by Chris Vale and Han Le of Rouse Legal (HCM City Branch) In making provisions for civil intellectual property (IP) infringement actions, the IP Law of 2006 encourages brand owners to enforce their IP rights through the courts. However, to date very few IP cases have been litigated. One reason for this is that brand owners who tend to be international companies do not yet have full confidence in the IP courts – civil litigation is subject to complicated procedures and delays. In an attempt to improve the system, the Government has recently issued a circular providing guidance on civil IP infringement proceedings.

Following promulgation of the Competition Law in 2005, unfair competition cases – which relate to cases of “lookalikes”, i.e. brands made to look like a famous brand – gave rise to a debate as to whether the court had jurisdiction to deal with such cases due to the ambiguity of the law. In other jurisdictions, unfair competition cases are dealt with by the courts. The circular addresses this issue by affirming that the civil courts have jurisdiction to hear all IP matters, including unfair competition cases.

Both brand owners and their registered licensees have the right to bring infringement proceedings. In cases involving registered rights such as patents and trade-marks, the court will accept jurisdiction on the basis of a valid Certificate of Registration. At the request of brand owners, the civil court is empowered to grant remedies which include (i) cessation of infringement; (ii) public rectification and apology; (iii) compensatory damages and (iv) destruction or non-commercial disposal of infringing goods.

When seeking to resolve matters through the civil courts, brand owners will generally concentrate on obtaining orders for cessation of infringement and compensatory damages. The circular sets out conditions for claiming compensatory damages. The owner or registered licensee will be entitled to compensatory damages, both monetary (eg loss of profit) and non-monetary (eg loss of reputation) provided it can establish that it has suffered actual damage as a result of the infringement. It must show (i) its IP right entitled it to a particular benefit; (ii) it had the capacity itself to realise that benefit; and (iii) the infringement has deprived it of the benefit.

One of the most important weapons for brand owners is a preliminary injunction which can put a stop to infringement before the damage becomes irreparable. An injunction is a court order to stop doing something – in this case it would be to stop trading in the infringing product immediately. Preliminary injunctions may be granted on, or after, the commencement of civil proceedings. An injunction will be granted only where there is a likelihood of irreparable damage or the destruction/dispersion of evidence. The judges will grant preliminary injunctions prior to hearing arguments from the defendant.

According to the IP law, the burden of proof rests with the plaintiff. It must provide evidence of ownership and infringement of the IP rights. An exception exists in relation to process patents where the defendant must prove that its product has not been produced by the patented process.

Although IP infringement in Viet Nam is becoming more and more sophisticated, a specialist IP court is yet to be established. Some jurisdictions, for example Thailand, do have specialist IP courts. Judges currently (and understandably given the lack of cases so far) have insufficient IP experience to enable them to dispose of IP infringement cases promptly and effectively. In order to rectify this situation, the circular makes provisions for co-ordination between court and IP authorities, pursuant to which the court may obtain expert opinions from the IP authorities, such as the National Office of Intellectual Property, which has the most experience in Viet Nam for handling IP matters.

The circular reflects Viet Nam’s intention to shift IP infringement cases from the administrative authorities to the courts. It is the first detailed guidance to be provided since the IP law came into force, and should greatly improve the ability of the courts to deal effectively with IP infringement cases. — VNS