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Enforcement Introduction to Vietnam Trademark Law and Practice

This material is only intended to provide an introduction to and simplified profile of an area of this jurisdiction’s trademark law and practice and has primarily been prepared for practitioners considering the merits of filing an opposition in this jurisdiction. This material does not take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of this jurisdiction such as might be provided by a local trademark attorney.

CONTRIBUTOR: TUYEN Tran Nguyen Tran, ELITE Law Firm, Thánh Xuân, Vietnam
PRINCIPAL EDITOR: David Allison, Bird & Bird, Hong Kong SAR, China
PRINCIPAL EDITOR: Odette Gourley, Corrs Chambers Westgarth, Sydney, Australia
PRINCIPAL EDITOR: Christoph Kleiner, Kleiner Rechtsanwalte, Stuttgart, Germany
PRINCIPAL EDITOR: Allan Poulter, Bird & Bird, London, United Kingdom
PRINCIPAL EDITOR: Fernando Triana, Triana, Uribe & Michelsen, Bogotá, Colombia
PRINCIPAL EDITOR: Rick Young, Quarles & Brady, Chicago, United States

I. PRE-FILING REQUIREMENTS/DEMAND LETTERS

Although it is not mandatory to send a demand letter before instituting proceedings in this jurisdiction, it is common to send such a letter. Sending a demand letter (cease and desist letter) to an infringer before taking a raid under administrative measures or bringing the case before a court under civil measures in Vietnam is quite dependent
on the opinion/decision of the IP owners. Typically, for cases with relatively low amounts of damages caused by infringement and in cases where the infringement is not clear and obvious, the rights owner will wish to send a letter to the infringer before taking further legal action.

Before initiating an infringement proceeding, a party may take the following actions: It is advisable, but not required, that the IP owner obtain an assessment conclusion from the Vietnam Intellectual Property Research Institute (VIPRI) confirming the IP infringement of the infringer over the IP owner being protected in Vietnam. It is also advisable to verify that the infringer does not have any IP rights as to the goods/services containing IP infringement element(s).

Such a letter should be sent at the following time:
– after obtaining (i) evidence of trademark infringement and (ii) an assessment
conclusion from the Vietnam Intellectual Property Research Institute (VIPRI)
confirming the infringement; or

– after obtaining evidence of trademark infringement.

II. CLAIM FOR INFRINGEMENT OF A REGISTERED TRADEMARK

There is more than one court system or administrative body that has jurisdiction over claims for infringement of a registered trademark (see below). Besides civil courts, the Market Management Authorities and the Inspectorate of Ministry of Science and Technology of Vietnam have the right to handle trademark infringement activities in Vietnam. The Information and Communications Inspectors of the Ministry of Information and Communications have the right to handle domain names that infringe registered trademarks.

The court system or administrative body that most frequently hears claims for infringement of a registered trademark is: Administrative and civil proceedings are both possible. For administrative measures, the Market Management Authorities and the Science and Technology Inspectors of the Ministry of Science and Technology; for civil proceedings, the Civil Courts under People’s Courts at the provincial level. More than 90 percent of IP infringement cases in Vietnam are handled by administrative procedures. The Market Management Authorities at the provincial level (of 63 provinces and cities of Vietnam) are the administrative bodies that handle more than 90 percent of trademark infringement cases under administrative procedures.

The other court system or administrative body that can also hear claims for infringement of a registered trademark is: besides civil courts, the Market Management Authorities and the Inspectorate of Ministry of Science and Technology of Vietnam have the right to handle trademark infringement activities in Vietnam. The Information
and Communications Inspectors of the Ministry of Information and Communications have the right to handle domain names that infringe registered trademarks. 

III. CLAIM FOR INFRINGEMENT OF AN UNREGISTERED TRADEMARK/UNFAIR
COMPETITION/PASSING OFF

Unregistered trademarks are not protected in this jurisdiction

IV. CIVIL ENFORCEMENT– EMERGENCY MEASURES

A. Ex Parte Injunctions

Ex parte injunctions are available to claimants seeking emergency relief.
In order to apply for an ex parte injunction, it is necessary to institute infringement proceedings at the same time.

There is no specified statutory or court-determined deadline for seeking an ex parte
injunction. During the pendency of the litigation or at the time of instituting the proceedings, the plaintiff has the right to seek an ex parte injunction

B. Interim Inter Partes Injunctions

Interim inter partes injunctions are available to claimants seeking emergency relief. In order to apply for an interim inter parties injunction, it is necessary to institute infringement proceedings at the same time.

There is no specified deadline for seeking an interim inter partes injunction. During
the time of handling of the case or at the time the proceedings are instituted, the
plaintiff has the right to seek an ex parte injunction/interim inter partes injunction

V. EARLY RESOLUTION OF LITIGATION

A. Interim Applications Available for Ending Proceedings Early

A party can seek to end proceedings prior to trial or final determination by interim applications for:
– summary judgment (judgment as a matter of law when facts are undisputed);
– determination of preliminary issue by trial or hearing;
– striking out or dismissing a party’s case on the pleadings.

B. Summary Judgment

A party can conclude proceedings early by obtaining summary judgment in the following circumstances:
– there are no material factual disputes;
– there is no arguable case or defense (i.e., there is no reasonable prospect of the party’s succeeding in the proceedings).

C. Trial of Preliminary Issue

Proceedings cannot be expedited through an early trial or hearing on a preliminary issue. With the exception of an agreed settlement, there are no procedures to expedite a matter to an early trial. However, in very simple and straightforward cases, it may be possible to apply for a shortened summary procedure (under Article 317.1 of the Civil Procedure Code 2015, effective as of July 1, 2016).

VI. EVIDENCE

A claimant must present or give notice of any evidence upon which it will rely at a time set by the tribunal. Under Articles 96.1 and 96.4 of the Civil Procedure Code 2015, the parties (plaintiff and/or defendant and/or person who has related interests and obligation) have the right and obligation to submit documents and evidence to the
court. The time limit for submission of documents and evidence is fixed by the assigned judge, but it shall not exceed the period of preparation for the trial of first instance procedures and time limit for the preparation of a civil settlement under the provisions of the Code.

A defendant must present or give notice of any evidence upon which it will rely at a time set by the tribunal. Under Articles 96.1 and 96.4 of the Civil Procedure Code 2015, the parties (plaintiff and/or defendant and/or person who has related interests and obligation) have the right and obligation to submit documents and evidence to the
court. The time limit for submission of documents and evidence is fixed by the assigned judge, but it shall not exceed the period of preparation for the trial of first instance procedures and time limit for the preparation of a civil settlement under the provisions of the Code.

A party to the proceedings may obtain information that is within the possession or control of another party to the proceedings: at the request of the tribunal.

Next parts of the introduction will provide a general guide to:

VII. TRIAL/ORAL HEARING

VIII. JUDGMENT/FINAL ORDERS

IX. POST-JUDGMENT MATTERS

X. COSTS OF LITIGATION

XI. REMEDIES

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