Enforcing US trademark rights still difficult despite bilateral treaty

Vietnam has implemented the provisions of Chapter II of the US-Vietnam bilateral trade agreement that relate to trademarks. As a result, it accords to US national treatment no less favourable than it accords to its own nationals with regard to the acquisition, protection and enforcement of trademark rights.

Nevertheless, US trademark owners may still find it difficult to enforce marks in Vietnam. Pursuant to the agreement, each party is required to ensure that any decision on the merits in a judicial or administrative enforcement proceeding is:

• in writing and states the reasons on which the decision is based;
   
• made available without undue delay; and
   
• based only on evidence in respect of which the parties to the proceeding were offered the opportunity to be heard.

The parties to an administrative proceeding must also have the opportunity to have final administrative decisions reviewed by a judicial authority. It is in respect of court proceedings that Vietnam needs reforms. Currently, there is a lack of:

• clear court procedures for dealing with IP infringement complaints;
   
• judges who have the specialist knowledge to deal with IP cases; and
   
• legal precedents.

In addition, there is no requirement to prove that actual damages have been incurred.

Clearly, if Vietnam aims to protect local and US trademark owners, a division of the people's court must be set up to deal exclusively with cases involving IP infringement, and procedures must be established that allow for the imposition of sanctions such as fines, warnings, injunctions, damages, confiscation orders and revocation of business licences.

Anthony Muratore, Freehills, Sydney