Vietnam – Decree No. 65/2023/ND-CP issued with changes to IPR enforcement

1. Determining acts of infringement on intellectual property rights (Article 72)

♦ Determining the acts of infringement, along with understanding the nature and scope of the infringement, involves certain criteria. An act qualifies as an infringement only if all the following conditions are satisfied:

a) the subject in question falls within the protected scope of intellectual property;

b) the subject shows element that infringes upon the rights of the intellectual property holder; and

c) the individual performing the act is neither the rightful owner nor an authorized person.

♦ Decree No. 65 further elaborates on the specific criteria for recognizing elements that infringe upon patents, layout designs, industrial designs, trademarks, geographical indications (GI), trade names, and plant variety rights.

♦ It is worth noting that Decree No. 65 exclusively pertains to infringements occurring within the borders of Vietnam. However, if the acts of infringement transpire on the internet with a Vietnamese domain name, use Vietnamese as the primary language of communication, or target Vietnamese consumers or users, they are also deemed to have taken place within the jurisdiction of Vietnam.

2. Determining loss/damage (Article 82 – 87)

In Decree No. 65/2023/ND-CP, which guides the implementation of the Intellectual Property Law on industrial property in Vietnam, determining loss/damage due to intellectual property (IP) infringement involves several key elements:

♦ Damage caused by the infringement of industrial property rights and plant variety rights, as stipulated in Article 204 of the Intellectual Property Law, refers to actual material and spiritual losses resulting from direct infringement acts against the rights holder.

♦ It is considered as having actual damage if all of the following conditions are met:

a) The material or spiritual benefits are real and belong to the aggrieved person.

b) The aggrieved person has the potential to attain the benefits specified in point a of this clause.

c) There is a reduction or loss of benefits for the aggrieved person after the infringement act compared to their capacity to attain those benefits in the absence of the infringement, and the infringement act itself is the direct cause of this reduction or loss of benefits.

♦ Property Loss, Spiritual Loss, Income and Profit Reduction, and Business Opportunity Loss are determined in accordance with the regulations from Article 83 to Article 87 of Decree No. 65/2023/ND-CP.

3. Handling of IPR infringing goods (Article 96)

In contrast to earlier regulations where authorities had exclusive control over addressing IPR infringements Decree No.65 empowers IPR holders to request authorities to compel manufacturers of IPR infringing goods to recall products which have been brought through their distribution networks in some circumstances, facilitating the implementation of appropriate administrative measures.

4. Custom control (Article 103)

♦ During the course of inspection, supervision, and control activities, Customs sub-divisions now have the discretion to issue decisions to temporarily suspend customs procedures for goods suspected of being counterfeit trademarks or geographical indications, provided that there is clear evidence proving the infringement.

♦ When contact information is available, it is mandatory for the customs sub-division to promptly inform the rights holder of the trademarks or geographical indications and the relevant importer/exporter;

♦ The temporary suspension of customs procedures may not exceed 10 days from the date of notification by the customs authorities to the rights holder, as stipulated in point 2 of this Article.

♦ In the event that the goods’ owner incurs losses due to erroneous proactive suspension actions taken by the customs sub-division, the customs sub-division is required to compensate the goods’ owner for the losses and cover associated expenses as specified by law.

5. Content and Scope of Assessment of Intellectual Property and Plant Variety Rights (Article 114 – 122)

In comparison with the previous regulations, assessments in term of intellectual property and plant variety rights are adjusted with key points as follows:

a) Determining the scope of protection for the subject of industrial property and plant variety rights;

b) Assessing whether the subject under consideration meets the conditions for being deemed an infringement of intellectual property or plant variety rights;

c) Evaluating whether there is similarity, identicalness, confusion, difficulty in distinguishing, or replication between the subject under consideration and the subject being protected; and

d) Establishing the value of intellectual property and plant variety rights using the valuation method prescribed by the pricing laws; determining the value of damages as stipulated in Articles 204 and 205 of the Intellectual Property Law.

In a nutshell, Decree No. 65/2023/ND-CP is a vital instrument in the implementation of Vietnam’s Intellectual Property Law, ensuring the protection and enforcement of intellectual property rights in a manner that fosters innovation, supports economic growth, and aligns with international standards and agreements.

By Trinh Duong Van

Enforcement Department