New decree streamlines IP enforcement procedures

A new decree issued by the Vietnamese government on December 30 2010, which came into effect on February 20 2011, has clarified previous changes to the law and streamlines IP enforcement procedures.

Prior to 2010, IP owners were obliged to send a warning letter and, in cases involving certain types of goods, provide proof of damages, before taking administrative action against infringers. In early 2010 the amended Law on Intellectual Property eliminated the necessity of a prior warning letter, but extended the proof of damages requirement to all types of goods. Although a subsequent regulation (Decree 97/2010) removed the need for proof of damages, the situation remained unclear, as a separate regulation (Decree 105/2006) requiring both a warning letter and proof of damage remained in force. 

The new decree, Decree 119/2010, seeks to remove the uncertainty by amending Decree 105/2006. It also introduces a number of improvements to IP enforcement procedures.
The main provisions of the new decree are summarised below:
  • The decree makes it clear that a warning letter and proof of damage are no longer required before action can be taken against infringers. The necessary amendments have been made to Decree 105/2006 to remove the uncertainty that previously existed.
  • IP rights owners will now be able to rely on a copy of the registration certificate as evidence of the existence and ownership of an IP right, provided that the original is presented for review.   
  • The period within which Customs must deal with petitions for the checking or supervision of imports or exports has been reduced. Previously, pursuant to Decree 105/2006, Customs had up to 30 days within which to deal with such requests; that period has been reduced to 20 days. 
  • Certain provisions relating to the handling of infringements by administrative authorities have been extended to apply to civil and criminal actions. The valuation of infringing goods in criminal and civil cases - which has, in the past, often been slow and problematical - will now be subject to the straightforward valuation method previously prescribed for administrative actions. Likewise, the post-seizure management of infringing goods (eg, whether to detain, return or destroy) in civil and criminal cases will now be subject to the clear guidelines that previously related only to administrative actions.   
  • It will no longer be possible to obtain infringement assessments from qualified agents before commencing proceedings. The decree provides that assessments can no longer be given in relation to infringements, but only in relation to infringing elements (eg, confusing similarity).   
Although the streamlined enforcement procedures contained in Decree 119/2010 should make it easier for IP owners to enforce their rights in Vietnam, the impact of certain provisions remains unclear. It remains to be seen, for example, what effect the removal of the right to obtain infringement assessments will have. It is also unclear, in the absence of any guidance, how the provisions dealing with the valuation and post-seizure management of infringing goods will work in practice, particularly for criminal cases, which require strict compliance with mandatory procedures.       
Trung Nguyen, Rouse Legal, Ho Chi Minh City

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