(according to the Law No. 07/2022/QH15 dated June 16, 2022 of the National Assembly)
1. Article 201. Intellectual property assessment
Current regulations:
“1. Intellectual property assessment means the use by organizations or individuals defined in Clauses 2 and 3 of this Article of their professional knowledge and expertise to assess and make conclusion on matters related to intellectual property rights.
2. Businesses, cooperatives, non-business units or law-practicing organizations, except foreign law-practicing organizations practicing in Vietnam which satisfy the following conditions may conduct intellectual property assessment:
a/ Having personnel and physical-technical foundations meeting law-prescribed requirements on assessment operations;
b/ Having the function of conducting intellectual property assessment as stated in their business registration certificates or operation registration certificates;
c/ Their heads or persons authorized by their heads possess intellectual property assessor cards.
3. Individuals who fully satisfy the following conditions may be granted intellectual property assessor cards by competent state agencies:
a/ Being a Vietnamese citizen and having full civil act capacity;
b/ Permanently residing in Vietnam;
c/ Possessing good ethical qualities;
d/ Possessing a university or higher degree in a profession relevant to domains in which an assessor card is applied for, having conducted professional activities in these domains for five or more years and passed a professional assessment examination.
4. State agencies competent to handle acts of infringing upon intellectual property rights may request intellectual property assessment when handling cases or matters they have accepted.
5. Intellectual property right holders and other related organizations and individuals may request intellectual property assessment to protect their legitimate rights and interests.
6. The Government shall specify intellectual property assessment organization and activities.”
New regulations:
Clause 3 and Clause 6 Amended Law on Intellectual Property 2022 stay unchanged. Other detailed amendments are:
Clause 1 is supplemented “Judicial Assessment on Intellectual Property is implemented in accordance with the Law on Judicial Assessment” at the end of the Clause in order to plainly separate the judicial assessment activity from the intellectual property assessment activity according to the Law on Intellectual Property.
Supplement Point 1a as follows:
“1a. Intellectual property assessment includes:
- Assessment on protection of copyright and related rights
- Assessment on industrial property rights
- Assessment on rights to plant varieties”
Clause 2 is amended as follows:
“Businesses, cooperatives, non-business units or law-practicing organizations, law-practicing organizations established and operating in accordance with the law has at least one individual possessing an intellectual property assessor’s card may conduct intellectual property assessment, except for the circumstance specified in Clause 2a of this Article.”
It appears that the new regulation is briefer and plainer in comparison with the current one.
In Clause 4, for the first time, the following principles are set forth in the implementation of Intellectual Property assessment:
“4. Principle of assessment implementation includes:
a) Comply with the law, comply with the process and procedures of assessment
b) Honest, accurate, objective, impartial and timely;
c) Only come to conclusion on professional issues within the required scope;
d) Take responsibility before for assessment conclusions;
dd) The cost of assessment is determined according to the agreement between the person requesting the assessment and the assessment organization or individual.”
Clause 5 is amended as follows: “The assessment conclusion is one of the evidence sources for the competent authority to handle and settle the case. The assessment results do not conclude on the infringement of intellectual property rights or conclude on the dispute.”
Thus, for the first time in the Law, the evidence value of the assessment conclusions has been recognized, which is of great significance in the enforcement and protection of intellectual property rights. This is also the first time in a legal document specifying the limitation of the assessment conclusion, specifically the assessment conclusion does not conclude on the infringement of intellectual property rights or the conclusion on the dispute.
2. Article 212. Acts of infringing upon industrial property rights which shall be criminally handled
Current regulations:
“Individuals who commit acts of infringing upon intellectual property rights involving elements which constitute a crime shall be examined for criminal liability according to the provisions of criminal code.”
New regulations:
“Individuals, commercial entity that commit acts of infringing upon intellectual property rights involving elements which constitute a crime shall be examined for criminal liability.”
Law No. 07 has supplemented the entity “commercial legal entity” to be consistent with the current Criminal Code and relevant international commitments. At the same time, the Amended Law 2022 also removes the phrase “according to the provisions of the criminal code” at the end of the law to ensure coherence, accuracy and logic.
3. Article 213. Intellectual property counterfeit goods
Current regulations:
“1. Intellectual property counterfeit goods referred to in this Law include goods bearing counterfeit marks and counterfeit geographical indications (hereinafter referred to as counterfeit mark goods) defined in Clause 2 of this Article and pirated goods defined in Clause 3 of this Article.
2. Counterfeit mark goods are goods or their packages bearing marks or signs which are identical with or indistinguishable from marks or geographical indications currently protected for those very goods without permission of mark owners or organizations managing such geographical indications.
3. Pirated goods are copies made without the permission of copyright or related right subject”.
New regulations:
“1. Intellectual property counterfeit goods referred to in this Law include goods bearing counterfeit marks and goods bearing counterfeit geographical indications and pirated goods defined in Clauses 2,3 and 4 of this Article.
2. Counterfeit mark goods are goods or their packages bearing marks or stamps, labels containing signs that is identical or similar to the extent that it is difficult to distinguish them from the protected mark for their own use without any permission of the owner.
3. Goods bearing counterfeit geographical indications are goods or their packages bearing marks or stamps, labels containing signs that is identical or similar to the extent that it is difficult to distinguish them from the protected geographical indications for their own use and the use of this sign is performed by an organization or individual that does not have the right to use the geographical indication as prescribed in Clause 4, Article 121 of this Law or under the law of the country of origin of that geographical indication.
4. Pirated goods are copies made without the permission of copyright holders or related right holders.”
Therefore, according to the amended Law, Article 213 is divided into 4 clauses (Clause 4 is supplemented compared to the current law), including:
In Clause 1, for the purpose of clearly separating related terms and concepts, the Law has added the word “goods” before the phrase “bearing counterfeit geographical indications” to form a complete and easy-to-understand term: “goods bearing geographical indications” shall be explained in Clause 3.
In Clause 2, there are also some notable amendments and supplements, which are: separating the content of goods bearing counterfeit geographical indications into a separate clause (Clause 3) and more specific regulations on: i) The mark used on the goods, the packages of the goods shall include stamps and labels containing the marks, and ii) have added the phrase “similar to the extent that” before the phrase “difficult to distinguish” in order to ensure the precision of the concept.
Paragraph 3 of the Law has separated and specified what is goods bearing counterfeit geographical indication. Accordingly, similar to counterfeit trademark goods, goods with counterfeit geographical indications are more specific and extensive than currently regulations, namely: i) the signs used on the goods, the packaging of goods is specified as including stamps, labels containing signs and ii) has added the phrase “to the extent that” before the phrase “difficult to distinguish” in order to ensure the accuracy of the concept.
In Clause 4 on pirated goods, there is also an amendment to ensure the coherence, logic and understanding of the law, specifically replacing the phrase “without the permission of the copyright or related right subject“ with provisions “without the permission of the copyright holder or related right holder.”
4. Article 214. Forms of administrative sanction and remedies
Current regulations:
“1. Organizations and individuals that commit acts of infringing upon intellectual property rights defined in Clause 1, Article 211 of this Law shall be compelled to terminate their infringing acts and imposed one of the following principal sanctions:
a/ Caution;
b/ Fine.
2. Depending on the nature and seriousness of their infringements, intellectual property rights-infringing organizations or individuals are also subject to either of the following additional sanctions:
a/ Confiscation of intellectual property counterfeit goods, raw materials, materials and means used mainly for the production or trading of these intellectual property counterfeit goods;
b/ Suspension for a definite time of business activities in domains where infringements have been committed.
3. In addition to the sanctions specified in Clauses 1 and 2 of this Article, intellectual property rights infringers are also subject to either or both of the following consequence remedies:
a/ Compelled destruction or distribution or use for non-commercial purposes of intellectual property counterfeit goods as well as raw materials, materials and means used mainly for the production or trading of these intellectual property counterfeit goods, provided that the destruction, distribution or use does not affect the exploitation of rights by intellectual property right holders;
b/ Compelled transportation out of Vietnamese territory of transit goods infringing upon intellectual property rights or compelled re-export of intellectual property counterfeit goods, as well as imported means, raw materials and materials used mainly for the production or trading of these intellectual property counterfeit goods, after infringing elements are removed from these goods.
4. Administrative sanctions and the competence to administratively sanction infringements upon intellectual property rights comply with the law on handling of administrative violations.”
New regulations:
“1. Organizations and individuals that commit acts of infringing upon intellectual property rights defined in Clause 1, Article 211 of this Law shall be subject to sanctions and remedial measures in accordance with the law on handling administrative violations.
2. In addition to sanctioning forms and remedial measures in accordance with the law on handling of administrative violations, organizations and individuals that infringe intellectual property rights may also be subject to remedial measures of forcing the distribution or putting into use for non-commercial purposes of intellectual property counterfeit goods, raw materials, materials and facilities used mainly for the production and trading of counterfeit goods on intellectual property rights, provided that it does not affect the ability of intellectual property right holders to exploit the rights and meets other conditions as prescribed by the Government.
3. Penalty rate, competence to sanction administrative violations for acts of infringing upon intellectual property rights shall comply with the provisions of law on handling of administrative violations.”
4. Administrative sanctions and the competence to administratively sanction infringements upon intellectual property rights comply with the law on handling of administrative violations.”
Thus, it can be seen that the Amended Law has omitted a Clause (Clause 4) and is much shorter than the current regulation. Specifically:
In Clause 1 of the law, there has been a fundamental amendment by only recording in principle: acts of infringing upon intellectual property rights will be applied in accordance with the provisions of law on handling of administrative violations. This ensures the consistency of the legal system, especially between the law on intellectual property and the law on handling of administrative violations, and ensures the rigor and consistency in guidance and application.
Clause 2 of the Article is also amended in the same way of Clause 1 and specifically stipulates that the application of remedial measures specific to the field of intellectual property is “forcing the distribution or putting into use for non-commercial purposes of intellectual property counterfeit goods, raw materials, materials and facilities used mainly for the production and trading of counterfeit goods on intellectual property rights”. In order to ensure harmonization of rights holders’ interest and social interests, Clause 2 also specifies the general conditions for applying the above specific remedial measures as follows: “provided that it does not affect the ability to exploit the rights of intellectual property right holders and meet other conditions as prescribed by the Government.”
5. Article 215. Preventive measures to secure the administrative sanctioning
Current regulations
1. In the following circumstances, organizations and individuals shall have the right to request competent agencies to apply preventive measures to secure the administrative sanctioning specified in Clause 2 of this Article:
a/ Acts of infringing upon intellectual property rights are likely to cause serious damage to consumers or society;
b/ Infringement material evidence is likely to be dispersed or infringing individuals or organizations show signs of shirking their liabilities;
c/ To secure the enforcement of decisions on sanctioning of administrative violations.
2. Preventive measures to secure the administrative sanctioning applied according to administrative procedures to acts of infringing upon intellectual property rights include:
a/ Temporary custody of persons;
b/ Temporary custody of infringing goods, material evidence and means;
c/ Body search;
d/ Search of means of transport and objects; search of places where infringing goods, material evidence and means are hidden;
dd/ Other administrative preventive measures according to the provisions of law on handling of administrative violations.
New regulations
In line with the orientation and guidelines for amending the Intellectual Property Law as mentioned in Section 3) above, the revised law has completely abolished Article 215 of the current law. In that spirit, the application of measures to prevent and ensure administrative sanctions will be governed by the law on handling of administrative violations.
6. Control of export and import goods related to intellectual property
6.1. Article 216. Measures to control intellectual property-related imports and/or exports
Current regulations:
“1. Measures to control intellectual property-related imports and exports include:
a/ Suspension of customs procedures for goods suspected of infringing upon intellectual property rights;
b/ Inspection and supervision to detect goods showing signs of intellectual property right infringement.
2. Suspension of customs procedures for goods suspected of infringing upon intellectual property rights means a measure taken at the request of intellectual property right holders in order to collect information and evidence on goods lots in question so that the intellectual property right holders can exercise the right to request the handling of infringing acts and request the application of provisional urgent measures or preventive measures to secure the administrative sanctioning.
3. Inspection and supervision to detect goods showing signs of infringement of intellectual property rights means a measure taken at the request of intellectual property right holders in order to collect information so that they can exercise the right to request the suspension of customs procedures.
4. In the course of application of the measures specified in Clauses 2 and 3 of this Article, if any intellectual property counterfeit goods are detected according to Article 213 of this Law, customs offices shall have the right and responsibility to apply administrative remedies to handle them according to the provisions of Article 214 and Article 215 of this Law.”
New regulations:
To amend and supplement Clause 2 as follows:
“Suspension of customs procedures for goods suspected of infringing upon intellectual property rights is a measure taken in the following cases:
a) At the request of intellectual property right holders in order to collect information and evidence on goods lots so that the intellectual property right holders can enforce the right to request the handling of infringing acts and request the application of temporary emergency measures or preventive measures to secure the administrative sanctioning;
b) The customs offices actively implement if, during the course of inspection, supervision and examination, it is discovered that there are grounds for suspecting that imported or exported goods are intellectual property counterfeit goods”
Thus, the new regulation has established two mechanisms for customs office to base on which to suspend customs procedures. In particular, the regulation “customs office actively implements” has emphasized the role of the customs office, which is the basis for the functional forces to further develop their capacity, at the same time, it is also a requirement to enhance the sense of responsibility in performing official duties.
The new law also adds Clause 5 as follows: “The Government shall detail Point b, Clause 2 of this Article” aims to ensure that the application and implementation of the mechanism to proactively suspend customs procedures are consistent and coherent.
6.2. Article 218. Procedures for application of the measure of suspension of customs procedures
Current regulations:
“1. When persons requesting the suspension of customs procedures have fulfilled their obligations specified in Article 217 of this Law, customs offices shall issue decisions on suspension of customs procedures with regard to goods lots. The customs office provides the intellectual property right holder with information about the name and address of the consignor; exporter, consignee or importer; description of the goods; quantity of goods; the country of origin of the goods, if known, within thirty days from the date of issuance of the decision to apply administrative measures to deal with counterfeit goods in terms of trademarks and pirated goods as prescribed in Clause 4 Article 216 of this Law.
2. The duration of suspension of customs procedures is ten working days after the customs procedure suspension requester receives the customs office’s notice of customs procedures suspension. In case the customs procedure suspension requester has a justifiable reason, this duration may be prolonged but must not exceed twenty working days, provided that the requester deposits a security specified in Clause 2, Article 217 of this Law.
3. Upon the expiration of the duration specified in Clause 2 of this Article, if customs procedure suspension requesters do not institute civil lawsuits and customs offices decide not to accept the cases for handling of administrative violations of goods lot exporters or importers according to administrative procedures, customs offices have the following responsibilities:
a/ To continue carrying out customs procedures for goods lots in question;
b/ To compel customs procedure suspension requesters to compensate all the damage caused to goods lot owners due to their unreasonable requests, and pay expenses for the warehousing and preservation of goods as well as other expenses incurred by customs offices and other related agencies, organizations and individuals under the customs law;
c/ To refund to customs procedure suspension requesters the remaining security amount after the obligation of paying compensations and expenses specified at Point b of this Clause is fulfilled.”
New regulations:
To supplement Clause 4 after Clause 3, Article 218 as follows:
“4. In the event that the customs office proactively suspends customs procedures, the customs office must immediately notify the intellectual property right holder if there is any contact information and the importer or exporter about the suspension.
Within ten working days from the date of notification, if the intellectual property right holder does not initiate a civil lawsuit and the customs office does not decide to accept the case according to administrative violation handling procedures, the customs office is responsible for continuing to carry out customs procedures for the goods lot.”
With the above supplementary regulation, on the one hand, it strengthens the role and responsibility of customs offices in proactively monitoring and promptly detecting infringements of intellectual property rights, on the other hand, also requires the responsibility of coordinating from the intellectual property right holder in order to handle the case as quickly as possible in both the cases of violation or no violation for not affecting or abusing the right to prevent lawful export and import activities of other organizations, individuals and businesses.
The Effect of Law No. 07/2022/QH15 dated June 16, 2022 This Law takes effect from January 1, 2023, except for the cases specified in Clauses 2 and 3 of this Article.
Mr. Tang Duc Khuong and Ms. Tran Thanh Binh
Enforcement and Litigation Department
INVESTIP IP LAW FIRM
