GovWire

1. Introduction

Intellectual property (IP) enforcement remains a business concern in Vietnam. The inadequacy of IP enforcement information and resulting lack of transparency is a barrier for foreign investors. This Manual on IP enforcement in Vietnam has been developed for businesses operating or planning to expand in Vietnam.

The Manual includes details of the laws and regulations as well as the IP enforcement procedures in Vietnam. It uses a definition of enforcement that parallels the World Trade Organizations Trade Related aspects of Intellectual Property (TRIPS) agreement. This means it focuses on trade mark and copyright enforcement procedures - which in common parlance means trade mark counterfeiting and copyright piracy. The types of enforcement systems most commonly used to deal with these two issues are administrative systems (including customs), the criminal and the civil courts. Other forms of IP exist (e.g. patents, designs) but their enforcement is not as straightforward and therefore, is not subject to the scope of this Manual.

The Manual is up to date as of 30 April 2020. The Manual is for informational purposes only so users should take local legal advice on specific cases.

2. Overview of Vietnams legal and IP system

IP rights are important assets for all businesses. It is crucial to ensure these rights are properly protected in a modern economy. It is also a key business goal to be able to make effective use of them commercially as well as to enforce those rights against infringement when necessary.

IP protection in Vietnam operates under a first-to-file system (except for copyright and related rights that are protected automatically under international treaties). Trade marks, industrial designs and inventions must be registered at the National Office of Intellectual Property (IP Vietnam). The registration system in Vietnam is relatively well-established and straightforward, although delay can be an issue. However, to enforce IP rights, the right holders must use a rather complex and practically challenging system. To effectively enforce IP, a combined strategy of self-protection measures (for small scale infringers), administrative actions (to halt the infringing acts and apply for customs border protection), civil remedies (to claim damages and put a stop to infringement) and criminal remedies (to stop large scale counterfeiting) are required.

It can be difficult for businesses, especially foreign investors, to understand an unfamiliar legal system and its IP protection and enforcement subset. The first step is to understand the basic characteristics of a countrys legal system before looking at its IP protection and enforcement procedures.

Vietnams legal system has all characteristics of a civil law jurisdiction, in which, its sources of law comprise of written legislations commonly known as laws and regulations. The legal system is organised in a hierarchy in which the higher-ranking legal instruments set out general rules and lower-ranking legal instruments provide the details. The Constitution stands at the top of this legal hierarchy and forms the foundation of the entire legal system. Under the Constitution are laws, decrees, decisions, circulars and other subordinate legal documents dealing with different regulatory aspects.

Parliament makes all the laws. These are based on policies set by the Communist Party that can form a legislation. Government and Ministries make regulations and subsidiary guidelines. These laws and regulations are enacted by state bodies which are binding on citizens and enforceable by the state authorities. The courts are technically lower ranked than the legislature, so it cannot be said there is a complete rule of law in the English sense. The Peoples Supreme Court is the highest court, followed by the high courts, the province-level courts and district-level courts in that order.

Lawyers can be engaged to handle legal issues. The legal profession is governed by the Vietnam Law on Lawyers and administered by the Vietnam Bar Federation (VBF).

The World Justice Project Rule of Law index ranks Vietnam 85/113 countries. The Civil Justice system among others was identified as one area of legal weakness. There has been a great deal of effort from the government to improve and upgrade the legal system in recent years.

2.1 IP system

IP is a technical area of law. While many general lawyers do practice IP law, in many countries there is a separate IP profession. IP agents can represent foreign business to register IP rights before IP Vietnam and the Copyright Office (COV). IP Lawyers are qualified lawyers specialising in IP who generally advise on IP matters and represent clients before the courts for IP disputes.

The IP system can be broken into three components:

• registration and protection system. The system is operated by IP Vietnam (which sits under the Ministry of Science and Technology) and the COV (which is under the Ministry of Culture, Sport and Tourism). Businesses can register their trade marks, designs and patents at IP Vietnam and their copyright and related rights at the Copyright Office
• commercialisation of IP. This typically means IP contracts such as licenses, assignments, and other commercial agreement involving IP
• enforcement through administrative, civil or criminal routes

In addition to managing the registration systems, IP Vietnam also advises enforcement authorities, including the courts, through technical opinions required during the process of enforcement.

Vietnams laws and regulations on IP protection are currently under review and expected to be amended in accordance with the EU-Vietnam Free Trade Agreement (EVFTA) to which Vietnam is a signatory. It has an IP chapter and requires Vietnam to provide greater IP protection to right holders.

A feature of Vietnams enforcement system, which is similar to that of China, is the use of an administrative enforcement system, whereby legal complaints are filed to a government department that inspects, investigates and reaches a decision on IP disputes. In most other SE Asian countries this is rare or nonexistent. An administrative enforcement function is a common feature in many current and former centrally planned socialist economies.

IP Vietnams Annual Report 2018 highlighted that Vietnam has made progress in handling trade mark infringement over the years. In particular, there was an increase in the number of administrative IP cases in the last 5 years (2014 2018), from 1082 cases in 2014 to 1717 cases in 2018. The total monetary fines recorded against infringers in these two years were Vietnamese dong (VND) 15,223,701,000 in total and VND 23.697.375.000 respectively.

2.2 IP challenges

Vietnam remained on the US Governments Priority Watch List in 2020 as per the USTR Special 301 Report 2020. It reported that despite positive developments in IP enforcement, some concerns that remained were mainly around:

• lack of coordination among the enforcement agencies
• limited institutional capacity and stretched resources related to IP enforcement
• high level of counterfeiting and copyright piracy

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