Is Custom Recordal of Intellectual Property Rights (IPRs) available in Vietnam?
Is Custom Recordal of IPRs compulsory in Vietnam?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Vietnam?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Vietnam?
The following laws provide the legal basis for customs recordal:
1. The Intellectual Property Law No. 50/2005/QH11, dated 29th November 2005, as amended in 2009 (the "IP Law").
2. The Customs Law No. 29/2001/QH10 dated 29th June 2001, as amended and supplemented in 2005.
3. The Decree No. 105/2006/ND-CP guiding the implementation of a number of provisions of the IP Law dated 22nd September 2006, which was amended and supplemented by Decree No. 119/2010/ND-CP dated 30th December 2010.
4. The Decree No. 154/2005/ND-CP dated 15th December 2005 guiding the implementation of a number of provisions of the Customs Law.
5. Joint Circular No. 129/2004/TTLT-BTC-BKHCN guiding the application of border control measures for industrial property for export goods and import goods dated 29th December 2004.
6. The Decision No. 916/QD-TCHQ dated 31st March 2008 promulgating regulations on receiving requests for controlling import-export goods in relation to intellectual property.
7. The Circular 44/2011/TT-BTC dated 1st April 2011 guiding counterfeit suppression and IPR enforcement in the field of customs.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective both on the import and export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The role of the customs authority is defined below:
(1) It monitors/supervises/detects the goods suspected of infringing IPRs; and
(2) It suspends the customs clearance of goods suspected of infringing IPRs.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
The request for recordal at the Customs Office has to be made. No later than 20 days from the receipt of the request, the Customs Office shall notify the applicant whether it has accepted or rejected the application.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The following documents must accompany the request for recordal:
Documents attesting to the rights of the applicant/requester (certified copies of Certificate of Registration or other adequate documents);
Documents relevant to the goods for recordal, including: list of authorized importers/exporters; mode of importation/exportation of genuine goods; description of how to distinguish the genuine goods from infringing ones; documents on the origin of genuine goods; pictures of genuine goods; and
A notarized and legalized POA (if filed through a local IP Agent).
The applicant should submit the following supporting documents (if any):
Information on estimated time and venue of import and export;
Expert opinions on infringing goods; and
Sanctioning decisions by enforcement agencies in similar cases of infringement upon the rights to the subject matters in question.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
Not later than 20 days from the receipt of the request, the Customs Office should notify the applicant whether it has accepted or rejected the application.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Vietnam by land, sea, and air?
It is centralized. Application is to be made at the Customs Ofice.
Is there an online system for Custom Recordal in Vietnam?
Yes, requests for customs recordal can be electronically filed through the Electronic Customs Data Processing System (e-Customs System) (New Article 6 of Circular 13). However, it is not yet available due to error.
What is the official fee for Custom Recordal in Vietnam?
There is no official fee as such.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
The effective period of the recordal is 01 year from the date of the acceptance notice by the Customs Office and may be extended for a further 01 upon request. After that, the IPR holders must re-file a fresh application within 20 days of lapse of prior recordal, if they wish to pursue the monitoring.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Vietnam?
In which scenario does the customs department/authority suspend the clearance of imported goods?
Upon detecting suspected goods, the Customs Office will temporarily suspend the clearance of the goods and notify the IPR holder or its representative. The time limit for suspension of customs clearance is 10 working days from the day on which the applicant receives the decision on suspension of customs, which can be further extended, but must not exceed 20 working days.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The IP rights holder bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Upon acceptance of the IPR holder's request for monitoring, the Customs Offices will begin monitoring for infringing goods. When they detect suspected goods, the Customs Office will temporarily suspend the clearance of the goods and notify the IPR holder or its representative. Within 03 working days from the date of the notice, the IPR holder or its representative should submit an application for suspension and a deposit bond or bank guarantee for an amount equal to 20% of the value of the goods that are subject to the suspension, or at least VND 20 million (USD 1,000), if the total value of the goods cannot be determined.
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
A deposit bond or bank guarantee for an amount equal to 20% of the value of the goods that are subject to the suspension, or at least VND 20 million (USD 1,000), if the total value of the goods cannot be determined.
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
In this case, the Customs authorities shall take charge and cooperate with port and depot enterprises, local administration to destroy such goods.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Vietnam? If yes, then kindly give 2-3 points?
All IPRs can be registered with the Vietnamese customs authority; however, in practice, only trademarks, geographical indications, and copyright and related rights are picked up. This is perhaps due to the relative inexperience of customs officials with more complex forms of IP such as invention patents and industrial designs.
If an IP rights holder is not satisfied with the action taken by the custom/ department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?