In the concept of counterfeit goods in Vietnam, there is no concept of counterfeiting in term of industrial designs but only trademarks, origins, geographical indications, etc. Currently, there are many imitation goods in term of industrial design in Vietnam but these goods are only considered as infringing goods, thus, they can only be handled under the Intellectual Property Law, whose sanctions are much lighter than the crime of counterfeiting that prescribed by the Criminal Code (the maximum monetary fine is 250 million VND (approx. 11,000 USD) for individuals and 500 million VND (approx. 22,000 USD) for organizations).
According to Article No. 126 of the Intellectual Property Law, the following acts shall be regarded as infringements of the rights of owners of industrial designs in Vietnam:
1. Using protected industrial designs or industrial designs insignificantly different from protected industrial designs in Vietnam or any original part thereof within valid terms of protection titles without permission of owners;
2. Using industrial designs in Vietnam without paying compensations according to the provisions on provisional rights.
Recently, one of our client – Quang Minh Mechanical Metal Company Limited (a leading Vietnamese company in manufacturing mosquito net doors) discovered a local competitor was using its protected industrial design for “Aluminum profile bar” to manufacture the same products. After receiving the information, Ageless IP Attorneys & Consultants has immediately collected the sample of “Aluminum profile bar”, other necessary evidence and documents then requested the Vietnam Intellectual Property Research Institute (VIPRI) to appraise the act of infringement. Not beyond our expectation, VIPRI concluded that the appraised sample of “Aluminum profile bar” is infringing upon the intellectual property rights of the protected industrial design in Vietnam in the name of Quang Minh Mechanical Metal Company Limited.
Based on the VIPRI’s Appraisal Conclusion as well as the results of an in-depth investigation on the adverse party (business facility, warehouse, trade channel, etc.), we have requested the Department of Market Surveillance (DMS) of Hanoi to handle the act of infringement. Accordingly, the DMS has conducted a raid action at the adverse party’s warehouse and discover a large amount of infringing goods. At the time of inspection, the adverse party had no argument to deny the infringement. As a consequence, the DMS of Hanoi issued a Decision of Administrative Sanction to the adverse party with the following:
– Monetary fine (Clause 1 of Article 2, Point (a) of Clause 1 and Clause 5 & Point (d) of Clause 13 of Article 11 of the Decree No. 99/2013/ND-CP);
– Suspension of business activities with regard to the infringing goods in the period of 02 months (Clause 16 of Article 11 of the Decree No. 99/2013/ND-CP);
– Forcible destruction of the infringing goods (Point (b) of Clause 17 of Article 11 of the Decree No. 99/2013/ND-CP).
In Vietnam, administrative action is considered as the most common way to handle infringements compared to civil action in terms of time, cost and procedures, but also bring certain effects. From this particular case, when bringing a product to market, the enterprise should consider to register all the protectable elements of intellectual property that the product contains (typically trademark, patent and industrial design in Vietnam) to implement administrative action in the most effective way.