair to competition and constitute infringement actions include using trade indications that would mislead consumers; unauthorized use of another's business secrets; unfair competition advertisements and trade promotions, including the unauthorized use or imitation of another's advertisement, trade promotion or samples; or a comparison or citation of another's goods and services in an advertisement or trade promotion.

The competition agency can, based on a petition and evidence submitted by IP right holders, conduct investigations of unfair competition and may consider pursuing administrative remedies to prevent them, issuing a warning and/or levying a fine.

Depending on the level and seriousness of the unfair competition actions, the competition authority can impose one of the following additional sanctions on unfair competitors:

• Withdraw the business registration;
• Confiscate the means and exhibits related to the unfair competition;
• Restructure the corporate or organizational structure of the unfair competitors;
• Request public rectification or an apology;
• Request the elimination of the unfair competition elements from all relevant goods and materials.

If any party to dispute does not appeal the decision of the competition authority within 30 working days from its issuance, it will be enforced against the unfair competitors in favor of the rights holders. The IP holders or the accused can appeal against that decision at the administrative courts of Vietnam, the judgment of which is final.

Evidences and Proof of Rights Infringement

In order for state authorities to apply the relevant remedies against infringers, IP right holders must prove that their IP rights are protected under Vietnamese law and are being infringed by submitting proper evidence of the protection claimed and proof of the infringement. Initial investigations and an in-depth analysis of the alleged infringement should be conducted to ensure the success and minimize the risks of enforcement actions. As to unregistered IP rights, documents proving the existence of copyright and related rights, well known marks, etc., are useful to support the state authorities in applying the relevant remedies against infringement actions.
The infringement of IP rights in Vietnam is becoming more sophisticated, and infringers now know more about technical elements that could help them minimize, avoid or escape from the punishments for IP rights infringement meted out by the authorities. In contrast, the expertise and qualifications of state agencies in dealing with these complicated matters are still limited. The state authorities of Vietnam need much more technical and analytical assistance, as well as close coordination with IP right holders and the professional services of IP attorneys with experience in dealing with infringement. While registering IP rights in Vietnam is an important step toward legal protection, how to fight against infringement actions successfully in the emerging marketplace remains an open question.

To take action against infringers/infringement of intellectual property rights at the courts or competent authorities in Vietnam, please provide us with as the following information and documents:

• Full name, address and nationality of IP rights holder;
• Notarized copies of title of protection of intellectual property rights or any documents proving the protection of such intellectual property rights under the laws of Vietnam;
• Any of the proofs, evidence on infringement actions, such as infringing products/services, import-export track records, commercial displays, specific locations or place showing or selling infringing products, providing infringing services, production activities, etc.;
• Any information on infringer;
• Initial assessment or opinion on infringement;
• Outline of claims;
• Estimation of compensation if claiming for compensation of damages;
• An original Power of Attorney executed by IP rights holder in favor of bizconsult law LLC.