Mind the Gap - The IP Protection law vs. enforcement reality in Vietnam
IP enforcement in key global markets is increasingly complex. What's the legal theory? What's the reality in practice?
The Enforcement Gap refers to the difference between legal theory on anti-counterfeiting; that is how the laws purport to prevent such illegal activities and the practical outcomes. This is the sixth contribution in a series of articles which examines the Enforcement Gap. Our last six pieces explored the the Enforcement Gap in Thailand, Russia, China, Philippines, Indonesia, Cambodia and the UAE. The Enforcement Gap in Vietnam Civil litigation
In Vietnam, IPR holders are increasing their reliance on civil litigation for complex disputes and large-scale infringements. By taking civil action, IPR holders can request for provisional measures (preliminary injunctions) and claim for legal remedies, such as damages. However, civil litigation is usually not the first solution taken by IPR holders because Vietnam traditionally does not favor litigation. This is because the IPRs holder will have to consider the amount of time required to bring a case to court, and there is still a lack of IP expertise and resources within the judicial system, meaning that case outcomes could be somewhat unpredictable. By cooperating with international organisations and government agencies, Vietnamese authorities are in the progress of improving IP expertise training for court officials, judges, customs, and other IP enforcement authorities.
In practice, IPR holders are not required to go through every civil litigation procedure to obtain a favorable verdict by the Court. IPR holders can, after an initial warning (i.e. C&D letter), initiate a lawsuit against the infringers to pressure them to comply or bring them to the bargaining table. Coordination between enforcement authorities
Another factor that impedes the progress of Vietnam’s IP enforcement is the poor coordination between enforcement authorities. Although there are regulations stipulating the coordination between enforcement authorities, the implementation of such regulations is problematic. As a consequence, the enforcement process may be delayed or even deadlocked.
A good example can be found in a case where the target’s trade name constituted as trademark infringement. The infringing element was seen in the target’s registered company name and used on its business facilities. It was stated that the Business Registration Authority shall request the target to amend their trade name based on an official sanction issued by the Department of Science and Technology. Instead of issuing a sanction, the Department of Science and Technology merely issued a Notification of handling the infringement. Given the lack of sanction, the Business Registration Authority did not issue a decision to force the target to remove the infringing elements from its registered trade name.
Another scenario that involves the coordination of various authorities are infringements occurring on the Internet. Enforcement authorities may not have the same opinions regarding the nature of infringement or lack of coordination mechanism, resulting in difficulties in the enforcement process. Domain name “.vn” resolution Cybersquatting has become a growing issue in Vietnam, especially in regard to the act of registering “.vn” country code top-level domain names that contain or closely imitate the trade marks of foreign companies (mainly well-known ones). The cybersquatter often acts in bad faith by using or operating infringing domain names to exploit the reputation of the trade mark to attract consumers and increase sales revenue or to extort payment from the trade mark owner for its transfer. To resolve disputes involving a “.vn” domain name, the following routes are available to IPR holders:
Negotiation or conciliation with the registrant;
Initiating arbitration for settlement;
Proceed with the administrative route for the registrant's act of unfair competition relating to the use and registration of a disputed domain name;
Initiating civil litigation at a competent court for judgment.
Theoretically, if negotiations or conciliations with the cybersquatter are not fruitful, the IPR holder could initiate arbitration or civil litigation before the courts or take administrative action before the Inspectorate of Ministry of Science and Technology. In practice, however, the arbitration and administrative routes are relatively infeasible. This is because the arbitration route generally requires the mutual agreement by the respondent and the complainant to settle the case and the administrative enforcement authorities are required have a face-to-face meeting with the cybersquatter to serve their decision. Therefore, the best route for resolving disputes would be civil litigation.