Intellectual

Property
Benchbook

IP Adjudication
Series

in Viet Nam
Intellectual Property Benchbook Series
Series editor: Justice Stephen Burley

Introduction to the International Intellectual

Property Legal Framework
ISBN: 978-92-805-3495-5

Intellectual Property Adjudication in

the Philippines
ISBN: 978-92-805-3497-9

Intellectual Property Adjudication in Viet Nam

ISBN: 978-92-805-3499-3
Intellectual
Property
Benchbook
Series

Intellectual Property
Adjudication in Viet Nam
Editor: Justice Stephen Burley
Federal Court of Australia, Sydney, Australia

Contributing author: Justice Le Van Minh

Supreme People’s Court, Hanoi, Viet Nam
This work is licensed under Creative Commons Attribution 4.0 International. © WIPO, 2023

The user is allowed to reproduce, distribute, adapt, translate and publicly First published 2023
perform this publication, including for commercial purposes, without
explicit permission, provided that the content is accompanied by an World Intellectual Property Organization
acknowledgment that WIPO is the source and that it is clearly indicated if 34, chemin des Colombettes, P.O. Box 18
changes were made to the original content. CH-1211 Geneva 20, Switzerland

Suggested citation: World Intellectual Property Organization (WIPO) (2023). ISBN: 978-92-805-3498-6 (print)
Intellectual Property Adjudication in Viet Nam, Intellectual Property ISBN: 978-92-805-3499-3 (online)
Benchbook Series. Geneva: WIPO.
DOI: 10.34667/tind.47182

Adaptation/translation/derivatives should not carry any official emblem or Attribution 4.0 International (CC BY 4.0)
logo, unless they have been approved and validated by WIPO. Please contact
us via the WIPO website to obtain permission. Cover: Getty Images / © Natali_Mis;
© efired
For any derivative work, please include the following disclaimer: “The
Secretariat of WIPO assumes no liability or responsibility with regard to the
transformation or translation of the original content.”

When content published by WIPO, such as images, graphics, trademarks

or logos, is attributed to a third-party, the user of such content is solely
responsible for clearing the rights with the right holder(s).

To view a copy of this license, please visit

https://creativecommons.org/licenses/by/4.0

Any dispute arising under this license that cannot be settled amicably shall
be referred to arbitration in accordance with Arbitration Rules of the United
Nations Commission on International Trade Law (UNCITRAL) then in force.
The parties shall be bound by any arbitration award rendered as a result of
such arbitration as the final adjudication of such a dispute.

The designations employed and the presentation of material throughout

this publication do not imply the expression of any opinion whatsoever
on the part of WIPO concerning the legal status of any country, territory
or area or of its authorities, or concerning the delimitation of its frontiers
or boundaries.

This publication is not intended to reflect the views of the Member States or
the WIPO Secretariat.

The mention of specific companies or products of manufacturers does not

imply that they are endorsed or recommended by WIPO in preference to
others of a similar nature that are not mentioned.
Contents

Foreword 6
Editor’s introduction to the series 7
Acknowledgments 9

Chapter 1 Procedure 10
1.1 Introduction 10
1.2 Overview of the legal system in Viet Nam 10
1.2.1 Court hierarchy 10
1.2.2 Jurisdiction in intellectual property proceedings 11
1.2.3 Administrative intellectual property jurisdiction 11
1.3 Sources of law 12
1.4 Obtaining intellectual property protection 13
1.4.1 Administrative bodies responsible for registration 14
1.4.2 Appellate bodies 14
1.5 Revocation or invalidation 15
1.6 Infringement 16
1.6.1 First-instance civil proceedings 16
1.6.1.1 Originating process 17
1.6.1.2 Service and acceptance of the case by the court 17
1.6.1.3 Urgent measures/interim relief 18
1.6.1.4 Preparing for the meeting and mediation 19
1.6.1.5 Production of relevant materials 20
1.6.1.6 Judgment 20
1.6.1.7 Appeals and protests 21
1.6.2 Administrative proceedings 21
1.6.2.1 Administrative powers 21
1.6.2.3 Administrative actions 22
1.6.3 First-instance criminal proceedings 23
1.6.3.1 Standing 23
1.6.3.2 Procedure 23
1.6.3.3 Search and seizure orders 24
1.7 Evidence 25
1.7.1 Expert evidence 26
1.7.2 Use of evidence from other proceedings (including overseas proceedings) 26
1.7.3 Expert evidence at trial 27
1.7.4 Dealing with witnesses 27
1.8 Remedies 28
1.8.1 Civil remedies 28
1.8.1.1 Injunctions, apologies and rectification 28
1.8.1.2 Damages 29
1.8.1.3 Destruction 29
1.8.1.4 Legal costs 30
1.8.2 Criminal remedies 30

Chapter 2 Trademark 31
2.1 Introduction 31
2.2 What is a trademark in Viet Nam? 31
2.3 Sources of law 32
4 2.4 Obtaining registered trademark protection 33
2.5 Requirements for trademark registration 34
2.6 Rights conferred by registration 35
2.6.1 Ownership and assignment of a trademark 36
2.7 Revocation or invalidation 36
2.7.1 Proceedings for the revocation of rights 36
2.7.2 Grounds for the revocation of a trademark 36
2.8 Infringement proceedings 37
2.8.1 Standing 37
2.8.2 Establishing infringement 37
2.8.2.1 Defenses to allegations of infringement 39
2.8.2.2 Cross-claim challenging the validity of a trademark 39
2.8.3 Procedure for conduct of infringement proceedings 39
2.9 Evidence 39
2.10 Remedies 40
2.10.1 Civil remedies 40
2.10.2 Provisional urgent measures 40
2.10.3 Criminal remedies 41
2.10.4 Administrative sanctions 42
2.11 Unfair competition 42
2.11.1 Definition 42
2.11.2 Remedies 43

Chapter 3 Patent 44
3.1 Introduction 44
3.2 What is a patent in Viet Nam? 44
3.3 Sources of law 45
3.4 Obtaining patent protection 46
3.4.1 Application process 46
3.4.2 Opposition 47
3.4.3 Appeals 48
3.5 Requirements for a valid patent 48
3.5.1 Patentable subject matter 48
3.5.2 Novelty 48
3.5.3 Inventive step 49
3.5.4 Susceptible to industrial application 49
3.6 Rights conferred by a patent 49
3.6.1 Duration of rights 50
3.6.2 Ownership of and transferring rights 50
3.6.2.1 Assignment and licensing 50
3.6.2.2 Compulsory licensing for State use 50
3.7 Revocation or invalidation 52
3.7.1 Standing to apply for revocation 52
3.7.2 Grounds for revocation 52
3.7.3 Appeals to the Provincial People’s Court 53
3.8 Infringement proceedings 53
3.8.1 Standing 53
3.8.2 Establishing infringement 53
3.8.3 Defenses to allegations of infringement 55
3.9 Evidence 55
3.10 Remedies 56
3.10.1 Civil remedies 56
3.10.2 Provisional urgent measures 56
3.10.3 Criminal remedies 57
3.10.4 Administrative sanctions 57
Chapter 4 Copyright 58  5

4.1 Introduction 58
4.2 What is copyright in Viet Nam? 58
4.3 Sources of law 58
4.4 Obtaining copyright protection 59
4.4.1 Registration 60
4.5 Requirements for valid copyright 60
4.6 Rights conferred by copyright 61
4.6.1 Economic rights 61
4.6.2 Moral rights 61
4.6.3 Duration of rights 62
4.6.4 Ownership of copyright 62
4.6.5 Assignment and licensing of copyright 63
4.7 Revocation or invalidation 63
4.8 Infringement proceedings 63
4.8.1 Civil proceedings 63
4.8.1.1 Standing 63
4.8.1.2 Acts of civil infringement 63
4.8.2 Criminal proceedings 66
4.9 Evidence 66
4.9.1 Presumptions 67
4.9.2 Defenses to allegations of infringement 67
4.10 Remedies 68
4.10.1 Civil remedies 68
4.10.2 Provisional urgent measures 69
4.10.3 Criminal remedies 69
4.10.4 Administrative sanctions 70
Foreword

The World Intellectual Property Organization (WIPO) is delighted to present this volume in
the Intellectual Property Benchbook Series.

The Benchbook series is a unique new resource for judges seeking specialized support as
they deal with IP cases appearing before them in their own courts, as well as for readers
interested in learning about judicial adjudication of IP disputes across jurisdictions.

Judges play a vital role in ensuring that innovation and creative ecosystems are balanced and
effective, and deliver benefits to all. Indeed, in the domain of IP, the forces of technological
change are positioning courts as arbiters of technical questions with significant legal, social
and economic implications. Courts across the world are increasingly faced with both technical
and case management challenges arising from evolving types of IP disputes. Our globalized
societies and the transnational nature of IP transactions ensure that this momentum
will continue.

Conceived by the WIPO Judicial Institute in response to requests for resources tailored for
national judiciaries, particularly on the procedural aspects of IP adjudication, the Benchbook
series combines WIPO’s global perspective and expert knowledge of the international legal
framework for IP, with the insight of experienced members of national judiciaries. As such, it
is an unequalled public reference source, both in its scope and focus, and in the authoritative
perspectives offered by its authors.

Importantly, each country-specific Benchbook volume is drafted by judges, for judges, of

each relevant jurisdiction, filling a gap in practical guides to assist judges at each stage of the
IP adjudication life cycle within their specific legal and judicial context. Experienced members
of each national judiciary have generously shared their insight and expertise, enabling
colleagues who may have had less exposure to IP adjudication to date to benefit from the
communal wisdom of their judicial peers.

These volumes are primarily intended to serve as an immediate resource available in court
and chambers, for use by judges and other judicial officers in the course of adjudication.
Where required, country-specific volumes will be made available in the relevant national
language. In addition, they can serve as a general reference, providing comparative
information on judicial procedure to inform a broader global audience. Significant laws,
regulations and jurisprudence referenced in the volumes are made available in the WIPO
Lex database, providing free and open global access to the key legal and jurisprudential
developments in IP.

The Benchbook series is a part of the WIPO Judicial Institute’s work to build sustainable
judicial education programs and to provide more integrated support to Member States.
As such, it will be a living and growing set of titles, with further volumes covering other
jurisdictions already under preparation. It is our hope that the value of the Benchbook series
as a resource for national and regional judiciaries will also continue to grow, both within the
jurisdictions addressed and beyond.

Marco M. Alemán
Assistant Director General
IP and Innovation Ecosystems Sector
WIPO

6
Editor’s introduction to
the series
This Benchbook series has been designed to help judges in preparing to hear, hearing and then
determining intellectual property cases involving the infringement or revocation of trademarks,
patents or copyright and related rights.

It is important to start with a confession. These are not substantive textbooks concerning the
law of intellectual property, nor is the series a comprehensive work on practice and procedure.
In those senses, it is neither fish nor fowl. Rather, each volume is intended to provide practical
information that may be useful to judges in the conduct of cases about intellectual property
rights in the jurisdiction under focus.

In the universe of legal rights, intellectual property rights are unusual for two
obvious reasons.

First, not only are they the creatures of statutory law for a particular sovereign nation,
they also arise in the context of an extensive latticework of international treaties to which
member countries in the international community adhere. The result is that intellectual
property laws in one country are likely to have strong elements in common with
equivalent laws in other countries. For that reason, the first volume of this series offers an
overview of substantive rights under trademark, patent and copyright law by reference
to those rights as they are recognized in various international treaties. This first volume
supports the subsequent volumes, each of which is specific to the laws and procedures
of a particular country, allowing for the cross-referencing of common substantive rights
without undue repetition.

Second, intellectual property laws recognize as intangible property the rights arising from
the efforts of human endeavor.

•A  trademark is a sign (such as a word or symbol) that indicates the trade origin of
particular goods or services. It provides a connection in the course of trade between the
trademark and a trader.
• A patent protects an idea in the form of an invention that can be applied to be useful
to the world. The physical manifestation of a patent is a “patent specification”, which
is the document describing the invention and setting out in its claims the scope of the
monopoly asserted.
• In broad terms, copyright and related rights generally protect an original form of
expression. Examples of copyright works range from books to paintings to computer
software to television shows to movies and music.

Each sign, each invention, each form of expression is born as the creation of the
human mind and is then turned into something of tangible value, which may be
owned, licensed and sold to others. More particularly, it is turned into something of
value allowing the owner of the right to prevent unauthorized third parties from
reproducing it and to obtain financial compensation for any infringement that
has occurred.

But when and how can an owner of an intangible right protect it? The answer to that question is
fundamental to any legal system securing intellectual property rights.

In the case of patents and trademarks (leaving aside cases of unfair competition and
other unregistered rights), the right must be validly registered. This means that it must be
registered according to several internationally recognized requirements. Typically, it must be
registered with the administrative body that is responsible for screening and then granting
such rights. Only a trademark or patent that is valid may be infringed, and so it is typical in  7
 8 many cases for an owner alleging infringement of such rights to be met with a defense that
not only denies the act of infringement, but also alleges that the registration is not valid.

In the case of copyright and related rights, the position is analogous, although in most countries
copyright protection does not require registration, and arises automatically upon the creation
of the work. Even so, the same principle applies. A defendant to a case alleging copyright
infringement may not only dispute that an unauthorized reproduction of the work asserted has
been made, but may also challenge the ownership or subsistence of the right asserted on the
basis that no copyright vests in the work.

For many cases alleging trademark, patent or copyright infringement, it is more complex
and time-consuming for a court to determine the challenge to the validity of the right than
the arguments concerning infringement. For this reason, when considering the conduct of
proceedings concerning the infringement of intellectual property rights, it is important to
be aware of the essential requirements for the validity of the right under consideration, in
addition to the law relevant to the question of the infringement of those rights.

The structure of the Benchbook series

The first volume in the series, entitled Introduction to the International Legal Framework for
Intellectual Property, introduces in its first three chapters the subject matter of trademark,
patent and copyright law by reference to the international treaties to which most countries
are party. Each provides an introduction to the intellectual property right concerned, a
description of the process by which the right is registered (in the case of trademarks and
patents) and the relevant requirements for validity of the right in question. Each then
considers what the owner of the right must establish to demonstrate infringement of that
right. Its fourth and final chapter addresses the remedies that may be available to an owner
of a right upon proof of infringement.

The subsequent volumes in the series are each devoted to the conduct of intellectual
property cases in a specific country. Each volume follows a similar structure to the first,
beginning with a chapter entitled “Procedure,” which introduces the domestic sources of
relevant intellectual property laws and identifies where intellectual property disputes are
typically heard within the national judicial system. The chapter then proceeds to identify
in some detail any rules of court that are specifically directed towards the conduct of
intellectual property cases in that country. The idea is that a judge may look to this chapter to
identify what particular matters they must take into consideration in the courtroom, whether
at the point when a case is first commenced or when it is ready for final hearing.

The next three chapters in each volume then proceed to address trademark, patent and copyright,
providing details that are relevant for judges in each country considering each type of case.

From time to time, contributing authors have inserted “tips,” with which they add detail or suggest
case management approaches that may be of assistance to judges dealing with such cases.

Reference sources

In seeking to provide an easily accessible guide to judges, the volumes make reference to
various sources of relevant rules and legislation governing the conduct of intellectual property
Intellectual Property Adjudication in Viet Nam

cases in each jurisdiction under focus. The sources referred to in the series may be found in the
WIPO Lex database, a helpful central repository of not only the legislation identified but also
the relevant case law.

Justice Stephen Burley

Federal Court of Australia, Sydney Australia
Acknowledgments

WIPO is grateful to the distinguished judges contributing to this series, as well as to their
respective judicial authorities, whose institutional support has been instrumental to enabling the
time and work that this publication required.

The launch of the first three titles of the Benchbook series owes a great deal to the leadership
of the principal editor of the series, Justice Stephen Burley of the Federal Court of Australia, and
to his staff. WIPO also expresses its appreciation to Associate Justice Maria Rowena Modesto-
San Pedro of the Court of Tax Appeals, Quezon City, Philippines, and Justice Le Van Minh of
the Supreme People’s Court of Viet Nam, as the contributing authors of the first two country-
specific volumes. The production of these titles were financed by Funds in-Trust provided by the
Government of Australia.

The first title in the series, Introduction to the International IP Legal Framework, benefitted from
the technical expertise of a number of colleagues across WIPO. In particular, the WIPO Judicial
Institute wishes to acknowledge and thank the following colleagues for their invaluable input: Ms
Marina Foschi (Policy and Legislative Advice Section of the Department for Trademarks, Industrial
Designs and Geographical Indications); Ms Tomoko Miyamoto and Ms Nina Belbl (Patents and
Treaties Law Section); Ms Michele Woods (Copyright Law Division); and Mr. Xavier Vermandele
(Building Respect for IP Division). Within the Institute, Ms Nahal Zebarjadi has driven the creation
of this Benchbook series.

Eun-Joo Min
Director, WIPO Judicial Institute

It has been a pleasure to work with a talented group of intellectual property professionals in
putting together this Benchbook series. When Eun-Joo Min, Director of the WIPO Judicial Institute
and Nahal Zebarjadi, Legal Officer at the WIPO Judicial Institute, first approached me to edit the
series, I did not realize what an exciting prospect it offered for interacting in depth with judges
from different jurisdictions. After we adjusted for the effects of COVID 19, our regular video
meetings became for me a form of lockdown entertainment. They were delightful.

Particular acknowledgment should go to Justice Le Van Minh of the Supreme People's Court of
Viet Nam, without whose valuable contributions this volume would not have been possible.

I have also been assisted a great deal by National Judicial Registrar Susan O’Connor and Judicial
Registrar Amelia Edwards of the Federal Court of Australia, and by several of my past and
current associates, including Tim Gollan, Joseph Petrie, Veronica Sebesfi, Amelia Van der Rijt and
Jessica Wotton.

I should also like to thank the Federal Court of Australia for supplying additional resources
to enable the production of this work and, of course, Eun-Joo and Nahal, whose unfailingly
diplomatic and valuable contributions kept the project on track.

Justice Stephen Burley

Federal Court of Australia

 9
Chapter 1
Procedure

1.1 Introduction

This chapter begins with a brief introduction to the legal system (civil, criminal and
administrative) and court system (hierarchy) in Viet Nam. It then addresses the
procedural rules that are common to civil, criminal and administrative proceedings
for infringement of trademark, patent and copyright (i.e., intellectual property rights)
actions when conducted in the relevant courts – namely, the District People’s Courts
and the Provincial People’s Courts, including the Economic Courts within the Provincial
People’s Courts.

Each of the subsequent chapters in this volume is dedicated to one of those three specific rights
and provides more detail for those conducting cases involving the specific right.

1.2 Overview of the legal system in Viet Nam

Viet Nam is a civil law jurisdiction.

Laws in Viet Nam are derived from legislation (codes and laws). Since 2017, judicial decisions have
also been a source of law.

Article 22(2)(c) of the Law on Organization of People’s Courts (see section 1.3) provides that the
Judicial Council of the Supreme People’s Court has the duties and powers:

To select its cassation trial decisions and judgments and decisions of courts which
have taken legal effect and are of standard nature, summarize and develop them
into court precedents and publicize court precedents for courts to study and apply
in trial.

1.2.1 Court hierarchy

The Supreme People’s Court is the highest court in Viet Nam. It hears cases according to
cassation or reopening procedures. The Supreme People’s Court summarizes the adjudication
practices of lower courts, ensuring the uniform application of law.

Immediately below this, there are three High People’s Courts, each of which is responsible
for appellate and cassation hearings of the judgments of courts within its territorial
jurisdiction – namely, north, central or south Viet Nam. These courts conduct hearings where
the judgments or decisions of the Provincial People’s Courts or equivalents that have not yet
taken legal effect have been appealed or protested. They further conduct cassation hearings
where a legally effective judgment or decision of the People’s Court at the provincial, district
or equivalent is protested.

Next are Viet Nam’s 63 Provincial People’s Courts, which conduct first-instance trials of certain
prescribed cases and hear appeals of first-instance judgments or decisions of the District People’s

10
Courts or equivalents. Appeals and other protests from the Provincial People’s Courts are heard
by the People’s High Court.1
 11

There are more than 700 District People’s Courts, which hear only first-instance matters.
Appeals and protests from the District People’s Courts lie to the Provincial People’s Courts.

Each of the People’s High Courts and Provincial People’s Courts comprises six specialist divisions or
courts – namely, criminal, administrative, civil, labor, economic, and family and juvenile tribunals.

Article 45 of the Law on Organization of People’s Courts stipulates that:

The People’s Courts of rural districts, urban districts, towns, provincial cities and the
equivalent may have a criminal court, a civil court, a family and juvenile court, and
administrative court. In case of necessity, the National Assembly Standing Committee
shall decide to establish another specialized court at the proposal of the Chief Justice of
the Supreme People’s Court.

While no specialized courts have yet been established at the district level, specific judges sitting
in the District People’s Courts may specialize in criminal or administrative matters, civil, labor or
commercial matters, or family and minor matters.

1.2.2 Jurisdiction in intellectual property proceedings

The District People’s Courts of Viet Nam have jurisdiction to determine first-instance civil and
criminal intellectual property disputes.

The civil division of the Provincial People’s Courts has jurisdiction to determine first-instance
civil intellectual property disputes that involve litigants or assets outside of Viet Nam, or require
international judicial cooperation.

The Economic Courts of the Provincial People’s Court have jurisdiction to determine first-instance
civil intellectual property disputes that have commercial effect (i.e., the alleged infringement has
been profitable) involving both foreign and domestic litigants.

Thus intellectual property disputes will generally be resolved by the District People’s Courts of
districts, towns and cities under central authority. If one of the disputing parties or the property
is located outside of Viet Nam, or it is necessary to entrust justice to the representative mission
of the Socialist Republic of Viet Nam abroad or to a foreign court, then the disputes will fall under
the jurisdiction of the Provincial People’s Court. In addition, for disputes over intellectual property
in which both parties have commercial (profit-making) purposes, the Provincial People’s Court will
also have jurisdiction.
In each of these courts, the trial will be conducted by a panel comprising one judge and the
people’s assessors.2

The People’s Procuracy is a state agency that is responsible for prosecuting an accused before
the courts. In Viet Nam, a criminal indictment is issued under the name of the Procuracy.

1.2.3 Administrative intellectual property jurisdiction

In addition to civil and criminal proceedings, intellectual property infringement disputes

in Viet Nam are often resolved through administrative action. Administrative sanctions
for intellectual property infringements include warnings, fines, seizure and destruction of
counterfeit goods, suspension of business licenses, re-exportation of imported infringing goods
or transit of goods out of the country.
Chapter 1: Procedure

1 In Viet Nam, appeal and protest relate to review of a judgment or decision of the first-instance court that has not
yet taken legal effect. Appeal is a procedural act after the first-instance trial: if the involved parties disagree with
the judgment of the first-instance court, they have the right to appeal. Protest is a procedural act of a competent
person, expressing opposition to the whole or a part of a court’s judgment or decision, with the aims of (a) ensuring an
accurate and fair trial, and (b) correcting the errors in judgments and decisions of the court.
2 Civil Procedure Code, art. 63.
 12 The following administrative bodies, known as infringement-handling agencies, may issue
such sanctions:

• Inspectors of Science and Technology, and of Culture, Sports and Tourism;

• market control agencies;
• the customs authority;
• the police;
• district-level People’s Committees; and
• provincial People’s Committees.

1.3 Sources of law

Relevant codes, laws and decrees that apply to civil intellectual property proceedings in
Viet Nam include:

Code of Civil Procedure No. 92/2015/QH13 of November 25, 2015 (“Civil Procedure Code”)

Law No. 50/2005/QH11, of November 29, 2005, on Intellectual Property, amended and
supplemented in 2009, 2019 and 2022 (“Law on IP”)

Decree No. 103/2006/ND-CP of the Government, enacted in September 2006 and effective as of
November 2006, amended and supplemented in 2010, providing guidelines for implementing
certain articles of the Law concerning industrial property (“Decree No. 103/2006”)

Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and effective
as of November 2006, providing guidelines for the implementation of certain articles of the
Law on IP regarding enforcement of intellectual property rights and state management of
intellectual property, amended and supplemented in 2010 (“Decree No. 105/2006”)

Decree No. 88/2010/ND-CP of the Government, enacted in August 2010 and effective as
of October 2010, guiding the implementation of articles of the Law concerning rights on
plant varieties

Decree No. 119/2010/ND-CP of the Government, dated December 30, 2010, amending and
supplementing a number of articles of Decree No. 105/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP on protection of intellectual property
rights and state management of intellectual property

Decree No. 122/2010/ND-CP of the Government, dated December 31, 2010, amending and
supplementing a number of articles of Decree No. 103/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP

Decree No. 22/2018/ND-CP of the Government enacted in February 2018 and effective as of
April 2018, guiding the implementation of articles of the Law on IP concerning copyrights and
related rights (“Decree No. 22/2018”)

Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of April 3, 2008,

of the Supreme People’s Court, the Supreme People’s Procuracy, the Ministry of Culture,
Sports and Tourism and the Ministry of Justice guiding the application of a number of legal
provisions to the settlement of disputes over intellectual property rights at people’s courts
(“Joint Circular No. 02/2008”)
Intellectual Property Adjudication in Viet Nam

Resolution No. 02/2020/NQ-HDTP of September 24, 2020, of the Judicial Council of the
Supreme People’s Court guiding the application of some provisions stipulating provisional
measures in the Civil Procedure Code (“Resolution No. 02/2020”)

The codes and laws that apply to criminal intellectual property proceedings include:

Criminal Code No. 100/2015/QH13, of November 26, 2015 (“Criminal Code”)

Criminal Procedure Code No. 101/2015/QH13, of November 27, 2015 (“Criminal

Procedure Code”)
Relevant codes, laws and decrees that apply to administrative intellectual property proceedings
in Viet Nam include:
 13

Law No. 15/2012/QH13 of June 20, 2012, on handling administrative violations (“Law on
Administrative Violations”)

Law No. 54/2014/QH13 of June 23, 2014, on customs

Law No. 93/2015/QH13 of November 25, 2015, on administrative procedures (“Law on

Administrative Procedures”)

Law No. 23/2018/QH14 of June 12, 2018, on competition

Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and effective
as of November 2006, providing guidelines for the implementation of certain articles of the
Law on IP regarding enforcement of intellectual property rights and state management of
intellectual property, amended and supplemented in 2010 (“Decree No. 105/2006”)

Decree No. 99/2013/ND-CP of the Government, enacted in August 2013 and effective as of
October 2013, detailing and providing guidelines for implementing the provisions on handling
of administrative violations concerning industrial property (“Decree No. 99/2013”)

Decree No. 131/2013/ND-CP of the Government, dated October 16, 2013, providing for
penalties for administrative violations of copyright and related rights (“Decree No. 131/2013”)

Decree No. 28/2017/ND-CP of the Government, dated March 20, 2017, amending and
supplementing a number of articles of the Government’s Decree 131/2013/ND-CP dated
October 16, 2013, stipulating sanctioning administrative violations of copyright and related
rights and the Government’s Decree 158/2013/ND-CP dated November 12, 2013,
on sanctioning of administrative violations in the field of culture, sports, tourism
and advertising

Broadly relevant, in addition, are:

Law No. 65/2006/QH11, of June 29, 2006, on lawyers (“Law on Lawyers”)

Law No. 02/2011/QH13, of November 11, on complaints (“Law on Complaints”)

Law No. 62/2014/QH13, of November 24, 2014, on the organization of People’s Courts (“Law
on Organization of People’s Courts”)

Decree No. 111/2011/ND-CP of the Government, dated December 5, 2011, on consular

certification and legalization (“Decree No. 111/2011”)

1.4 Obtaining intellectual property protection

The types of intellectual property right available in Viet Nam include:

• trademark;
• patent;
• copyright;
• geographical indications;
• industrial designs;
• designs of semi-conducting closed circuits; and
• trade secrets.

The subsequent chapters in this volume will look in detail at trademark, patent and copyright;
Chapter 1: Procedure

what follows is a general overview of the bodies responsible for granting intellectual
property protection.
 14 1.4.1 Administrative bodies responsible for registration

The administrative body responsible for registering trademarks and granting patents is the
National Intellectual Property Office of Viet Nam.

The administrative body responsible for issuing copyright registration certificates and related
rights certificates in Viet Nam is the Copyright Department of the Ministry of Culture, Information
and Sport.

1.4.2 Appellate bodies

Appeals from the intellectual property administrative bodies set out above are heard by:

• the Ministry of Culture, Information and Sport or the Ministry of Science and Technology
(depending on the case); and/or
• a District People’s Court or the administrative division of the Provincial People’s Courts.

Decisions of a Provincial People’s Court can be further appealed to the People’s High Court.

If the parties do not agree with the appeal decision of the People’s High Court, they may request
a review under cassation procedures of the People’s High Court or the Supreme People’s Court
of Viet Nam.

The types of decision of the administrative bodies that may ultimately be appealed to a Provincial
People’s Court include decisions relating to the grant, modification, termination, cancellation
and extension of the validity of intellectual property rights protection, including copyright
registration certificates, related rights registration certificates, trademark registrations, patents,
geographical indications, inventions, industrial designs, designs of semi-conducting closed
circuits and trade secrets.

When a decision of the competent administrative bodies is appealed to a Provincial People’s

Court, the court allows the parties to file new evidence in the appeal proceeding and rehears
the matter.3

Article 9 of the Law on Administrative Procedures provides as follows:

Article 9 – Provision of documents and evidences, burden of proof in

administrative procedures

1. Involved parties have the right and obligation to furnish the court with documents
and evidences and prove that their claims are grounded and lawful.
Individuals who institute lawsuits or claim the protection of lawful rights and interests
of others have the right and obligation to collect and provide documents and
evidences and prove their claims like involved parties.

2. The court shall assist involved parties in collecting documents and evidences and
collect and verify evidences; request agencies, organizations and individuals to provide
documents and evidences to it or involved parties in accordance with this Law.
Intellectual Property Adjudication in Viet Nam

Article 84(1)(g) and (2)(c) of the Law on Administrative Procedures adds that:

Article 84 – Verification and collection of documents and evidences

1. Involved parties may collect evidences by themselves with the following measures:
[…]
g. Requesting the court to issue decisions to solicit expert examination or valuation
of assets;

3 Law on Administrative Procedures, art. 9.

 2. In the cases specified by this Law, a judge may take one or several of the following
measures to collect documents and evidences:
 15

[…]
c. Soliciting expert examination;

The powers of the administrative division of a Provincial People’s Court in relation to appeals
from decisions of the competent administrative bodies include:

• to reject or accept the whole or part of the claim;

• to pronounce cancellation of part or the whole of the unlawful administrative decision and
relevant complaint settlement decision (if any);
• to compel a state agency, or a competent person in the state agency, to perform tasks or
public duties in accordance with the law; and
• to request consideration of the cancelled unlawful administrative decision.4

The Chief Justices of the courts may also make recommendations regarding the amendment,
supplementation or annulment of legal documents supplied by the competent administrative
bodies (see next section).5

1.5 Revocation or invalidation

In Viet Nam, the court does not have the power:

• to amend an intellectual property right, such as a patent or trademark; or

• to cancel, revoke or remove from the register an intellectual property right, such as a patent
or trademark.

Complaints about the registration of industrial property rights may, however, be filed with the court,
and the court has the right to hear disputes about the registration of industrial property rights.6

The Chief Justices of the courts may also make recommendations regarding the amendment,
supplementation or annulment of legal documents supplied by the competent administrative
bodies.7 These recommendations are always followed, with the consequence that if the court
considers amendment or revocation of a registered intellectual property right to be appropriate,
it will be so amended or revoked.

Article 112 of the Law on Administrative Procedures provides as follows:

Article 112 – Competence to recommend amendment, supplementation or annulment

of legal documents

1. Chief justices of district-level courts may recommend amendment, supplementation

or annulment of legal documents of state agencies at the district level or lower level;
propose chief justices of provincial-level courts to amend, supplement or annul
legal documents of provincial-level state agencies; and report to chief justices of
provincial-level courts for proposing the Chief Justice of the Supreme People’s Court
to recommend amendment, supplementation or annulment of legal documents of
central state agencies.

2. Chief justices of provincial-level courts and superior people’s courts may recommend
amendment, supplementation or annulment of legal documents of state agencies
at the provincial level or lower levels; and propose the Chief Justice of the Supreme
People’s Court to recommend amendment, supplementation or annulment of legal
documents of central state agencies.
Chapter 1: Procedure

4 Law on Administrative Procedures, art. 193.

5 Decree No. 103/2006, art. 14; Law on Administrative Procedures, art. 112.
6 See Decree No. 103/2006, art. 14; Law on Administrative Procedures, art. 32.
7 See Decree No. 103/2006, art. 14; Law on Administrative Procedures, art. 112.
 16 1.6 Infringement

Infringement proceedings before the Vietnamese courts can be:

• at first instance in the civil courts;

• administrative proceedings before the infringement-handling agencies; or
• at first instance in the criminal courts.

1.6.1 First-instance civil proceedings

The following steps – set out in the Civil Procedure Code – are generally taken in civil intellectual
property infringement disputes in the District People’s Courts and the Provincial People’s Courts
(including the Economic Courts within the Provincial People’s Court).

1. The plaintiff files with the court an originating process (see section 1.6.1.1) in the form of the
lawsuit petition, together with documentary evidence.8

2. The plaintiff may request remedies in the form of provisional urgent measures (if any) at the
time of filing the lawsuit petition with the court or shortly thereafter (see section 1.6.1.3).9

3. If it accepts the petition (see section 1.6.1.2), the court will notify the defendant of the
plaintiff’s claim,10 and the plaintiff will serve a copy of the lawsuit petition and documentary
evidence on the defendant.11

4. If it accepts the petition, the court may also order the provisional urgent measures (if any)
sought (see section 1.6.1.3).12

5. The defendant must file a response “within 15 days from the day on which the notices are
received, defendants and/or persons with relevant interests and duties must submit to the
Court opinions in writing towards the request of the plaintiffs and materials and evidences,
counter-claims and independent claims (if any).”13

6. The proceeding will then enter the trial preparation period. Unless an extension of time is
granted, the trial preparation period for intellectual property cases is either two months
for “disputes over intellectual property rights or technology transfers among individuals or
organizations, which are all for the purposes of profits” or four months for all other disputes
over intellectual property rights or technology transfers.14

7. During the trial preparation period, the court must:

– hold meetings to monitor the handover of, access to and disclosure of evidence;15
– conduct mediation between the parties, unless an exception applies.16

For example, civil transactions that are contrary to social ethics cannot be mediated, and civil
lawsuits that cannot be mediated include where the defendants are intentionally absent from
court or one of the litigants applies for non-mediation.
8. Subsequent to such monitoring and mediation, the judge may:
– recognize the agreement of the parties;
– suspend the resolution of the civil case;
– terminate the resolution of the civil case (e.g., if the parties settle the case or agree to
withdraw their application); or
– bring the case to hearing.17
Intellectual Property Adjudication in Viet Nam

8 Civil Procedure Code, art. 189.

9 Law on IP, art. 206(1).
10 Civil Procedure Code, art. 196(1).
11 Civil Procedure Code, arts. 70.9 and 71.1.
12 Civil Procedure Code, art. 196(2).
13 Civil Procedure Code, art. 199(1).
14 Civil Procedure Code, arts. 203(a) and (b), and arts. 26(4) and 30(2).
15 Civil Procedure Code, art. 203(2)(g).
16 Civil Procedure Code, arts. 203, 205 and 206.
17 Civil Procedure Code, art. 203.
9. If the case proceeds, a hearing at first instance will be conducted.  17

1.6.1.1 Originating process

The originating process in civil intellectual property infringement disputes in the District People’s
Court, the Provincial People’s Court or the Economic Courts of the Provincial People’s Court is
usually a lawsuit petition.18

For further information about standing to bring civil proceedings for trademark, patent and
copyright proceedings, see each of Chapters 2, 3 and 4 in this volume, respectively.

1.6.1.2 Service and acceptance of the case by the court

The judge is required to notify the parties of whether or not the case is accepted.19

The plaintiff is then required to serve the lawsuit petition and supporting evidence on the
defendant. Article 70(9) of the Civil Procedure Code provides that, when participating in civil
procedures, the involved parties shall have the following rights and obligations: “To send other
involved parties or their lawful representatives photocopies of the petition and materials and
evidences, excluding evidences and materials that other involved parties have been provided
with as prescribed in clause 2 Article 109 of this Code.”

For cases in which there is good and sufficient reason why the plaintiff cannot make copies of the
lawsuit petition, materials and evidence, they may request that the court assist.

Article 196 of the Civil Procedure Code provides that:

Article 196 – Notice on acceptance of cases

1. Within 03 working days from the day on which the cases are accepted, the Judge must
send written notices to plaintiffs, defendants, agencies, organizations and individuals
with rights and obligations related to the settlement of the cases, to the procuracies
of the same level on the Courts’ acceptances of the cases.
Regarding cases initiated by consumers, the Courts shall post publicly at the offices
of the Courts information about the acceptance of the cases within 03 working days
from the day on which the cases are accepted.

2. Such a written notice must contain the following principal details:

a. Date on which the notice is made;
b. Name and address of the Court accepting the case;
c. Name, address; phone number, fax, email address (if any) of the litigator;
d. Specific matters that the litigator requests the Court to resolve;
dd. Whether the case is accepted under normal procedures or simplified procedures
(Part 4 of the Civil Procedure Code 2015 outlines conditions and procedures to
resolving civil cases according to simplified procedures);
e. List of materials and evidences submitted together with the lawsuit petition by
the litigator;
g. Time limit for the defendant and/ or person with relevant interests and duties to
submit to the Court opinions in writing towards the request of the litigator and
accompanied materials and evidences, counter-claims, independent claims (if any);
h. Legal consequences of case where the defendant and/or person with relevant
interests and duties fail to submit to the Court an opinion in writing for the
petition for initiating lawsuit.

3. If the plaintiffs file an application for the assistance of the Court in the sending of
materials and evidences, the notices on the acceptance of the cases that the Courts
sent to the defendants and/or persons with relevant interests and duties copies of
materials and evidences provided by the plaintiffs.
Chapter 1: Procedure

18 Civil Procedure Code, art. 189(4) and (5).

19 Civil Procedure Code, art. 196.
 18 1.6.1.3 Urgent measures/interim relief
The plaintiff may request provisional urgent measures (if any) at the time of filing the lawsuit
petition with the court or shortly thereafter.20

Article 206 of the Law on IP outlines the circumstances in which provisional urgent measures will
be applied, including where there is a risk of irreparable damage to the intellectual property rights
holder and a likelihood of the dispersion or destruction of infringing goods and/or evidence:

Article 206 – Right to request the court to apply provisional urgent measures

1. Upon or after the initiation of a lawsuit, an intellectual property right holder

(including owners of the intellectual property rights defined at 1.2 above) shall have
the right to request the court to apply provisional measures in the following cases:
a. There exists a danger of irreparable damage to such intellectual property
right holder;
b. Goods suspected of infringing upon intellectual property rights or evidence
related to the act of infringing upon industrial property rights are likely to be
dispersed or destroyed unless they are protected in time.

2. The court shall decide to apply provisional urgent measures at the request of the
industrial property right holder defined in Clause 1 of this Article before listening to
the party subject to such measures.

Article 207 of the Law on IP outlines what those provisional urgent measures might comprise,
including seizure and freezing:

Article 207 – Provisional urgent measures

1. The following provisional urgent measures shall be applied to goods suspected of

infringing upon intellectual property rights or to raw materials, materials or means of
production or trading of such goods:
a. Seizure;
b. Distraint;
c. Sealing; ban from alteration of original state; ban from movement;
d. Ban from ownership transfer.

2. Other provisional urgent measures shall be applied according to the provisions of the
Civil Procedure Code 2015.

The main difference in meaning between seizure and distraint in Viet Nam is that seizure
measures are typically applied in criminal and administrative procedures, while distraint is more
relevant in civil proceedings.

Article 208 of the Law on IP outlines the obligations of persons requesting provisional urgent
measures, including to provide supporting evidence and a security deposit or bank guarantee:

Article 208 – Obligations of persons requesting the application of provisional

urgent measures

1. Persons requesting the application of provisional urgent measures are obliged to

prove their right to request provided for in Clause 1, Article 206 of this Law with
Intellectual Property Adjudication in Viet Nam

documents and evidence specified in Clause 2, Article 203 of this Law.

2. Persons requesting the application of provisional urgent measures are obliged to

pay compensation for damage caused to persons subject to such measures in cases
where the latter are found to have not infringed upon industrial property rights.
To secure the performance of this obligation, a person requesting the application
of provisional urgent measures shall have to deposit a security in one of the
following forms:

20 Law on IP, art. 206.1.

 a. A sum of money equal to 20 percent of the value of the goods subject to the
application of provisional urgent measures, or at least VND 20 million where it is
 19

impossible to value such goods;

b. A guarantee deed issued by a bank or another credit institution.

The court’s jurisdiction to issue decisions in relation to the application of provisional urgent
measures derives from its jurisdiction to accept petitions for the institution of lawsuits and to
handle cases under articles 33–36 of the Civil Procedure Code.

1.6.1.4 Preparing for the meeting and mediation

The court holds meetings during the trial preparation period to ascertain the scope of the dispute
and to attempt to facilitate a mediated outcome.21

The steps the parties and the court must take before their first meeting include ensuring that:

• the plaintiff has filed the lawsuit petition, together with documentary evidence;
• the court has reviewed and checked the lawsuit petition and documentary evidence;
• the court has accepted the case;
• the court has notified the defendant of the case, and the plaintiff has served a copy of the
lawsuit petition and documentary evidence on the defendant; and
• the defendant has filed their response (if any).

Article 72 of the Civil Procedure Code sets out the rights and obligations of the defendant,
including the right to agree or disagree in part or whole of the plaintiff’s claims and/or to make
counterclaims against the plaintiff.

Article 199 of the Civil Procedure Code further provides that, within 15 days of receipt of notices,
the defendant must submit to the court opinions in writing on the plaintiff’s petition, materials
and evidence, as well as any counterclaims.

The court holds meetings during the trial preparation period to monitor the handover of, access to
and disclosure of evidence. It also conducts mediation.22 Participants in these meetings include:

• the judge, who presides over the meeting;

• the court clerk, who records the minutes of the meeting;
• the involved parties or their representatives;
• legal representatives, if the parties have any; and
• an interpreter (if any).23

The meetings are organized on court premises.

Article 210(4) of the Civil Procedure Code outlines the procedure for mediation at these meetings,
as follows.

1. The judge disseminates the relevant law to the parties, so that they can compare a mediated
outcome with the possible litigated outcomes of the case;

2. The plaintiff’s counsel makes presentations about the disputes, amends its petition initiating
the suit, sets out grounds for protecting the petitions, and expresses opinions about matters
to be mediated and the likely resolution of the case (if any).

3. The defense counsel makes presentations about the plaintiff’s claims and the defendant’s
counterclaims (if any), grounds for contesting the plaintiff’s claims and grounds for defending
the counterclaims, and expresses opinions about the matters to be mediated and the likely
resolution of the cases.
Chapter 1: Procedure

21 Civil Procedure Code, arts. 203(2)(g) and 210.

22 Civil Procedure Code, arts. 203(2)(g) and 210.
23 Civil Procedure Code, art. 209.
 20 4. Other participants, including the plaintiff and defendant themselves, may express
their opinions.

5. The judge then determines the matters about which the parties have or have not agreed,
and may request that the parties make additional presentations about matters that remain
unclear or not agreed.

6. The judge reaches a conclusion about the matters that are agreed and not agreed between
the parties.

If the case does not settle out of court, the same judge who conducts the mediation will
participate in the trial panel that hears the case and will write its judgment.

The Civil Procedure Code does not prescribe how many meetings the court will hold during the
trial preparation period; in practice, that number will largely depend on the judge’s satisfaction
with the parties’ presentations.

1.6.1.5 Production of relevant materials

The court has the power to order the defendant to discover (i.e., produce to the applicant) copies
of the defendant’s records or receipts of sales of the allegedly infringing product.

Article 96 of the Civil Procedure Code provides that:

Article 96 – Hand-over of materials and evidences

During the process of resolving civil cases by courts, the involved parties shall have
the rights and obligations to hand over materials and evidences to the courts. If
the handed materials/evidences are inadequate to form the base for resolution of
the matters/cases, the Judge shall request the involved parties to supplement the
materials/evidences. If the involved parties fail to hand over the materials/evidences
or do not hand over adequately the materials/evidences requested by the Courts, the
Courts shall resolve the civil cases pursuant to the materials and evidences handed
over by the involved parties and those collected by the Courts according to regulations
in Article 97 of this Code …

Article 97 of the Civil Procedure Code provides that:

Article 97 – Verification and collection of evidences

1. Agencies, organizations and individuals may collect materials and evidences

themselves by taking the following measures:
[…]
d) Requesting the agencies, organizations or individuals to allow the copy or to
supply the materials related to the resolution of the matters/cases that are kept
or managed by such agencies, organizations or individuals;
[…]
e) Requesting the Courts to collect materials and evidences, in case the involved
parties cannot do it;

Article 203(5) of the Law on IP provides that:

Article 203 – Right and burden of proof of involved parties

Intellectual Property Adjudication in Viet Nam

[…]
5. Where a party to a lawsuit against an infringement of intellectual property rights can
prove that appropriate evidence proving his/her claims is under the control of the
other party and therefore inaccessible, the former shall have the right to request the
court to compel the latter to produce such evidence.

1.6.1.6 Judgment
Article 63 of the Civil Procedure Code provides for composition of the trial panel that will hear the
case: it shall comprise one judge and two people’s assessors. In Viet Nam, the people’s assessors
are permanently selected.
If an expert is necessary to support the trial panel in intellectual property civil proceedings, that
expert is invited to participate as an expert witness, not as a trial panel member. Articles 63–67 of
 21

the Civil Procedure Code stipulate further detail on the composition of panels for the resolution
of civil proceedings.

After hearing all the arguments and evidence (see section 1.7), the trial panel enters a room in
which it will deliberate the case. Deliberation can take up to five working days.

If, during deliberations, the trial panel considers that its inquiries or the evidence offered
have been insufficient to support a finding, it may decide to resume the inquiries and hear
further argument.24

After deliberation, the trial panel aims to pronounce the judgment in the presence of the parties
(i.e., the individuals or representatives of any agencies and organizations involved in the lawsuit).
In the event that the involved parties cannot be or are not present, the trial panel will still
pronounce its judgment.25

Within three working days of the end of its session, the court will supply the parties with extracts
from its judgment.

Within 10 days of the date of judgment, the court shall hand over or send the judgment to the
parties and the People’s Procuracy.26

1.6.1.7 Appeals and protests

Appeals and protests in civil intellectual property cases do not materially differ from those in
other areas of law. They all follow similar procedures.

1.6.2 Administrative proceedings

As noted in section 1.2.3, administrative proceedings in intellectual property cases may be

handled in Viet Nam by an infringement-handling agency – namely:

• the courts;
• inspectors for the Ministry of Science and Technology or the Ministry of Culture, Sports
and Tourism;
• market control agencies;
• the customs authority;
• the police; and
• People’s Committees of all levels.27

1.6.2.1 Administrative powers

The infringement-handling agencies have extensive powers in administrative intellectual
property actions, including:

• to issue a decision on inspection, which allows the agency to conduct a raid on an alleged
infringer of intellectual property rights;
• to issue minutes of infringement if an administrative breach is found, which allows the chief
of the inspection team, at their discretion, to:
– confiscate the allegedly infringing products under a decision on temporary seizure; and
– issue a minute of temporary seizure;

• to seal the allegedly infringing products and request that the alleged infringer preserve the
sealed products, until a decision on dealing is made by a competent person, and then to issue
a minute of sealing, if appropriate;
Chapter 1: Procedure

24 Civil Procedure Code, art. 265.

25 Civil Procedure Code, arts. 266 and 267.
26 Civil Procedure Code, art. 269.
27 Decree No. 105/2006, art. 27.1.
 22 • to issue a sanction decision shortly after the date of the minutes of infringement,28 which
decision – depending on the nature and severity of the intellectual property infringement –
may include remedies such as:
– a warning order or monetary fine (up to VND 500 million);
– confiscation of material evidence and means used in the commission of the intellectual
property infringement, and of raw materials, materials and means used mainly for
producing or trading in those goods;
– suspension of the production, trading or provision of infringing products or services for
between one and three months of the effective date of the sanction decision;
– forcible removal of the infringing elements from the goods;
– destruction of the infringing goods, means, raw materials and materials used mainly for
producing or trading in these goods;
– forcible alteration or return of domain names and the forcible alteration of enterprise
names; and/or
– forcible remittance of the illicit earnings from the commission of intellectual
property infringements;29

• to coercively implement the sanction decision, if the infringer fails to voluntarily execute the
sanction decision within the stipulated time period,30 such coercive measures including:
– deducting a part of wages or income and deducting money from bank accounts of
intellectual property infringers;
– distraining for auction assets with value corresponding to the final amount;
– collecting money and the assets of infringers to support execution of the sanction decision if
infringers are deliberately dispersing such assets;
– forcible application of remedial measures specified in article 28 of the Law on Administrative
Violations, including: forcible correction of false or misleading information; forcible removal
of infringing elements on the goods or packaging of goods, means of trading and articles;
and forcible recall of products.

1.6.2.3 Administrative actions

The alleged infringer of intellectual property rights may appeal a sanction decision and initiate an
administrative lawsuit before the administrative division of the Provincial People’s Courts.31

When a sanction decision is appealed to a Provincial People’s Court, the court allows the parties to
file new evidence in the appeal proceeding and rehears the matter.32 The procedural steps set out
the Law on Administrative Procedures are again followed by a panel conducting such a rehearing.

Following the hearing, the Chief Justice of the court may then make recommendations about the
amendments, supplementation or annulment of legal documents of state agencies, according
to their jurisdiction, or request that a competent person specified in article 112 of the Law on
Administrative Procedures do so.

A sanction decision is a “document applying the law.” In Viet Nam, this term means that it is:

… a specific legal document with state power promulgated by a competent state agency,
official or public servant or a social organization authorized by the state according to
procedures, statutory procedures on the basis of application of legal norms to specific
and individual relationships in order to establish specific rights and obligations of certain
individuals, agencies or organizations or determine legal responsibilities against subjects who
violate the law. A document applying the law is a document promulgated by a competent
entity according to the procedures and form prescribed by law, with the content being
a specific order to an individual or organization determined and executed once in practice.33
Intellectual Property Adjudication in Viet Nam

28 Law on Administrative Violations, art. 66.

29 Decree No. 99/2013, art. 3.
30 Law on Administrative Violations, art. 86.
31 Law on Complaints, art. 7.1.
32 Law on Administrative Procedures, art. 9.
33 Textbook of General Theory of State and Law, Vietnam National University, School of Economics and Law (Ho Chi Minh
City, 2021) p.125.
Consequently, a Chief Justice can make a recommendation to an infringement-handling agency
about a sanction decision according to provisions of the relevant law. These recommendations
 23

are always followed.

If the alleged infringer is dissatisfied with the first-instance decision of the Provincial People’s
Court, they may appeal appropriately.34

1.6.3 First-instance criminal proceedings

The hearing of criminal cases, including criminal intellectual property cases, at first instance is in
the District People’s Court. It is provided for at articles 268–326 of the Criminal Procedure Code.

Intellectual property rights owners have the right to file evidence in criminal proceedings.35

Article 253 of the Criminal Procedure Code provides that when a person or organization or
agency provides documents relevant to such a case, the presiding judge must receive, and may
ask the person who provided such materials, the matters that are relevant to them, and the
answers and materials forwarded must be sent to the People’s Procuracy, which must examine
them and return them to the court for attachment to the case file.

1.6.3.1 Standing
Intellectual property rights owners, excluding patentees, can request commencement of criminal
proceedings by filing a complaint or petition with the competent agencies (such as market
management offices, customs offices, the police), including all significant evidence, and asking
the competent agency to protect their rights.

Patentees are excluded because there are no criminal penalties for patent infringement
in Viet Nam.

Article 212 of the Law on IP provides that “[a]ny individual who commits an act of infringement
of intellectual property rights involving a criminal element shall be criminally prosecuted in
accordance with the criminal law.”

Article 8 of the Criminal Code defines what constitutes a “crime”:

Article 8 – Definition of crime

1. A crime means an act that is dangerous for society and defined in Criminal Code, is
committed by a person who has criminal capacity of corporate legal entity, whether
deliberately or involuntarily, infringes the sovereignty and territorial integrity of the
nation, infringes the political regime, economic regime, culture, national defense
and security, social order and safety, the lawful rights and interests of organizations,
human rights, the lawful rights and interests of citizens, other aspects of socialist law,
and leads to criminal prosecution as prescribed by this Code.

2. An act showing signs of a crime but not remarkably dangerous for society is not a
crime and shall be dealt with otherwise.

For an act of infringement to involve a criminal element or sign, it would typically be deliberate
and dangerous to society, and not merely commercially damaging to the rights owner.

Article 155 of the Criminal Procedure Code stipulates circumstances that can be prosecuted at the
request of a victim of the crime, or the representative of that victim should they be younger than
18 years old (i.e., a minor), be disabled or mentally incapacitated, or be dead.

1.6.3.2 Procedure
Chapter 1: Procedure

The following preliminary steps are generally taken in criminal intellectual property infringement
disputes in the District People’s Court.

34 Law on Administrative Procedures, art. 204.

35 Criminal Procedure Code, arts. 62–65.
 24 1. The rights owner files a petition for the handling of intellectual property infringement within
criminal proceedings, together with documentary evidence, with an agency with competence
to handle such a petition, as defined in article 200 of the Law on IP (i.e., an infringement-
handling agency).36

2. If the infringement handling agency finds that the case contains “criminal signs” or criminal
elements, it will send the case to a criminal procedure agency, such as the police, for
investigation and initiation of a criminal case.37 In Viet Nam, such a criminal sign (or element)
will derive from one of six sources of information:
– an individual’s denunciation;
– news reported by agencies, organizations or individuals;
– news made by the press;
– petitions submitted by state authorities;
– the infringement-handling agency’s own observations and identification of the signs of
a crime;
– offenders’ confessions.

Article 225(1) of the Criminal Code provides for the criminal signs of a criminal case in relation
to copyright and related rights; article 226(1) of the Criminal Code stipulates such signs in
relation to industrial rights.

3. The criminal procedure agencies, such as the Criminal Investigation Police, conduct a
criminal investigation.38

4. If criminal signs or elements are found, the People’s Procuracy may decide to prosecute the
accused before the court, in which case an indictment will be issued, and a criminal case will
be initiated and prosecuted.39

5. If no criminal signs or elements are found but there are signs of an administrative offense,
the criminal proceeding agency, such as the Criminal Investigation Police, will send or return
the case to the competent infringement-handling agency and request that the agency impose
an administrative penalty.

No criminal lawsuit can be initiated if:

• there is no offense;
• the acts do not constitute an offense;
• the persons committing the acts have not reached the age of criminal responsibility;
• the statute of limitations for penal liability has expired;
• the offenses have been granted general amnesty; and/or
• the accused is deceased.40

1.6.3.3 Search and seizure orders

Search and seizure orders are available in criminal proceedings. Search and seizure orders are
provided for in Chapter 13 of the Criminal Procedure Code.

Search and seizure orders are usually made on an interim basis, rather than a final basis.

The courts can decide an application for provisional urgent measures, such as search and seizure
orders, without first hearing from the parties who will be its subject.

Search and seizure orders are usually issued in the following types of intellectual property case:
Intellectual Property Adjudication in Viet Nam

• producing, importing, transporting and trading in intellectual property counterfeit goods; and
• producing, importing, transporting, trading, possessing stamps, labels or other articles
bearing counterfeit marks or geographical indications, or assigning others to do so.

36 Decree No. 105/2006, art. 27.1.

37 Law on Administrative Violations, art. 62.
38 Criminal Procedure Code, arts. 163–178.
39 Criminal Procedure Code, art. 166.
40 Criminal Procedure Code, art. 107.
1.7 Evidence  25

In civil proceedings, the right and obligation to provide evidence in respect of their respective
positions rests with the parties. They are expected to conduct the dispute on an adversarial basis,
with each providing evidence and arguments in support of its position.41

In civil intellectual property cases, the court is not obliged to investigate and collect evidence
when deciding the case or to otherwise adopt inquisitorial procedures. The court may do so,
however, in response to any party’s request – but only in circumstances in which that party
cannot collect this evidence themselves.

Article 70 of the Civil Procedure Code provides that the rights and obligations of the parties
involved include:

Article 70 – Rights and obligations of the involved parties

[…]
5. To supply materials and evidences; to prove to protect their legitimate rights
and interests;

6. To petition agencies, organizations and individuals that are keeping or managing

materials and evidences to supply such materials and evidences to them;

7. To petition the Court to verify and collect materials and evidences of the cases which
they cannot perform themselves; petition the Court to request other involved parties
to present materials and evidences they are keeping; petition the Court to issue the
decision to request the agencies, organizations and individuals that are keeping and
managing the materials/evidences to supply such materials and evidences; request
the Court to summon witnesses, to ask for expertise, evaluation or price appraisal;

[…]

A request for the court to collect evidence may be made in a separate document, recorded in
testimony, the record of testimony, the record of confrontation or in a written request.

The judge can take a number of measures to collect evidence, including gathering the testimony
of witnesses, conducting confrontation between the involved parties, performing on-site review
and evaluation or asking for expertise.42 The judge should explain that the parties are required to
pay the costs of any such measures.

More specifically in intellectual property cases, article 203 of the Law on IP provides:

Article 203 – Right and burden of proof of involved parties

1. The plaintiff and the defendant in a lawsuit against intellectual property right
infringement shall enjoy the right and bear the burden of proof provided for in Article
79 of the Civil Procedure Code and this Article.

2. The plaintiff shall prove that he/she is the intellectual property right holder with one
of the following evidence:
a. Copies of the copyright registration certificate, related right registration
certificate or protection title; or an extract of the national register of copyright
and related rights, the national register of industrial property (including
inventions, industrial designs, layout-designs of semiconductor integrated
circuits, trade secrets, marks, trade names and geographical indications and
unfair competition) or the national register of protected plant varieties;
b. Necessary evidence proving the basis for establishment of copyright or related
rights in case of absence of a copyright registration certificate, related right
registration certificate; necessary evidence proving rights to business secrets,
trade names or well-known marks;
c. Copies of license contracts for intellectual property objects where the use right is
Chapter 1: Procedure

licensed under contracts.

41 Civil Procedure Code, art. 70; Law on IP, art. 203.

42 See, e.g., Civil Procedure Code, arts. 97(1) and (2), and 102.
 26 3. The plaintiff shall have to produce evidence of acts of infringing upon intellectual
property rights or acts of unfair competition.

4. In a lawsuit against an infringement of the right to an invention which

is a production process, the defendant shall have to prove that his/her
products are produced by a process other than the protected process in the
following cases:
a. The product made by the protected process is new;
b. The product made by the protected process is not new, but the invention owner
believes that the product of the defendant is made by the protected process
and fails to identify the process used by the defendant in spite of application of
appropriate measures.

5. Where a party to a lawsuit against an infringement of intellectual property rights can

prove that appropriate evidence proving his/her claims is under the control of the
other party and therefore inaccessible, the former shall have the right to request the
court to compel the latter to produce such evidence.

6. When making a claim for compensation for damage, the plaintiff must prove his/
her actual damage and specify the basis for determining compensation for damage
according to the provisions of Article 205 of this Law.

Evidence seized in a criminal proceeding or an administrative action in Viet Nam can be used in a
civil proceeding.

Furthermore, article 92(1)(b) of the Civil Procedure Code provides as follows:

Article 92 – Details and facts that are not required to be proved

1. The following details and facts are not required to be proved:

[…]
b) Details and facts that have been identified in the Court judgments or decisions
which are legally effective or in decisions of competent State bodies which have
come into force;

1.7.1 Expert evidence

In relation to expert evidence, article 102(1) of the Civil Procedure Code provides that:

Article 102 – Request for expertise

1. Involved parties may petition Courts to request expertise or request expertise

themselves if the involved parties’ applications for referenda for expertise
have been rejected by the Courts. The right to apply for expertise shall be
exercised before the Courts issue decisions to bring the cases to trial according
to first-instance procedures or decisions to hold the meetings for resolving
civil matters.
[…]

1.7.2 Use of evidence from other proceedings (including overseas proceedings)

Intellectual Property Adjudication in Viet Nam

Evidence seized in criminal proceedings and administrative actions can be used in

civil proceedings.

In particular, article 92(1)(b) of the Civil Procedure Code outlines as among the details and facts
that are not required to be proved those “[d]etails and facts that have been identified in the
Court judgments or decisions which are legally effective or in decisions of competent State
bodies which have come into force.” Article 73(1)(b) of the Law on Administrative Procedures
likewise sets out as circumstances and facts that are not required to be proved, “[t]hose which
have been identified in legally effective court judgments or rulings.”
Evidence used in overseas proceedings can also be used in civil intellectual property proceedings
in Viet Nam. Article 478 of the Civil Procedure Code provides for recognition of papers and
 27

materials sent by foreign agencies, organizations or individuals to Vietnamese courts. Clause 1 of

the article provides that:

Article 478. Recognition of papers and materials sent by foreign agencies,

organizations, or individuals to Vietnamese Courts

1. Vietnamese Courts shall recognize papers and documents made, issued or certified
by competent foreign agencies or organizations in the following cases:
a. Papers, materials and notarized or certified Vietnamese translations have been
legalized by consular offices;
b. Papers and documents are exempt from consular legalization in accordance
with Vietnamese law or International treaties to which the Socialist Republic of
Vietnam is a signatory.”

The provisions on consular legalization or exemption from consular legalization are set out in
Decree No. 111/2011, article 1 of which specifies that it covers “the competence, order and
procedures for consular certification and legalization, contents of state management and
responsibilities of agencies, organizations and individuals for consular certification and legalization.”

The combined effect of these provisions is that the evidence used in overseas proceedings may be
used in civil intellectual property proceedings in Viet Nam if it satisfies the requirements set out.

1.7.3 Expert evidence at trial

The Civil Procedure Code includes several provisions regulating expert witnesses, including
articles 80, 102, 230 and 257.

In practice, the judge at the trial may hear expert witnesses concurrently.

1.7.4 Dealing with witnesses

Lay and expert witnesses may be required to attend the trial under subpoena. Where expected
lay or expert witnesses are absent, the court may decide to proceed with the trial.

Articles 229 and 230 of the Civil Procedure Code provide as follows:

Article 229. Presence of witnesses

1. Witnesses shall be obliged to attend Court sessions under Court subpoenas.

2. Where the witnesses are absent, the Trial Panels shall decide to keep adjudicating the
cases or to postpone the court.

3. The Trial Panels shall keep adjudicating the cases if the witnesses are absent but
have earlier given their testimonies in person or sent their testimonies to courts. The
presiding Judges shall make such testimonies public.

4. The Trial Panels shall decide to postpone the Court sessions if the absence of the
witnesses at Court creates difficulties or affects the objective and comprehensive
resolution of the cases.

5. If the witnesses are absent from the Court sessions without good and sufficient
reasons and such absence obstructs the adjudication, they can be escorted to the
Court sessions under the decision of the trial panels, unless the witnesses are minors.
Chapter 1: Procedure

Article 230 – Presence of expert-witnesses

1. Expert-witnesses shall be obliged to attend Court sessions under Court subpoena to

explain and answer issues relating to the expertise and expert conclusions.
 28 2. Where the expert-witnesses are absent, the Trial Panels shall decide to keep
adjudicating the cases or postpone the Court sessions.

1.8 Remedies

What follows are the remedies broadly available in the event of infringement of intellectual
property rights in Viet Nam.

See also Chapter 4 of the first volume in this series, Introduction to the International Legal
Framework for Intellectual Property, for more on remedies more generally.

1.8.1 Civil remedies

Remedies in civil intellectual property proceedings include:

• injunctions, apologies and rectification;

• damages; and
• destruction.

Article 202 of the Law on IP provides as follows:

Article 202 – Civil remedies

Courts shall apply the following civil remedies in handling organizations and individuals
that have committed acts of infringing upon intellectual property rights:

1. Compelling the termination of infringing acts;

2. Compelling a public apology and rectification;

3. Compelling the performance of civil obligations;

4. Compelling the payment of damages;

5. Compelling destruction, distribution or use for noncommercial purposes of goods,

raw materials, materials and means used largely for the production or trading
of intellectual property right-infringing goods, provided that such destruction,
distribution or use does not affect the exploitation of rights by intellectual property
right holders.

1.8.1.1 Injunctions, apologies and rectification

Article 202(1)–(3) of the Law on IP provides that:

Article 202 – Civil remedies

Courts shall apply the following civil remedies in handling organizations and individuals
that have committed acts of infringing upon intellectual property rights:

1. Compelling the termination of infringing acts;

Intellectual Property Adjudication in Viet Nam

2. Compelling the public apology and rectification;

3. Compelling the performance of civil obligations; …

One of the advantages of civil intellectual property proceedings compared with administrative
action is that a rights owner can seek not only a public apology and rectification but also
compensation for material or spiritual damage. These remedies are not available in an
administrative action.
1.8.1.2 Damages
The principles for determining damage in cases of intellectual property infringement are outlined
 29

at article 204 of the Law on IP:

Article 204 – Principle of determination of damage caused by infringements of

intellectual property rights

1. Damage caused by acts of infringing upon intellectual property rights include:

a. Material damage, including property losses, decreases in income and profit, loss
of business opportunities, reasonable expenses for prevention and remedying of
such damage;
b. Spiritual damage, including damage to honor, dignity, prestige, reputation and
other spiritual losses caused to authors of literary, artistic and scientific works;
to performers; to authors of inventions, industrial designs, layout-designs; and
breeders of plant varieties.

2. The extent of damage shall be determined on the basis of actual losses suffered
by intellectual property right holders due to acts of infringing upon intellectual
property rights.

The bases on which compensation for such damage shall be determined are outlined at
article 205 of the Law on IP:

Article 205 – Bases for determination of compensations for damage caused by

infringements of intellectual property rights

1. Where the plaintiff can prove that an act of infringing upon intellectual property rights
has caused material damage to him/her, he/she shall have the right to request the
court to decide on the compensation level on one of the following bases:
a. total material damage calculated in an amount of money plus profit gained by
the defendant as a result of an act of infringing upon intellectual property rights
where the reduced profit amount of the plaintiff has not yet been calculated into
such total material damage;
b. the price of the licensing of an intellectual property object with the presumption
that the defendant has been licensed by the plaintiff to use that object under a
license contract within the scope corresponding to the committed infringing act;
c. Where it is impossible to determine the level of compensation for material
damage on the bases specified in Points a and b of this Clause, such
compensation level shall be set by the court, depending on the damage extent,
but must not exceed VND 500 million.

2. Where the plaintiff can prove that an act of infringing upon intellectual property
rights has caused spiritual damage to him/her, he/she shall have the right to request
the court to decide on the compensation level ranging from VND 5 million to VND 50
million, depending on the damage extent.”

See also, regarding the calculation of damages, Part B, section I, point 1, of Joint Circular No.
02/2008, and articles 16(2)–20 of Decree No. 105/2006.

1.8.1.3 Destruction
In relation to destruction, article 202(5) of the Law on IP provides that:

Article 202 – Civil remedies

Courts shall apply the following civil remedies in handling organizations and individuals
that have committed acts of infringing upon intellectual property rights:
Chapter 1: Procedure

[…]
5. Compelling destruction, distribution or use for noncommercial purposes of goods,
raw materials, materials and means used largely for the production or trading
of intellectual property right-infringing goods, provided that such destruction,
 30 distribution or use does not affect the exploitation of rights by intellectual property
right holders.

1.8.1.4 Legal costs

Article 205(3) of the Law on IP provides that:

Article 205(3) – Principles for determination of damage caused by infringements of

intellectual property rights

[…]
3. In addition to the damage compensation defined in Clauses 1 and 2 of this Article,
intellectual property right holders shall also have the right to request the court to
compel organizations or individuals that have committed acts of infringing upon
intellectual property rights to pay reasonable costs of hiring attorneys.

The reasonable costs of hiring attorneys are expenses necessary for intellectual property cases,
and their amount depends upon the characteristics and complexity of the case, the skills and
qualifications of the attorney, and amount of time required for “studying the case” – that is, the
time the attorney spends preparing for the case and prosecuting or defending it before the court.

Costs include not only attorney fees but also their travel and accommodation expenses.
Attorneys agree their fees with their clients in legal service contracts, and those fees will be
calculated on bases and with methods set out in article 55 of the Law on Lawyers.

1.8.2 Criminal remedies

Remedies in criminal intellectual property cases include imprisonment, noncustodial sentences,

fines and prohibitions on offenders holding certain positions or doing certain works.

For examples of decisions in criminal intellectual property cases in Viet Nam, see the website
of the Supreme People’s Court.43 One example is Decision No. 146/2019/HS-ST of November 22,
2019, on a criminal infringing of industrial property rights.
Intellectual Property Adjudication in Viet Nam

43 See http://congbobanan.toaan.gov.vn/0t15at1cvn1/Tra-cu-ban-an
Chapter 2
Trademark

2.1 Introduction

This chapter addresses the conduct of civil proceedings relating to registered trademarks in the
District People’s Courts and Provincial People’s Courts, including the Economic Courts within the
Provincial People’s Courts. It also addresses the conduct of criminal proceedings for infringement
of registered trademarks, which are conducted in the same courts.

Procedural aspects of the conduct of such proceedings were considered in Chapter 1 of this
volume, and this chapter will cross-reference that first chapter, where appropriate. A more
general summary of the law of trademarks is provided in Chapter 1 of the first volume in the
series, Introduction to the International Legal Framework for Intellectual Property, which refers to
the treaties that apply, but are not specific, to Viet Nam.

This chapter concludes by referring to action that may be taken in relation to unfair competition.

2.2 What is a trademark in Viet Nam?

A trademark is defined in Viet Nam as “any sign used to distinguish goods and/or services of
different organizations or individuals.”44 A trademark must be registered in association with
specified goods and/or services.

The law of Viet Nam also distinguishes between different types of mark, including:

• a collective mark, which is a mark used to distinguish goods and/or services of members from
those of nonmembers of an organization that is the owner of such a mark;45
• a certification mark, which is a mark its owner authorizes another organization or individual
to use on their goods and/or services to certify the origin, raw materials, materials, mode of
manufacture of goods or manner of provision of services, quality, accuracy, safety or other
characteristics of goods and/or services bearing the mark;46
• a well-known mark, which is a mark widely known by consumers throughout the Vietnamese
territory,47 determined according to criteria set out at article 75 of the Law on IP (see section 2.3);
• a protection title, which is a document granted by the competent state agency to an
organization or individual to establish their industrial property rights to an invention, industrial
design, layout design, trademark or geographical indication, or rights to a plant variety.

A trade name is:

… a designation of an organization or individual in business activities, capable of

distinguishing the business entity bearing it from another entity in the same business
domain and area. A business area mentioned in this Clause means a geographical area
where a business entity has its partners, customers or earns its reputation.48

44 Law on IP, art. 4(16).

45 Law on IP, art. 4(17).
46 Law on IP, art. 4(18).


47 Law on IP, art. 4(20).
48 Law on IP, art. 4(21). 31
 32 A geographical indication is “a sign which identifies a product as originating from a specific
region, locality, territory or country.”49

2.3 Sources of law

The following statutory materials are relevant to the application of trademark law in Viet Nam:

Code of Civil Procedure No. 92/2015/QH13 of November 25, 2015 (“Civil Procedure Code”)

Criminal Code No. 100/2015/QH13, of November 26, 2015 (“Criminal Code”)

Criminal Code No. 12/2017/QH14, of June 20, 2017, on amendments to the Criminal Code
No. 100/2015/QH13 (“Revised Criminal Code”)

Law No. 50/2005/QH11, of November 29, 2005, on Intellectual Property, amended and
supplemented in 2009, 2019 and 2022 (“Law on IP”)

Law No. 15/2012/QH13 of June 20, 2012, on handling administrative violations (“Law on
Administrative Violations”)

Law No. 23/2018/QH14 of June 12, 2018, on competition

Decree No. 103/2006/ND-CP of the Government, enacted in September 2006 and

effective as of November 2006, amended and supplemented in 2010, providing guidelines
for implementing certain articles of the Law on IP concerning industrial property
(“Decree No. 103/2006”)

Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and effective
as of November 2006, providing guidelines for the implementation of certain articles of the
Law on IP regarding enforcement of intellectual property rights and state management of
intellectual property, amended and supplemented in 2010 (“Decree No. 105/2006”)

Decree No. 119/2010/ND-CP of the Government, dated December 30, 2010, amending and
supplementing a number of articles of Decree No. 105/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP on protection of intellectual property
rights and state management of intellectual property

Decree No. 122/2010/ND-CP of the Government, dated December 31, 2010, amending and
supplementing a number of articles of Decree No. 103/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP

Decree No. 99/2013/ND-CP of the Government, enacted in August 2013 and effective as of
October 2013, detailing and providing guidelines for implementing the provisions on handling
of administrative violations concerning industrial property (“Decree No. 99/2013”)

Decree No. 71/2014/ND-CP of the Government, dated July 14, 2014, guiding the imposition
of penalties for the organizations and individuals committing violations against the law on
competition (“Decree No. 71/2014”)

Circular No. 11/2015/ND-CP of June 26, 2015, on detailing and guiding a number of articles
of the Government’s Decree No. 99/2013/ND-CP of August 29, 2013, on sanctioning of
Intellectual Property Adjudication in Viet Nam

administrative violations in the field of industrial property

Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of the Supreme

People’s Court, the Supreme People’s Procuracy, the Ministry of Culture, Sports and Tourism
and the Ministry of Justice, dated April 3, 2008, guiding the application of a number of legal
provisions to the settlement of disputes over intellectual property rights at People’s Courts
(“Joint Circular No. 02/2008”)

49 Law on IP, art. 4(22).

 Resolution No. 02/2020/NQ-HDTP of the Judicial Council of the Supreme People’s Court,
dated September 24, 2020, guiding the application of some provisions stipulating provisional
 33

measures in the Civil Procedure Code (“Resolution No. 02/2020”)

2.4 Obtaining registered trademark protection

To obtain trademark protection in Viet Nam, the applicant must first file a trademark application
with the National Office of Intellectual Property (NOIP) or file an international application
designating Viet Nam under the Madrid Protocol.

Viet Nam is a ‘first to file’ country. Ownership of a trademark is granted to whoever first applies
for registration of the mark in Viet Nam. Such registration may defeat any person who has
previously used the same trademark in Viet Nam but has not registered it.50

The following steps are involved in a trademark application:

1. The organization or individual files an application to register a trademark in relation to

specified goods and services.51

2. The NOIP undertakes an examination of the formalities within one month (which period may
be extended) of the filing date.52

3. During the formality examination, the NOIP may send the applicant a notice of its intention to
refuse the trademark application, stating its reasons and setting a deadline for the applicant
to correct any errors.

4. At the conclusion of its formality examination, the NOIP will either:

– accept the trademark application, in which case it will be published in the Industrial
Property Official Gazette for a period of two months, during which third parties may make
oppositions and comments;53 or
– refuse a trademark application on grounds including that the sign is ineligible for
registration or the applicant does not have the registration right.

5. Refusal on formality grounds may be appealed to the Director General of the NOIP, then
to the Minister of Science and Technology and/or a District People’s Court, or to the
administrative division of the Provincial People’s Court.

6. Within six months of publication, the NOIP will undertake a substantive examination of
the trademark application.54 During the substantive examination, the NOIP will take into
consideration any third-party oppositions or commentary submitted.

7. At the conclusion of the substantive examination, the NOIP will issue either:
– a notice of its intention to grant the trademark and instruction that the trademark
applicant must pay fees, such as the trademark registration fee, after payment of which
the trademark application will proceed to registration and be published in the Industrial
Property Official Gazette; or
– a notice of its intention to refuse a trademark registration, clearly stating its reasons and
setting a two-month deadline for the applicant to address the issues.

Grounds of refusal include that the application does not fully satisfy the protection conditions
and the application does not have the earliest filing date or priority date.55 If these issues are
not addressed within the specified time period, the NOIP will issue a notification of refusal.

50 Law on IP, arts. 90 and 91.

Chapter 2: Trademark

51 Law on IP, art. 108.

52 Law on IP, art. 109.
53 Law on IP, arts. 110 and 112.
54 Law on IP, arts. 114 and 119.
55 Law on IP, art. 117.
 34 8. Both a notification of refusal and a notice of intended grant of a trademark may be appealed
to the Director General of the NOIP, then to the Minister of Science and Technology and/or a
District People’s Court, or to the administrative division of the Provincial People’s Court.

9. Decisions on the grant of a trademark are published by NOIP in the Official Gazette of
Industrial Property within 60 days of the date of its issue.56

2.5 Requirements for trademark registration

In general terms, a sign is eligible for trademark registration if it is:

• a visible sign in the form of letters, words, drawings or images, including holograms, or a
combination thereof, represented in one or more colors; and
• capable of distinguishing goods or services of the mark owner from those of other traders.57

Some signs are not capable of protection as trademarks, including signs that are confusingly
similar to national flags and emblems, and signs that are misleading, cause confusion or
otherwise deceive consumers as to the origin, properties, intended utilities, quality, value or
other characteristics of goods or services.58

Article 74 of the Law on IP addresses the issue of whether or not a trademark is distinctive:

Article 74 – Distinctiveness of marks

1. A mark shall be considered distinctive if it consists of one or several easily noticeable

and memorable elements, or of many elements forming an easily noticeable and
memorable combination, and does not fall into the cases specified in Clause 2 of
this Article.

2. A mark shall be considered as indistinctive if it is a sign or signs falling into one of the
following cases:
a) Simple shapes and geometric figures, numerals, letters or scripts of uncommon
languages, except where such signs have been widely used and recognized as
a mark;
b) Conventional signs or symbols, pictures or common names in any language
of goods or services that have been widely and regularly used and known to
many people;
c) Signs indicating time, place and method of production, category,
quantity, quality, properties, ingredients, intended utility, value or other
characteristics, that are descriptive of goods or services, except where such
signs have acquired distinctiveness through use before the filing of mark
registration applications;
d) Signs describing the legal status and business field of business entities;
e) Signs indicating the geographical origin of goods or services, except where such
signs have been widely used and recognized as a mark or registered as collective
marks or certification marks as provided for in this Law;
f) Signs other than integrated marks which are identical with or confusingly similar
to registered marks of identical or similar goods or services on the basis of
registration applications with earlier filing dates or priority dates, as applicable,
including mark registration applications filed under treaties to which the Socialist
Republic of Vietnam is a contracting party;
Intellectual Property Adjudication in Viet Nam

g) Signs identical with or confusingly similar to another person’s mark which has
been widely used and recognized for similar or identical goods or services before
the filing date or the priority date, as applicable;
h) Signs identical with or confusingly similar to another person’s mark which
has been registered for identical or similar goods or services, the registration
certificate of which has been invalidated for no more than 5 years, except where

56 Law on IP, art. 99.

57 Law on IP, art. 72.
58 Law on IP, art. 73.
 the ground for such invalidation is nonuse of the mark according to Point d,
Clause 1, Article 95 of this Law;
 35

i) Signs identical with or confusingly similar to another person’s mark recognized

as a well-known mark which has been registered for goods or services which are
identical with or similar to those bearing such well-known mark, or for dissimilar
goods or services if the use of such mark may affect the distinctiveness of the
well-known mark or the mark registration is aimed at taking advantage of the
reputation of the well-known mark;
j) Signs identical with or similar to another person’s trade name currently in use if
the use of such signs may cause confusion to consumers as to the origin of goods
or services;
k) Signs identical with or similar to a geographical indication being protected if the
use of such signs may mislead consumers as to the geographical origin of goods;
l) Signs identical with, containing or being translated or transcribed from
geographical indications being protected for wines or spirits if such signs have
been registered for use with respect to wines and spirits not originating from the
geographical areas bearing such geographical indications;
m) Signs identical with or insignificantly different from another person’s industrial
design which has been protected on the basis of an industrial design registration
application with the filing date or priority date earlier than that of the mark
registration application.

2.6 Rights conferred by registration

The owner of a trademark has the rights:

• to use and authorize others to use the trademark;

• to prevent others from using the trademark; and
• to assign and license the trademark.59

Furthermore, under article 198 of the Law on IP, trademark owners may protect their trademark
rights thus:

Article 198 – Right to self-protection

1. Intellectual property right holders shall have the right to apply the following
measures to protect their intellectual property rights:
a. Applying technological measures to prevent acts of infringing upon intellectual
property rights;
b. Requesting organizations or individuals that commit acts of infringing upon
intellectual property rights to terminate their infringing acts, make public
apologies or rectifications and pay damages;
c. Requesting competent state agencies to handle acts of infringing upon
intellectual property rights according to the provisions of this Law and other
relevant provisions of law;
d. Initiating lawsuits at courts or arbitration centers to protect their legitimate
rights and interests.

2. Organizations and individuals that suffer from damage caused by acts of infringing
upon intellectual property rights or discover acts of infringing upon intellectual
property rights which cause damage to consumers or society shall have the right to
request competent state agencies to handle such acts according to the provisions of
this Law and other relevant provisions of law.

“Use” of a trademark includes:

• affixing the mark on goods, on product packaging and on business transaction documents;
Chapter 2: Trademark

• circulating, offering, advertising for sale or stocking for sale goods bearing the mark; and
• importing goods or services bearing the mark.60

59 Law on IP, art. 123.

60 Law on IP, art. 124.
 36 A trademark registration is valid for an initial period of 10 years, and registration can be renewed
for consecutive periods of 10 years.61

2.6.1 Ownership and assignment of a trademark

A registered trademark and a trademark application in progress can be assigned or licensed to a

third party.62

For a trademark assignment to be legally effective, it must be registered with the NOIP.63 The
same is true of a trademark license.64

2.7 Revocation or invalidation

Proceedings may be commenced for the invalidation of a registered trademark either in the NOIP
or by way of cross-claim in answer to a case alleging infringement of a trademark.

2.7.1 Proceedings for the revocation of rights

A claim or application for invalidation of a trademark may be filed with the NOIP.

A decision on the invalidation of a trademark may be appealed to the Director General of the
NOIP, then to the Minister of Science and Technology and/or a District People’s Court, or to the
administrative division of the Provincial People’s Court.

An appeal to the Provincial People’s Court is heard as a rehearing (see section 1.5 of the first
chapter in this volume). The procedure for the conduct of such hearings is broadly that set out in
section 1.6.1 of that chapter.

2.7.2 Grounds for the revocation of a trademark

A trademark can be terminated on the grounds set out in articles 95 and 136 of the Law on IP,
including where the trademark owner:

• fails to pay trademark maintenance and renewal fees;

• declares an intention to relinquish or surrender the trademark;
• no longer exists or is no longer engaged in business activities and there is no rightful heir
or successor;
• or their licensee has not used the trademark for five consecutive years prior to a request for
termination of validity and can give no justifiable reason for that disuse, except where the use
is commenced or resumed at least three months before the request for termination.

In this latter case, the competent agency determines what qualify as “justifiable reasons.”

A protection title (which includes a trademark) may be cancelled, or invalidated, under article 96
of the Law on IP, which provides:

Article 96 – Invalidation of protection titles

1. A protection title shall be entirely invalidated in the following cases:

a) The registration applicant has neither had nor been assigned the right to register
an invention, industrial design, layout-design or mark;
Intellectual Property Adjudication in Viet Nam

b) The subject matter of industrial property fails to satisfy the protection conditions
at the time the protection title is granted.

2. A protection title shall be partly invalidated when that part fails to satisfy the
protection conditions.

61 Law on IP, art. 93(6).

62 Law on IP, arts. 138 and 139.
63 Law on IP, art. 148(1).
64 Law on IP, art. 148(2).
 3. Organizations and individuals may request the state management agency in charge
of industrial property rights to invalidate protection titles in the cases specified in
 37

Clauses 1 and 2 of this Article, provided that they pay fees and charges.

The statute of limitations for exercising the right to request invalidation of a

protection title shall be its whole term of protection. For marks, such statute of
limitations shall be 5 years from the grant date, except where the protection title has
been granted due to the applicant’s dishonesty.

4. Based on the result of the examination of request for invalidation of a protection title
and involved parties’ opinions, the state management agency in charge of industrial
property rights shall issue a decision on entire or partial invalidation of the protection
title or notify the refusal to invalidate it.

5. The provisions of Clauses 1, 2, 3 and 4 of this Article shall also apply to the invalidation
of international registrations of marks.

Decisions on the invalidation of a trademark are published by the NOIP in the Official Gazette of
Industrial Property within 60 days of the date of their issue.65

2.8 Infringement proceedings

2.8.1 Standing

Part II, section 1, clause 2, of Joint Circular No. 02/2008 outlines the persons who have “standing”
to bring civil proceedings in Viet Nam alleging infringement of industrial property rights,
including trademark infringements:

2. Right to institute civil lawsuits over industrial property rights belongs to:

a) Individuals and organizations involved in disputes over the right to register

inventions, industrial designs, layout designs, marks or geographical indications;
[…]
d) Holders of certificates of registered or internationally registered marks, which are
accepted for protection in Vietnam, owners of well-known marks;
e) Holders of industrial property rights to business secrets or trade names;
[…]
h) Lawful heirs of authors of inventions, industrial designs or layout designs; or lawful
heirs of industrial property rights of owners of industrial property objects;
i) Individuals and organizations that are lawfully assigned the ownership of industrial
property objects;
j) Individuals and organizations that are lawfully licensed to use industrial
property objects;
k) Individuals and organizations that are licensed to use industrial property objects
under decisions of competent state agencies:
l) Other rights holders as defined by law.

2.8.2 Establishing infringement

A person infringes a trademark under article 129 of the Law on IP where, without the trademark
owner’s permission, they use:

• signs identical to registered marks for goods or services that are identical with those goods or
services for which such marks have been registered;
• signs identical to registered marks for goods or services that are similar or related to those
Chapter 2: Trademark

goods of services for which such marks have been registered, if such use is likely to cause
confusion as to the origin of the goods or services;

65 Law on IP, art. 99.

 38 • signs similar to registered marks for goods or services that are identical, similar, or related
to those goods or services for which such marks have been registered, if such use is likely to
cause confusion as to the origin of the goods or services;
• signs identical or similar to well-known marks, or signs in the form of translations or transcriptions
of well-known marks for any goods or services, including those not identical with, dissimilar or
unrelated to goods or services for which such marks have been registered, if such use is likely to
cause confusion as to the origin of the goods or services or create a misleading impression as to
the relationship between the users of such signs and the owners of the well-known mark.

Decree No. 105/2006 provides further guidance on how to determine whether or not a trademark
has been infringed, including in its articles 5, 6 and 11:

Article 5 – Determination of acts of infringement

An examined act shall be regarded as an act of infringement of intellectual property rights

specified in Articles 28, 35, 126, 127, 129 and 188 of the Law on IP when all the following
bases exist:

1. The examined subject matter is a protected one.

2. The examined subject matter contains an infringing element.

3. The person that takes the examined act is neither the intellectual property right
holder nor any person permitted by law or a competent agency under Articles 25, 26,
32, 33, Clauses 2 and 3 of Article 125, Article 133, Article 134, Clause 2 of Article 137,
Articles 145, 190 and 195 of the Law on IP.

4. The examined act takes place in Vietnam.

An examined act that takes place in the internet but is targeted at consumers or
information users in Vietnam shall be regarded to take place in Vietnam.
Article 6 – Bases for determination of protected subject matter

1. The determination of a protected subject matter shall be based on the examination of

documents and evidence proving the bases for emergence and establishment of the
rights specified in Article 6 of the Law on IP.

2. For intellectual property rights that have been registered with competent agencies,
the protected subject matters shall be determined on the basis of the registration
certificates, protection titles and other documents accompanying such certificates
and protection titles.

[…]

3. For well-known marks, the protected subject matters shall be determined on the
basis of documents and evidence expressing the reputation of the marks according to
the criteria defined in Article 75 of the Law on IP.

Article 11 – Infringing elements of marks

1. An infringing element of a mark is a sign affixed on goods, their packages,

means of services, transaction documents, signboards, means of advertising
or other means of business that is identical or confusingly similar to the
protected mark.

2. The basis for determination of an infringing element of a mark is the scope of

Intellectual Property Adjudication in Viet Nam

protection of the mark including the mark specimen and a list of goods and services
in the mark registration certificate or the certificate of protection in Viet Nam of the
internationally registered mark.

3. In order to determine whether a suspected sign is an infringing element of a mark, it

is required to compare such sign to the mark and at the same time to compare goods
or services bearing such sign to the protected products or services. An infringing
element can only be confirmed if the following two conditions are fully met:
a. The suspected sign is identical or confusingly similar to the mark within the
scope of protection; where a sign is regarded as identical to a protected
 mark if it has the same composition and method of presentation (including
the colors); a sign is regarded as confusingly similar to a protected mark if
 39

it has several features identical or similar to those of the protected mark to

such an extent that it is not easy to distinguish between them in terms of
composition, the way of pronunciation, the way of phonetic transcription
of signs, letters, meaning, the method of presentation and colors, thereby
causing confusion to consumers in selecting goods or services bearing
the mark;
b. Goods or services bearing the suspected sign that are identical or similar in
substance to, have a relationship in terms of functions and utility with, and have
the same distribution channel with, the protected goods or services.

4. For well-known marks, a suspected sign shall be regarded as an infringing element if:
a. The suspected sign meets the condition specified at Point a, Clause 3 of
this Article;
b. Goods or services bearing the suspected sign meet the condition specified at
Point b, Clause 3 of this Article or goods or services are not identical, similar or
related to the goods or services bearing the well-known mark but are capable
of misleading customers as to the origin of services or goods or creating wrong
impressions about the relationship between the producer or trader of such
goods or services and the owner of the well-known mark.

5. When a product or service bears a sign that is identical to or is insignificantly different

in terms of overall composition and method of presentation from the protected mark
of a product or service of the same type within the scope of protection, it shall be
regarded as a counterfeit mark goods as provided for in Article 213 of the Law on IP.

2.8.2.1 Defenses to allegations of infringement

To successfully defend a claim for trademark infringement, the defendant must establish that the
acts do not constitute trademark infringement.

In particular, a defense is likely to include consideration of whether the allegedly infringing use is
of a trademark that is sufficiently similar to the registered trademark to amount to infringement.
This will also involve consideration of whether the alleged use is in relation to the same or similar
goods and services in respect of which the trademark is registered.
2.8.2.2 Cross-claim challenging the validity of a trademark
A defendant to proceedings for the infringement of a trademark may bring a cross-claim for the
revocation of the trademark, arguing that the trademark does not possess the requirements for a
valid trademark.

As noted in section 1.2 of the first chapter in this volume, the courts have the right to hear
disputes about the registration of industrial property rights.66
2.8.3 Procedure for conduct of infringement proceedings

The process by which proceedings for the infringement of a trademark are conducted is set out in
section 1.6 of the first chapter in this volume.

2.9 Evidence

Evidentiary requirements in trademark infringement proceedings are set out in article 203 of the
Law on IP:

Article 203 – Right and burden of proof of involved parties

1. The plaintiff and defendant in a lawsuit against intellectual property right

infringement shall enjoy the right and bear the burden of proof provided for in Article
79 of the Civil Procedure Code and this Article.
Chapter 2: Trademark

66 See Decree No. 103/2006, art. 14; Law on Administrative Procedures, art. 32.
 40 2. The plaintiff shall prove that [they are] the intellectual property right holder with one
of the following evidence:
(a) … the national register of industrial property
[…]

See also section 1.7 of the first chapter in this volume.

2.10 Remedies
What follows are the remedies broadly available in the event of infringement of trademark rights
in Viet Nam.

See also Chapter 4 of the first volume in this series, Introduction to the International Legal
Framework for Intellectual Property, for remedies more generally.

Article 199 of the Law on IP provides that:

Article 199 – Remedies against acts of infringing upon intellectual property rights

1. Organizations and individuals that commit acts of infringing upon intellectual

property rights of other organizations and individuals shall, depending on the nature
and seriousness of such infringements, be handled with civil, administrative or
criminal remedies.

2. In case of necessity, competent state agencies may apply provisional urgent

measures, measures to control intellectual property-related imports and exports,
or measures to prevent and secure the administrative sanctioning according to the
provisions of this Law and other relevant provisions of law.

2.10.1 Civil remedies

In civil proceedings, the owner of a trademark may seek any of the following remedies for
trademark infringement:

• injunction compelling the termination of infringing acts;

• public apology and rectification;
• specific performance (i.e., compelling the performance of civil obligations);
• damages; and/or
• destruction, distribution or use for noncommercial purposes of goods, raw materials, materials
and means used largely for the production or trading of infringing goods, provided that such
destruction, distribution or use does not affect the exploitation of rights by their owners or
other authorized holders.67

2.10.2 Provisional urgent measures

Upon or after the initiation of civil proceedings, the trademark owner may request that the court
apply provisional urgent measures if:

• there exists a danger of irreparable damage to the owner’s interests or the interests of other
authorized rights holders; and/or
Intellectual Property Adjudication in Viet Nam

• goods suspected of infringing upon intellectual property rights or evidence related to the act
of infringing upon industrial property rights are likely to be dispersed or destroyed unless they
are protected in time.68

The court will decide to apply provisional urgent measures at the request of the trademark owner
before hearing from the alleged trademark infringer.69

67 Law on IP, art. 202.

68 Law on IP, art. 206(1).
69 Law on IP, art. 206(2).
The following provisional urgent measures may be applied to allegedly infringing goods or to raw
materials, materials or means of production or trading of such goods:
 41

• seizure;
• distraint;
• sealing;
• ban from alteration of original state;
• ban from movement;
• ban from ownership transfer; and
• such other provisional urgent measures as may be applied according to the provisions of the
Civil Procedure Code.70

For further information about civil remedies, see section 1.8.1 of the first chapter in this volume.

See also Resolution No. 02/2020.

2.10.3 Criminal remedies

Article 212 of the Law on IP states that “[a]ny individual who commits an act of infringement
of intellectual property rights involving a criminal element shall be criminally prosecuted in
accordance with the criminal law.”

Trademark infringements attracting criminal measures are usually acts of such a high level of
danger to society that they are considered criminal.

The procedure for the conduct of first-instance criminal proceedings in intellectual property
cases is that set out in section 1.6.3 of the first chapter in this volume.

Acts violating industrial property rights in relation to trademarks may constitute crimes such as:

• manufacturing and trading in counterfeit goods, as specified in article 192 of the

Criminal Code;
• the crime of producing and trading in counterfeit food, foodstuffs and food additives, as
specified in article 193 of the Criminal Code; or
• the crime of trading in and producing counterfeit goods that are curative or prophylactic
drugs, as specified in article 194 of the Criminal Code.

In criminal proceedings, the following sanctions are possible.71

1. A person who infringes a trademark and earns an illegal profit of between VND 100 million
and VND 300 million or who causes a loss of between VND 200 million and VND 500 million
to the owner of such brand name or geographical indication, or where the violating goods
are assessed at a value between VND 200 million and VND 500 million, shall be liable to a
fine of between VND 50 million and VND 500 million or face a penalty of up to three years’
community sentence.

2. An offense committed in any of the following circumstances carries a fine of between

VND 500 million and VND 1 billion or a penalty of between three and six years’ imprisonment:
(a) the offense is committed by an organized group;
(b) the offense has been committed more than once;
(c) the illegal profit reaped is more than VND 300 million;
(d) the loss incurred by the owner of the brand name or geographical indication is more than
VND 500 million; or
(e) the illegal goods are assessed at more than VND 500 million.

3. The trademark infringer might also be liable to a fine of between VND 20 million and
Chapter 2: Trademark

VND 200 million, and prohibited from holding certain positions or doing certain works for
between one and five years.

70 Law on IP, art. 207.

71 Criminal Code, art. 226.
 42 A corporate legal entity that commits trademark offenses under article 226(1) of the Criminal
Code may also be liable to a fine of between VND 500 million and VND 2 billion.

A corporate legal entity that commits trademark offenses under article 266(2) of the Criminal
Code may also be liable to a fine of between VND 2 billion and VND 5 billion or may have its
operations suspended for between 6 and 24 months.

Corporate legal entities might also be banned from operating in certain fields or raising capital
for between one and three years.

For further information about criminal remedies, see section 1.8.2 of the first chapter in
this volume.

2.10.4 Administrative sanctions

Article 200(3) of the Law on IP provides: “The application of administrative remedies shall fall
under the competence of inspectorates, police offices, market management offices, custom
offices and People’s Committees of all levels. In case of necessity, these agencies may apply
measures to prevent and secure the administrative sanctioning provided for by law.”

For further information about the sanctioning of administrative violations of trademark

rights, see:

• articles 211, 214 and 215 of the Law on IP; and

• the following articles of the Decree No. 99/2013:
– article 11 (“Infringement of rights to marks, geographical indications, trade names or
industrial designs”);
– article 12 (“Production, import, trading, transportation or storage for sale of goods bearing
counterfeit marks or geographical indications”); and
– article 13 (“Production, import, trading, transportation or storage for sale of stamps, labels
or articles bearing counterfeit marks or geographical indications”).

For further information about administrative sanctions for intellectual property infringement
more broadly, see section 1.6.2 of the first chapter in this volume.

2.11 Unfair competition

2.11.1 Definition

In Viet Nam, under article 130 of the Law on IP:

1. the following acts shall be regarded as acts of unfair competition:

(a) Using commercial indications to cause confusion as to business entities, business
activities or commercial origin of goods or services;
(b) Using commercial indications to cause confusion as to the origin, production
method, utilities, quality, quantity or other characteristics of goods or services; or
as to the conditions for provision of goods or services;
(c) Using marks protected in a country which is a contracting party to a treaty
to which the Socialist Republic of Viet Nam is also a contracting party
and under which representatives or agents of owners of such marks are
Intellectual Property Adjudication in Viet Nam

prohibited from using such marks, if users are representatives or agents of

the mark owners and such use is neither consented to by the mark owners
nor justified;
(d) Registering or possessing the right to use or using domain names
identical with, or confusingly similar to, protected trade names or
marks of others, or geographical indications without having the right to
use, for the purpose of possessing domain names, benefiting from or
prejudicing reputation and popularity of respective marks, trade names or
geographical indications.
 2. Commercial indications specified in Clause 1 of this Article mean signs and
information serving as guidelines to trading of goods or services, including marks,
 43

trade names, business symbols, business slogans, geographical indications, designs

of packages and/or labels of goods.

3. Acts of using commercial indications specified in Clause 1 of this Article include

acts of affixing such commercial indications on goods, goods packages, means of
service provision, business transaction documents or advertising means; selling,
advertising for sale, stocking for sale and importing goods affixed with such
commercial indications.

2.11.2 Remedies

The civil remedies for trademark infringement are largely also available against
unfair competition.

Article 198(3) of the Law on IP provides that:

Article 198 – Right to self-protection

[…]
3. Organizations and individuals that suffer from damage or are likely to suffer
from damage caused by acts of unfair competition shall have the right to request
competent state agencies to apply the civil remedies provided for in Article 202 of this
Law and the administrative remedies provided for by competition law.

Furthermore, article 6 of Decree No. 71/2014 provides that:

Article 6 – Compensation for damage caused by violations against law on competition

1. Any organization or individual committing violations against the law on competition

must compensate for the damage to the interests of the State and lawful rights and
interests of other entities.

2. The compensation mentioned in Clause 1 this Article is prescribed in the regulations

of the civil law.

The criminal remedies for unfair competition are also largely the same as those available for
trademark infringement.

Chapter 2: Trademark
Chapter 3
Patent

3.1 Introduction

This chapter addresses the conduct of civil proceedings involving patents in the District
People’s Courts and the Provincial People’s Courts, including the Economic Courts within the
Provincial People’s Courts. No criminal proceedings are available for patent infringement
in Viet Nam.

Procedural aspects of the conduct of such proceedings were considered in Chapter 1 of this
volume, and this chapter will cross-reference that first chapter, where appropriate. A more
general summary of the law of patents is provided in Chapter 2 of the first volume in the series,
Introduction to the International Intellectual Property Legal Framework, which refers to the treaties
that apply, but are not specific, to Viet Nam.

3.2 What is a patent in Viet Nam?

The Law on IP refers not to patent as such but to industrial property rights, which
means and includes “rights of organizations and individuals to inventions, industrial
designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade
names and geographical indications they have created or own, and right to repression of
unfair competition.” 72

An invention is defined as “a technical solution in the form of a product or a process which is

intended to solve a problem by application of laws of nature.” 73

The Law on IP refers to two different types of patent:

• an invention patent; and

• a utility solution patent.

An invention patent must be novel, involve an inventive step and be susceptible to

industrial application.74

A utility solution patent must be novel and be susceptible to industrial application – that is, a
utility solution patent does not need to involve an inventive step.75

A protection title is a document granted by the competent state agency to an

organization or individual to establish their industrial property rights to an invention,
industrial design, layout design, trademark or geographical indication, or rights to a
plant variety.

72 Law on IP, art. 4(4).

73 Law on IP, art. 4(12).
74 Law on IP, art. 58(1).
75 Law on IP, art. 58(2).
44
3.3 Sources of law  45

The following statutory materials are relevant to the application of patent law in Viet Nam

Law No. 50/2005/QH11, of November 29, 2005, on Intellectual Property, amended and
supplemented in 2009, 2019 and 2022 (“Law on IP”)

Law No. 15/2012/QH13 of June 20, 2012, on handling administrative violations (“Law on
Administrative Violations”)

Law No. 42/2019/QH14 on amendments to some articles of law on insurance business and
Law on Intellectual Property (“Law No. 42/2019”)

Decree No. 103/2006/ND-CP of the Government, enacted in September 2006 and

effective as of November 2006, amended and supplemented in 2010, providing
guidelines for implementing certain articles of the Law on IP concerning industrial
property (“Decree No. 103/2006”)

Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and

effective as of November 2006, providing guidelines for the implementation of certain
articles of the Law on IP regarding enforcement of intellectual property rights and
state management of intellectual property, amended and supplemented in 2010
(“Decree No. 105/2006”)

Decree No. 119/2010/ND-CP of the Government, dated December 30, 2010, amending and
supplementing a number of articles of Decree No. 105/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP on protection of intellectual property
rights and state management of intellectual property

Decree No. 122/2010/ND-CP of the Government, dated December 31, 2010, amending and
supplementing a number of articles of Decree No. 103/2006/ND-CP detailing and guiding the
implementation of a number of articles of the Law on IP

Decree No. 99/2013/ND-CP of the Government, enacted in August 2013 and effective
as of October 2013, detailing and providing guidelines for implementing the
provisions on handling of administrative violations concerning industrial property
(“Decree No. 99/2013”)

Circular No. 11/2015/TT-BKHCN of the Government, dated June 26, 2015, on detailing and
guiding a number of articles Decree No. 99/2013/ND-CP, on sanctioning of administrative
violations in the field of industrial property

Circular No. 01/2007/TT-BKHCN of the Government of February 14, 2007, guiding the
implementation of Decree No. 103/2006/ND-CP, detailing and guiding the implementation of
a number of articles of the Law on IP regarding industrial property (“Circular No. 01/2007”)

Circular No. 13/2010/TT-BKHCN dated July 30, 2010 on amending and supplementing a
number of provisions of the Circular No. 17/2009/TT-BKHCN of June 18, 2009 and Circular No.
01/2007/TT-BKHCN (“Circular No. 13/2010”)

Circular No. 18/2011/TT-BKHCN dated July 22, 2011 on amending and supplementing
some provisions of Circular No. 01/2007/TT-BKHCN, being amended and supplemented by
Circular No. 13/2010/TT-BKHCN and Circular No. 01/2008/TT-BKHCN, being amended and
supplemented by Circular No. 04/2009/TT-BKHCN, of March 27, 2009 (“Circular No. 18/2011”)

Circular No. 05/2013/TT-BKHCN dated February 20, 2013 on amending Circular

Chapter 3: Patent

No. 01/2007/TT-BKHCN, amended in Circular No. 13/2010/TT-BKHCN and

Circular No.18/2011/TT-BKHCN
 46 Circular No. 11/2015/TT-BKHCN dated June 26, 2015, detailing and guiding a number of
Articles of Decree No. 99/2013/ND-CP (“Circular No. 11/2015”)

Circular No. 16/2016/TT-BKHCN dated June 30, 2016 on amendment and supplement
of some articles of Circular No. 01/2007/TT-BKHCN, amended and supplemented by
Circular No. 13/2010/TT-BKHCN, Circular No. 18/2011/TT-BKHCN and
Circular No. 05/2013/TT-BKHCN (“Circular No. 16/2016”)

Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDT-BVHTT&DL-BKH&CN-BTP of the Supreme

People’s Court, the Supreme People’s Procuracy, the Ministry of Culture, Sports and Tourism
and the Ministry of Justice, dated April 3, 2008, guiding the application of a number of legal
provisions to the settlement of disputes over intellectual property rights at people’s courts
(“Joint Circular No. 02/2008”)

Resolution No. 02/2020/NQ-HDTP of the Judicial Council of the Supreme People’s Court,
dated September 24, 2020, guiding the application of some provisions stipulating
provisional measures in the Civil Procedure Code (“Resolution No. 02/2020”)

3.4 Obtaining patent protection

A patent application must be filed with the NOIP or under the Patent Cooperation Treaty.76

In broad terms, a patent is a document that describes the invention to be its subject and sets
out the monopoly claims over it that the patent applicant asserts. The patent is set down in a
document that is referred to as a specification.

An applicant must meet a number of formal requirements if their patent specification is to be

valid, including matters such as an adequate description of the invention and a clear scope of
the claims.

The substantive requirements for a valid patent are considered at section 3.5.

3.4.1 Application process

To be granted an invention patent in Viet Nam, an applicant must first file a patent application
with the NOIP.

The following steps are typically involved in a patent application proceeding.

1. The organization or individual files a patent application with the NOIP.77

2. The NOIP undertakes an examination of the formalities.78

3. During the formality examination, the NOIP may send the applicant:
– a notice of its intention to refuse the patent application, stating its reasons and
setting a deadline for the applicant to correct any errors or to object to such intended
refusal; or
– a notice of refusal of the patent application if the applicant fails to correct errors,
improperly corrects errors or fails to make a justifiable objection to such intended refusal.79
Intellectual Property Adjudication in Viet Nam

4. At the conclusion of its formality examination, the NOIP will either:

– accept the patent application, in which case it will be published in the Industrial Property
Official Gazette for a period of two months, during which parties may submit third time
oppositions and opinions (see section 3.4.2);80 or

76 See section 2.3 in the second chapter of the first volume.

77 Law on IP, art. 108.
78 Law on IP, art. 109.
79 Law on IP, art. 109(3).
80 Law on IP, arts. 110 and 112.
 – refuse the patent application on formality grounds, including that the invention is
ineligible for registration.
 47

An invention patent application will be published in the 19th month after the filing date or the
priority date, as applicable, or at an earlier time at the request of the applicant.81

5. Refusal on formality grounds may be appealed to the Director General of NOIP, then to the
Minister of Science and Technology, and then to the Provincial Administrative Court.

6. Within 42 months for an invention patent or 36 months for a utility solution patent after
the filing date or the priority date, as applicable, the patent applicant or any third party
may request the NOIP to substantively examine the application, provided that they pay
the substantive examination fee. If no application is made within that period, the patent
application is considered withdrawn.82

7. During the substantive examination, the NOIP will take into consideration any third-party
oppositions or opinions submitted.83

8. At the conclusion of the substantive examination, the NOIP will issue, under articles 117 and
118 of the Law on IP, either:
– a notice of its intention to refuse the patent, clearly stating its reasons and setting a
deadline for the applicant to object to its intention, and if these issues are not addressed
within the specified period, the NOIP will issue a notification of refusal; or
– a notice of its intention to grant of the patent and instruction that the patent applicant
must pay the relevant fees, after payment of which the patent application will proceed to
grant and be published in the Industrial Property Official Gazette.

9. A third party may oppose a notice of intention to grant a patent by requesting that the
pending application be re-examined.84

10. A notice of refusal and a notice of intention to grant of a patent may be appealed to the
Director General of NOIP, then to the Minister of Science and Technology, and then to the
Provincial Administrative Court.

11. Decisions on the grant of a patent are published by the NOIP in the Official Gazette of
Industrial Property within 60 days of the date of their issue.85

3.4.2 Opposition

In terms of third parties’ submissions in opposition proceedings, article 112 of the Law on IP
provides that:

Article 112 – Third party’s opinions on the grant of protection titles

As from the date an industrial property registration application is published in the Official
Gazette of Industrial Property until prior to the date of issuance of a decision on grant of
a protection title, any third party shall have the right to express opinions to the concerned
state management agency in charge of industrial property rights on the grant or refusal
to grant a protection title in respect of such application. Such opinions must be made in
writing and be accompanied by documents or must quote the source of information.

In accordance with article 117(4) of the Law on IP and section 16 of Circular No. 01/2007,
re-examination of a patent may be requested for a pending patent application. A patent
application will be re-examined when a third party or the applicant opposes the NOIP’s notice of
intention to grant or notice of intention to refuse a patent, respectively.

81 Law on IP, art. 110(2).

Chapter 3: Patent

82 Law on IP, art. 113.

83 Law on IP, art. 112.
84 Law on IP, art. 117(4).
85 Law on IP, art. 99.
 48 Article 117(4) of the Law on IP provides as follows:

Article 117 – Refusal to grant protection titles

[…]
4. Where there appears an objection to the intended grant of a protection title, the
relevant industrial property registration application shall be re-examined with regard
to the matters against which the objection is made.

3.4.3 Appeals

A notice of refusal and a notice of intention to grant a patent may be appealed to the
Director General of the NOIP, then to the Minister of Science and Technology, and then to the
administrative division of the Provincial People’s Court.

Where an appeal is made to the administrative division of the Provincial People’s Court, the subject
of the appeal is conducted as a rehearing (see section 1.5 of the first chapter in this volume). The
procedure for the conduct of such hearings is broadly that set out in section 1.6.1 of that chapter.

3.5 Requirements for a valid patent

The substantive requirements that must be met if a patent is to be granted concern whether the
invention claimed is new (novel), inventive and involves patentable subject matter.

3.5.1 Patentable subject matter

The following are not patentable subject matter:

• scientific discoveries or theories and mathematical methods;

• schemes, plans, rules and methods for performing mental acts, training domestic animals,
playing games and doing business;
• computer programs;
• presentations of information;
• solutions of aesthetical characteristics only;
• plant varieties and animal breeds;
• processes of plant or animal production, which are principally of biological nature other than
microbiological ones; and
• human and animal disease prevention, and diagnostic and treatment methods.86

3.5.2 Novelty

Under article 60 of the Law on IP, disclosure of the invention for which patent protection is sought
in any form, including by use, anywhere in the world shall destroy its novelty.

Article 60 of the Law on IP provides that:

Article 60 – Novelty of inventions

1. If it has not yet been publicly disclosed through use or by means of a

written description or any other form, inside or outside the country,
before the filing date or the priority date, as applicable, of the invention
registration application;
Intellectual Property Adjudication in Viet Nam

2. Having not yet been publicly disclosed if it is known to only a limited number of
persons who are obliged to keep it secret;

3. It is considered that an invention does not lose its novelty if it is directly or indirectly
disclosed by the person entitled to registration specified in Article 86 of this Law or
by the person who has information about the invention under the condition that
the patent application is submitted in Vietnam within 12 months from the date
of disclosure;

86 Law on IP, art. 59.

 4. The provisions of Clause 3 of this Article shall also be applied to any invention disclosed
in the industrial property application or industrial property protection announced by
 49

industrial property authority in case the announcement is inconsistent with provisions

of laws or the application is submitted by a person ineligible for registration.

There is, however, a grace period of 12 months provided for an invention that is:

• directly or indirectly disclosed by the person entitled to registration specified in article 86 of

the Law on IP;
• disclosed by the person who has information about the invention under the condition that the
patent application is submitted in Viet Nam within 12 months from the date of disclosure; or
• disclosed in the industrial property application or industrial property protection announced
by an industrial property authority in the event that the announcement is inconsistent with
provisions of laws or the application is submitted by a person ineligible for registration.

The grace period was formerly six months; the change came into force on November 1, 2019.87

3.5.3 Inventive step

Article 2(3) of the Law No. 42/2019 provides that an invention involves “an inventive step” under
article 61(1) of the Law on IP if:

… based on technical solutions that have been publicly disclosed in the form of use or
written description or in any other form at home and abroad prior to the submitting date
or the privilege date of the patent application if those applications entitled to privileges;
or the invention is an innovation and cannot be easily created by a person with average
knowledge about the corresponding technical field.

Circular No. 01/2007, which comprises detailed guidelines for implementation of the Law
on IP, provides in its article 25(6) that the prior art relevant for the purposes of considering
an inventive step shall include all the publications or uses that are publicly available
anywhere in the world prior to the filing or priority date of the patent application
under examination.

In assessing an inventive step, the NOIP examiner will assess whether the essential technical
features defining the invention in question have been disclosed in the prior art and whether the
combination of the essential technical features of the invention would have been obvious to a
person with ordinary skill in the art.

An invention will be regarded as involving an inventive step if it is a result of an inventive activity

and is not general or average knowledge in the relevant art.

3.5.4 Susceptible to industrial application

An invention is “susceptible of industrial application” under article 62 of the Law on IP if “it is

possible to realize mass manufacture or production of products or repeated application of the
process that is the subject matter of the invention, and to achieve stable results.”

3.6 Rights conferred by a patent

The owner of a patent has the right, under article 123 of the Law on IP:

• to use and authorize others to use the invention;

• to prevent others from using the invention; and
• to assign and license the invention.
Chapter 3: Patent

87 Amendments to art. 60(3) and addition of new (4) to the Law on IP, under art. 2(2) of Law No. 42/2019.
 50 Under article 124 of the Law on IP, “use” of an invention includes:

• manufacturing the protected product;

• applying the protected process;
• exploiting utilities of the protected product or the product manufactured under the
protected process;
• circulating, advertising, offering, stocking for circulation the protected product or the product
manufactured under the protected process; and
• importing the the protected product or the product manufactured under the
protected process.

3.6.1 Duration of rights

An invention patent is valid for 20 years, starting from the grant date and expiring at the end of
20 years after the filing date.88

A utility solution patent is valid for 10 years, starting from the grant date and expiring at the end
of 10 years after the filing date.89
3.6.2 Ownership of and transferring rights

3.6.2.1 Assignment and licensing

A patent’s owner can assign or license it to a third party.90

For a patent assignment to be legally effective, it must be registered with the NOIP.91 The same is
true of a patent license.92

Article 148 of the Law on IP stipulates:

Article 148 – Effect of industrial property rights transfer agreement

1. As for industrial property rights granted on the basis of registration specified in Point
a, Clause 3, Article 6 of this Law, an industrial property rights transfer agreement
shall only come into force when it has been registered with industrial property
rights authority.

2. As for industrial property rights granted on the basis of registration specified in Point
a, Clause 3, Article 6 of this Law, industrial property rights agreements shall come into
force according to the agreement between the parties.

3. Industrial property rights agreements specified in Clause 2 of this Article, except for
trademark use agreements, shall be registered with an industrial property rights
authority to be valid for third parties.

4. An industrial property rights agreement shall be invalidated if transferor’s industrial

property rights are invalidated.

3.6.2.2 Compulsory licensing for State use

In Viet Nam, the State also has a right to demand a compulsory license of an invention in
certain circumstances.

Article 133 of the Law on IP states that:

Intellectual Property Adjudication in Viet Nam

Article 133 – Rights of use of inventions on behalf of the State

1. Ministries and ministerial-level agencies shall have the right to, on behalf of the State,
use or permit other organizations or individuals to use inventions in domains under

88 Law on IP, art. 93(1).

89 Law on IP, art. 93(2).
90 Law on IP, arts. 138 and 139.
91 Law on IP, art. 148(1).
92 Law on IP, art. 148(2).
 their respective management for public and noncommercial purposes, national
defense, security, disease prevention and treatment and nutrition for the people, and
 51

to meet other urgent social needs without having to obtain permission of invention
owners or their licensees under exclusive contracts (hereinafter referred to as holders
of exclusive right to use inventions) according to Articles 145 and 146 of this Law.

2. The use of inventions mentioned in Clause 1 of this Article shall be limited within the
scope of and under the conditions for licensing provided for in Clause 1, Article 146
of this Law, except where such inventions are created by using material-technical
facilities and funds from the state budget.

Viet Nam’s Law on IP includes elaborate provisions for compulsory licensing.93 It provides for
three general categories under which compulsory licenses shall be invoked – namely:

• for dependent inventions;94

• for reasons of the public interest;95 and
• for failure to work the invention.96

It adds to these another ground: where the third party fails to negotiate a license on reasonable
terms and conditions.97

Article 146(d) of the Law on IP provides that “[t]he licensee shall have to pay the holder of exclusive
right to use the invention a satisfactory compensation depending on the economic value of such use
right in each specific case, and compliant with the compensation bracket set by the Government.”

Article 147(1) of the Law on IP states that:

Article 147 – Competence and procedures for licensing of inventions under

compulsory decisions

1. The Science and Technology Ministry shall issue decisions on licensing of inventions
based on the consideration of requests for licensing in the cases specified at Points b,
c and d, Clause 1, Article 145 of this Law.
Ministries and ministerial-level agencies shall issue decisions on licensing of
inventions in domains under their respective management in the cases specified at
Point a, Clause 1, Article 145 of this Law after consulting opinions of the Science and
Technology Ministry.

Decisions on the licensing of inventions or on refusal to license an invention may be subject to

complaints or lawsuits, according to the provisions of Vietnamese law.98

There has only been one instance of the compulsory licensing of patent rights in Viet Nam to date.

In 2005, the country was faced with a critical shortage of a drug in the context of the bird flu
pandemic caused by the H5N1 virus. The government approached Swiss pharma company
Roche and negotiated a license for a Vietnamese company to produce Tamiflu, meeting its
emergency needs.

It had been the Ministry of Health’s intention, in the event that no license agreement was reached
with Roche, to suspend Roche’s patent rights and authorize one or more Vietnamese companies
to manufacture the drug for a noncommercial purpose based on the Civil Code and a related
government decree from 1996. Fortunately, Roche agreed to grant the license to a Vietnamese
company that it selected to manufacture the drug.

In light of these provisions, it remains possible in theory for Viet Nam’s government to either
suspend the patenting or compel the licensing of COVID-19 vaccines for emergency needs in
pursuit of disease prevention.

93 Law on IP, arts. 145–147.

Chapter 3: Patent

94 Law on IP, art. 146(2).

95 Law on IP, art. 145(1)(a).
96 Law on IP, art. 145(1)(b).
97 Law on IP, art. 145(1)(c).
98 Law on IP, art. 147(d).
 52 3.7 Revocation or invalidation

A claim or application for invalidation of a patent must be filed with the NOIP. A decision on the
invalidation of a patent may be appealed to the Director General of the NOIP, then to the Minister
of Science and Technology, and then to the administrative division of the Provincial People’s Court.

The courts do not have the power to cancel a patent. However, the Chief Judges of the courts
may make recommendations regarding the amendment, supplementation or annulment of legal
documents of the NOIP.99 In practice, the NOIP would typically follow these recommendations.

Related infringement proceedings before the civil courts may or may not be suspended until the
NOIP – or, if appealed, the Director General of the NOIP, the Minister of Science and Technology
or the administrative division of the Provincial People’s Court – issues its decision on invalidity.

3.7.1 Standing to apply for revocation

Any natural and juridical party can file a patent invalidation request with the NOIP. No legal
interest is required.

Article 96(3) of the Law on IP provides that “[a]ny organization or individual may request the
State administrative body for industrial property rights to invalidate a protection title in the cases
specified in clauses 1 and 2 of this article, provided that such applicant pays fees and charges.”
These provisions are detailed in point 21 of Circular No. 01/2007 and point 20 of
Circular No. 16/2016.

3.7.2 Grounds for revocation

Article 96 of the Law on IP provides that, during the term of its validity, a third party may initiate
an invalidation action against the patent if:

• any of the requirements for patentability were not fulfilled at the time it was granted; or
• the person to whom it was granted was not entitled to apply for and be granted the patent.

A protection title (which includes a patent) may be cancelled or invalidated under article 96 of the
Law on IP, which provides:

Article 96 – Invalidation of protection titles

1. A protection title shall be entirely invalidated in the following cases:

a) The registration applicant has neither had nor been assigned the right to register
an invention, industrial design, layout-design or mark;
b) The subject matter of industrial property fails to satisfy the protection conditions
at the time the protection title is granted.

2. A protection title shall be partly invalidated when that part fails to satisfy the
protection conditions.

3. Organizations and individuals may request the state management agency in charge
of industrial property rights to invalidate protection titles in the cases specified in
Clauses 1 and 2 of this Article, provided that they pay fees and charges.
The statute of limitations for exercising the right to request invalidation of a
Intellectual Property Adjudication in Viet Nam

protection title shall be its whole term of protection. For marks, such statute of
limitations shall be 5 years from the grant date, except where the protection title has
been granted due to the applicant’s dishonesty.

4. Based on the result of the examination of request for invalidation of a protection title
and involved parties’ opinions, the state management agency in charge of industrial
property rights shall issue a decision on entire or partial invalidation of the protection
title or notify the refusal to invalidate it.

99 Decree No. 103/2006, art. 14; Law on Administrative Procedures, art. 112.
 5. The provisions of Clauses 1, 2, 3 and 4 of this Article shall also apply to the invalidation
of international registrations of marks.
 53

3.7.3 Appeals to the Provincial People’s Court

Decisions on the invalidation of a patents are published by the NOIP in the Official Gazette of
Industrial Property within 60 days of the date of their issue.100

Where an appeal of such a decision is made to the administrative division of the Provincial
People’s Court, the subject of the appeal is conducted as a rehearing (see section 1.5 of the first
chapter in this volume). The procedure for the conduct of such hearings is broadly that set out in
section 1.6.1 of that chapter.

3.8 Infringement proceedings

3.8.1 Standing

In Viet Nam, the following people have standing to bring civil proceedings alleging
patent infringement:

• the patentee;
• the registered licensee; and
• any organization or individual suffering because of any act of infringement.

Part II, section 1, of Joint Circular No. 02/2008 outlines the persons who have standing to bring
civil proceedings alleging infringement of an industrial property right (including a patent):

2. Right to institute civil lawsuits over industrial property rights belongs to:
a) Individuals and organizations involved in disputes over the right
to register inventions, industrial designs, layout designs, marks or
geographical indications;
[…]
h) Lawful heirs of authors of inventions, industrial designs or layout designs;
or lawful heirs or heirs of industrial property rights of owners of industrial
property objects;
i) Individuals and organizations that are lawfully assigned the ownership of
industrial property objects;
j) Individuals and organizations that are lawfully licensed to use industrial
property objects;
k) Individuals and organizations that are licensed to use industrial property objects
under decisions of competent state agencies:
l) Other rights holders as defined by law.

3.8.2 Establishing infringement

In Viet Nam, a person infringes a patent under article 126 of the Law on IP by:

Article 126 – Acts of infringing upon the rights of inventions, industrial designs
and lay-outs

1. Using protected inventions, protected industrial designs or industrial designs

insignificantly different from protected industrial designs, or protected layout-
designs or any original part thereof within valid terms of protection titles without
permission of owners;
2. Using inventions, industrial designs or layout-designs without paying compensations
Chapter 3: Patent

according to the provisions on provisional rights in Article 131 of this Law.

100 Law on IP, art. 99.

 54 Article 8 of Decree No. 105/2006 (guiding the implementation of some provisions of the Law on
IP) provides that:

Article 8 – Infringing elements of inventions

1. An infringing element of an invention may take one of the following forms:

a. Product or part (component) of a product that is identical or similar to a product
or part (component) of a product being protected as an invention;
b. Process that is identical or similar to a process being protected as
an invention;
c. A product or part (component) of the product produced through a process that is
identical or similar to a process being protected as an invention.

2. The basis for determination of an infringing element of an invention is the scope of

invention protection stated in the invention or utility solution patent.

Article 11(1) of Circular No. 11/2015 clarifies the criteria with which the competent body shall
assess the equivalence and similarity of two technical features:

Article 11 – Acts infringing upon rights to inventions

The identification of acts infringing upon rights to inventions must comply with Articles 5
and 8 of revised Decree No. 105/2006/ND-CP and the following guidance:

1. A product/product part/process in question shall be regarded as identical or

similar to a protected product/product part/process in a certain (independent and
dependent) point of the protection request in an invention patent/utility solution
patent if all basic technical specifications (features) stated in that point can be
found in the product/product part/process in question in the identical or similar
form, in which:
a. Two technical specifications (features) are regarded as identical if they have the
same nature, utility and method of utilization and share the same connection
with other specifications stated in the protection request;
b. Two technical specifications (features) are regarded as similar if they have
similar or interchangeable natures and basically the same utility and method
of utilization.

Inducement and contributory infringement of patent rights are not provided for in the Law on IP.

Article 212 of the Law on IP states that “[a]ny individual who commits an act of infringement
of intellectual property rights involving a criminal element shall be criminally prosecuted
in accordance with the criminal law,” but patent infringement is not subject to
criminal penalty.

Patents owners also have the following rights under article 198 of the Law on IP to protect their
patent rights:

Article 198 – Right to self-protection

1. Intellectual property right holders shall have the right to apply the following
measures to protect their intellectual property rights:
Intellectual Property Adjudication in Viet Nam

a. Applying technological measures to prevent acts of infringing upon intellectual

property rights;
b. Requesting organizations or individuals that commit acts of infringing upon
intellectual property rights to terminate their infringing acts, make public
apologies or rectifications and pay damages;
c. Requesting competent state agencies to handle acts of infringing upon
intellectual property rights according to the provisions of this Law and other
relevant provisions of law;
d. Initiating lawsuits at courts or arbitration centers to protect their legitimate
rights and interests.
 2. Organizations and individuals that suffer from damage caused by acts of infringing
upon intellectual property rights or discover acts of infringing upon intellectual
 55

property rights which cause damage to consumers or society shall have the right to
request competent state agencies to handle such acts according to the provisions of
this Law and other relevant provisions of law.

3.8.3 Defenses to allegations of infringement

The main defence to an allegation of patent infringement is that the elements of infringement are
not established. In addition, there is also a defense of prior use of an invention in Viet Nam.

Article 134 of the Law on IP provides for the prior use defense thus:

Article 134 – Right of prior use of inventions and industrial designs

1. Where a person has, before the publication date of an invention or industrial design
registration application, used or prepared necessary conditions for use of an invention
or industrial design identical with the protected invention or industrial design stated
in such registration application but created independently (hereinafter referred to as
the prior use right holder), then after a protection title is granted, such person shall
be entitled to continue using such invention or industrial design within the scope
and volume of use or use preparations without having to obtain permission of or
paying compensations to the owner of the protected invention or industrial design.
The exercise of the right of prior users of inventions or industrial designs shall not be
regarded as an infringement of the right of invention or industrial design owners.

2. Holders of prior use right to inventions or industrial designs must not assign such
right to others, except where such right is assigned together with the transfer of
business or production establishments which have used or are prepared to use the
inventions or industrial designs. Prior use right holders must not expand the use
scope and volume unless it is so permitted by invention or industrial design owners.

The defendant can also bring a counterclaim against the plaintiff for interference with duties
and for damages resulting from the plaintiff’s actions. This counterclaim can be accepted for
settlement or determination by the court in the patent infringement proceedings.

3.9 Evidence

Evidentiary requirements in patent infringement proceedings are set out in article 203 of the Law
on IP:

Article 203 – Right and burden of proof of involved parties

1. The plaintiff and defendant in a lawsuit against intellectual property right

infringement shall enjoy the right and bear the burden of proof provided for in Article
79 of the Civil Procedure Code and this Article.
2. The plaintiff shall prove that [they are] the intellectual property right holder with one
of the following evidence:
a. … the national register of industrial property.
[…]
3. The plaintiff shall have to produce evidence of acts of infringing upon intellectual
property rights or acts of unfair competition.
4. In a lawsuit against an infringement of the right to an invention which is a production
process, the defendant shall have to prove that [their] products are produced by a
process other than the protected process in the following cases:
a. The product made by the protected process is new;
Chapter 3: Patent

b. The product made by the protected process is not new, but the invention owner
believes that the product of the defendant is made by the protected process
and fails to identify the process used by the defendant in spite of application of
appropriate measures …
 56 3.10 Remedies

What follows are the remedies broadly available in the event of infringement of patent rights
in Viet Nam.

See also Chapter 4 of the first volume in this series, Introduction to the International Legal
Framework for Intellectual Property, for more on remedies more generally.

Article 199 of the Law on IP provides that:

Article 199 – Remedies against acts of infringing upon intellectual property rights

1. Organizations and individuals that commit acts of infringing upon intellectual

property rights of other organizations and individuals shall, depending on the nature
and seriousness of such infringements, be handled with civil, administrative or
criminal remedies.

2. In case of necessity, competent state agencies may apply provisional urgent

measures, measures to control intellectual property-related imports and exports,
or measures to prevent and secure the administrative sanctioning according to the
provisions of this Law and other relevant provisions of law.

There are, however, no criminal penalties for patent infringement (see section 3.10.3).

3.10.1 Civil remedies

In civil proceedings, the owner of a patent may seek any of the following remedies for
patent infringement:

• injunction compelling the termination of infringing acts;

• public apology and rectification;
• specific performance (i.e., compelling the performance of civil obligations);
• damages; and/or
• destruction, distribution or use for noncommercial purposes of goods, raw materials, materials
and means used largely for the production or trading of infringing goods, provided that such
destruction, distribution or use does not affect the exploitation of rights by their owners or
other authorized holders.101

3.10.2 Provisional urgent measures

Upon or after the initiation of civil proceedings, the patent owner may request that the court
apply provisional urgent measures in the following circumstances:

• there exists a danger of irreparable damage to the owner’s interests or the interests of other
authorized rights holders; and/or
• goods suspected of infringing upon intellectual property rights or evidence related to the act
of infringing upon industrial property rights are likely to be dispersed or destroyed unless they
are protected in time.102

The court will decide to apply provisional urgent measures at the request of the patent owner
before hearing from the alleged patent infringer.103
Intellectual Property Adjudication in Viet Nam

The following provisional urgent measures may be applied to allegedly infringing goods or to raw
materials, materials or means of production or trading of such goods:

• seizure;
• distraint;

101 Law on IP, art. 202.

102 Law on IP, art. 206(1).
103 Law on IP, art. 206(2).
•
•
sealing;
ban from alteration of original state;
 57

• ban from movement;

• ban from ownership transfer; and
• such other provisional urgent measures as may be applied according to the provisions of the
Civil Procedure Code.104

For further information about civil remedies, see section 1.8.1 of the first chapter in this volume.

See also:

• Resolution No. 02/2020;

• article 204 of the Law on IP (“Principles for the determination of damage caused by
infringement of intellectual property rights”); and
• article 205 of the Law on IP (“Bases for determination of damage caused by infringement of
intellectual property rights”).

3.10.3 Criminal remedies

There are no criminal penalties for patent infringement in Viet Nam.

Organizations and individuals that are found to have committed acts of infringement of other’s
patents are liable to civil and/or administrative remedies only, depending on the nature and
extent of such infringement.

3.10.4 Administrative sanctions

For further information about the sanctioning of administrative violations of patent rights,
see article 10 (“Infringement of rights to inventions, utility solutions and layout designs”) of
Decree No. 99/2013.

For further information about administrative sanctions for intellectual property infringement
more broadly, see section 1.6.2 of the first chapter in this volume.

Chapter 3: Patent

104 Law on IP, art. 207.

 Chapter 4
Copyright

4.1 Introduction

This chapter addresses the conduct of civil proceedings relating to copyright and related rights
in the District People’s Courts and Provincial People’s Courts, including the Economic Courts
within the Provincial People’s Courts. It also addresses the conduct of criminal proceedings for
infringement of copyright, which are conducted in the same courts.

Procedural aspects of the conduct of such proceedings were considered in Chapter 1 of this
volume, and this chapter will cross-reference that first chapter, where appropriate. A more
general summary of the law of copyright is provided in Chapter 3 of the first volume in the series,
Introduction to the International Legal Framework for Intellectual Property, which refers to the
treaties that apply, but are not specific, to Viet Nam.

This chapter focuses primarily on literary and artistic works, but there are other types of work
eligible for copyright under the Law on IP, including dramatic works, cinematographic works,
computer programs, folklore and scientific works.

4.2 What is copyright in Viet Nam?

The Law on IP defines copyright as the “rights of organizations and individuals to works they
have created or own.”105

The Law on IP defines a work as “a creation of the mind in the literary, artistic or scientific
domain, whatever may be the mode or form of its expression.”106

The Law on IP also defines copyright-related rights as “rights of organizations and individuals
to performances, phonograms, video recordings, broadcasts and encrypted program-carrying
satellite signals.”107

4.3 Sources of law

The following statutory materials are relevant to the application of copyright law in Viet Nam:

Civil Code No. 91/2015/QH13 of November 24, 2015 (“Civil Code”)

Code of Civil Procedure No. 92/2015/QH13 of November 25, 2015 (“Civil Procedure Code”)

Criminal Code No. 100/2015/QH13, of November 26, 2015 (“Criminal Code”)

Criminal Code No. 12/2017/QH14, of June 20, 2017, on amendments to the Criminal Code No.
100/2015/QH13 (“Revised Criminal Code”)

105 Law on IP, art. 4(2).

106 Law on IP, art. 4(7).
58 107 Law on IP, art. 4(3).
 Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property, amended and
supplemented in 2009, 2019 and 2022 (“Law on IP”)
 59

Law No. 15/2012/QH13 of June 20, 2012, on handling administrative violations (“Law on
Administrative Violations”)

Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and

effective as of November 2006, providing guidelines for the implementation of certain
articles of the Law on IP regarding enforcement of intellectual property rights and
state management of intellectual property, amended and supplemented in 2010
(“Decree No. 105/2006”)

Decree No. 119/2010/ND-CP of the Government, dated December 30, 2010, amending and
supplementing a number of articles of Decree No. 105/2006/ND-CP

Decree No. 131/2013/ND-CP of the Government, dated October 16, 2013, providing for
penalties for administrative violations of copyright and related rights (“Decree No. 131/2013”)

Decree No. 28/2017/ND-CP dated March 20, 2017, of the Government amending
and supplementing a number of articles of Decree 131/2013/ND-CP and Decree
No. 158/2013/ND-CP dated November 12, 2013, on sanctioning of administrative violations
in the field of culture, sports, tourism and advertising

Decree No. 22/2018/ND-CP of the Government, enacted in February 2018 and effective as
of April 2018, guiding the implementation of articles of the Law concerning copyrights and
related rights (“Decree No. 22/2018”)

Decree No. 119/2020/ND-CP of the Government, dated October 7, 2020, on penalties for
administrative violations in journalistic and publishing activities

Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of the Supreme

People’s Court, the Supreme People’s Procuracy, the Ministry of Culture, Sports and Tourism
and the Ministry of Justice dated April 3, 2008, guiding the application of a number of legal
provisions to the settlement of disputes over intellectual property rights at people’s courts
(“Joint Circular No. 02/2008”)

Joint Circular No. 07/2012/TTLT-BTTTT-BVHTTDL of the Ministry of Information and

Communications and the Ministry of Culture, Sports and Tourism dated June 19, 2012,
stipulating duty of enterprises providing intermediary service in protection of copyright and
related rights in the internet and telecommunication networks environment

4.4 Obtaining copyright protection

Copyright arises automatically upon the creation of a work in material form.

Article 6 of the Law on IP provides that:

Article 6 – Bases for the emergence and establishment of intellectual property rights

1. Copyright shall arise at the moment when a work is created and fixed in a
certain material form, irrespective of its content, quality, presentation,
means of fixation, language and whether or not it has been published
or registered.

2. Related rights shall arise at the moment when a performance, phonogram, video
Chapter 4: Copyright

recording, broadcast or encrypted program-carrying satellite signal is fixed or

displayed without any prejudice to copyright.
 60 4.4.1 Registration

Copyright may be registered with the Copyright Office of Viet Nam, which operates under
the auspices of the Ministry of Culture, Sports and Tourism, but registration of copyright is
not compulsory.108 The benefits of registering copyright include a prima facie presumption of
copyright ownership and subsistence.109

Article 49 of the Law on IP provides:

Article 49 – Registration of copyright or related rights

1. The registration of copyright and related rights means the filing of applications and
enclosed dossiers (hereinafter referred to collectively as applications) by authors,
copyright holders or related right holders with the competent state agencies
for recording of information on authors, works, copyright holders and related
right holders.

2. The filing of applications for grant of certificates of registered copyright

or certificates of registered related rights is not a compulsory formality
for enjoyment of copyright or related rights according to the provisions of
this Law.

3. Organizations and individuals that are granted certificates of registered copyright

or certificates of registered related rights shall not have to bear the burden of
proof of such copyright and related rights upon disputes, unless rebutting proofs
are adduced.

A copyright registration certificate may be invalidated by an effective judgment or decision of a

court or competent authority.110

4.5 Requirements for valid copyright

Article 14 of the Law on IP sets out the types of work that are covered by copyright:

Article 14 – Types of works covered by copyright

1. Literary, artistic and scientific works covered by copyright include:

a. Literary and scientific works, textbooks, teaching courses and other works
expressed in written languages or other characters;
b. Lectures, addresses and other sermons;
c. Press works;
d. Musical works;
e. Dramatic works;
f. Cinematographic works and works created by a process analogous to
cinematography (hereinafter referred to collectively as cinematographic works);
g. Plastic-art works and works of applied art;
h. Photographic works;
i. Architectural works;
j. Sketches, plans, maps and drawings related to topography or scientific works;
k. Folklore and folk art works of folk culture;
Intellectual Property Adjudication in Viet Nam

l. Computer programs and compilations of data.

2. Derivative works shall be protected according to the provisions of Clause 1 of this

Article only if it is not prejudicial to the copyright to works used to create such
derivative works.

108 Law on IP, art. 49(1) and (2).

109 Law on IP, art. 49(3).
110 Decree No. 22/2018, art. 39.
 3. Protected works defined in Clauses 1 and 2 of this Article must be created
personally by authors through their intellectual labor without copying
 61

others’ works.

4. The Government shall guide in detail the types of works specified in Clause 1 of
this Article.

Article 15 of the Law on IP sets out those subject matters that are not covered by
copyright protection:

Article 15 – Subject matters not covered by copyright protection

1. News of the day as mere items of press information.

2. Legal documents, administrative documents and other documents in the judicial

domain and official translations of these documents.

3. Processes, systems, operation methods, concepts, principles and data.

4.6 Rights conferred by copyright

In Viet Nam, authors and/or owners of works acquire both economic and moral rights as a
consequence of copyright.

4.6.1 Economic rights

Article 20 of the Law on IP sets out the economic rights – that is, the right to commercialize their
works – available to authors and/or owners of works in Viet Nam:

Article 20 – Economic rights

1. Economic rights of authors include the following rights:

a. To make derivative works;
b. To display their works to the public;
c. To reproduce their works;
d. To distribute or import original works or copies thereof;
e. To communicate their works to the public by wire or wireless means, electronic
information networks or any other technical means;
f. To lease original cinematographic works and computer programs or
copies thereof.

2. The rights specified in Clause 1 of this Article shall be exclusively exercised by authors
or copyright holders, or granted by authors or copyright holders to other persons for
exercise under the provisions of this Law.

3. Organizations and individuals, when exercising one, several or all of the rights
specified in Clause 1, this Article and Clause 3, Article 19 of this Law, shall have to ask
for permission of and pay royalties, remunerations and other material benefits to
copyright holders.

4.6.2 Moral rights

Article 19 of the Law on IP sets out the moral rights available to authors and/or owners of works
in Viet Nam:
Chapter 4: Copyright

Article 19 – Moral rights

Moral rights of authors include the following rights:

• To title their works;

 62 • To attach their real names or pseudonyms to their works; to have their real names or
pseudonyms acknowledged when their works are published or used;
• To publish their works or authorize other persons to publish their works;
• To protect the integrity of their works, and to prevent other persons from modifying,
mutilating or distorting their works in whatever form prejudicial to their honor
and reputation.

Article 20(3) of Decree No. 22/2018 further provides that:

Article 20 – Moral rights

[…]
3. The right to protect the integrity of works and to prevent other persons
from modifying or mutilating works provided for in Clause 4, Article 19
of the Intellectual Property Law means the right of the author of a work to
prevent other persons from modifying or mutilating [their] work without
[their] consent.

4.6.3 Duration of rights

The term of copyright protection in Viet Nam is:

• 75 years from the date of first publication of a cinematographic work, photographic work,
dramatic work, work of applied art and anonymous work; or
• 100 years from the date of fixation if the work remains unpublished within 25 years of the date
of fixation.111

The term of copyright protection for all other works is 50 years after the death of the author (or
last surviving coauthor).112

The term expires at midnight on December 31 of the year in which the copyright protection
period ends.113

The term of moral rights is indefinite.114

4.6.4 Ownership of copyright

The legal owner of a work may be:

• its author or coauthors;

• organizations and individuals who assign tasks to authors or who enter into contracts
with authors;
• the author’s or coauthor’s heir;
• the assignee of rights over the works; or
• the State, in certain cases.115

An author is the individual who personally creates the literary, artistic or scientific work.116

Two or more authors who jointly create a copyright work are considered coauthors, and they
share moral and economic rights under articles 19 and 20 of the Law on IP.117
Intellectual Property Adjudication in Viet Nam

Different rules apply where a copyright work is created under a contract with an author. Article 39
of the Law on IP provides:

111 Law on IP, art. 27.

112 Law on IP, art. 27.
113 Law on IP, art. 27(2)(c).
114 Law on IP, art. 27(1).
115 Law on IP, arts. 36–42.
116 Decree No. 22/2018, art. 6.
117 Law on IP, art. 38.
 Article 39 – Copyright holders being organizations and individuals that have assigned
tasks to authors or entered into contracts with authors
 63

1. Organizations which have assigned tasks of creating works to authors who belong to
them shall be holders of the rights specified in Article 20 and Clause 3, Article 19 of
this Law, unless otherwise agreed.

2. Organizations and individuals that have entered into contracts with authors for
creation of works shall be holders of the rights specified in Article 20 and Clause 3,
Article 19 of this Law, unless otherwise agreed.

4.6.5 Assignment and licensing of copyright

Copyright can be assigned or licensed to a third party.118

Authors must not assign or license their moral rights, except for the right of publication, and
performers must not assign or license the moral rights specified in article 19(2) of the Law on IP.119

The assignment of copyright and any related right must be in writing to be legally effective.120 The
same is true of the licensing of copyright and any related right.121

4.7 Revocation or invalidation

Since subsistence of copyright does not depend on formalities such as registration (see
section 3.4.1), it is not subject to revocation or invalidation procedures.

4.8 Infringement proceedings

4.8.1 Civil proceedings

4.8.1.1 Standing
The author of the work has standing to bring civil proceedings alleging copyright infringement.

In addition, Part II, section 1, of the Joint Circular No. 02/2008 provides as follows:

1. Right to institute civil lawsuits over copyright or related rights:

a. Individuals and organizations defined in Article 14 of the Government’s Decree
No. 100 may institute civil lawsuits over copyright or related rights at competent
people’s courts for protection of their rights and lawful interests.
b. Concerned state agencies and organizations may, within the scope
of their tasks and powers, institute civil lawsuits to protect public
interests and the State’s interests in the domain of copyright and related
rights according to Clause 3, Article 162 of the Civil Procedure Code.

4.8.1.2 Acts of civil infringement

Article 28 of the Law on IP lists the acts of infringement that a party with standing may allege:

Article 28 – Acts of infringing upon copyright

1. Appropriating copyright to literary, artistic or scientific works.

2. Impersonating authors.

3. Publishing or distributing works without permission of authors.

4. Publishing or distributing works under joint-authorship without permission of coauthors.

Chapter 4: Copyright

118 Law on IP, arts. 45–48.

119 Law on IP, arts. 45(2) and 47(2).
120 Law on IP, art. 45.
121 Law on IP, art. 45.
 64 5. Modifying, mutilating or distorting works in such a way as prejudicial to the honor
and reputation of authors.

6. Reproducing works without permission of authors or copyright holders, except for

the cases specified at Points a and e, Clause 1, Article 25 of this Law.

7. Making derivative works without permission of authors or holders of copyright to

works used for the making of derivative works, except for the cases specified at Point
i, Clause 1, Article 25 of this Law.

8. Using works without permission of copyright holders, without paying royalties,

remunerations or other material benefits according to the provisions of law, except
for the cases specified in Clause 1, Article 25 of this Law.

9. Leasing works without paying royalties, remunerations or other material benefits to

authors or copyright holders.

10. Duplicating, reproducing, distributing, displaying or communicating works to the

public via communication networks and by digital means without permission of
copyright holders.

11. Publishing works without permission of copyright holders.

12. Willingly cancelling or deactivating technical solutions applied by copyright holders to

protect copyright to their works.

13. Willingly deleting or modifying right management information in electronic form

in works.

14. Manufacturing, assembling, transforming, distributing, importing, exporting, selling

or leasing equipment when knowing or having grounds to know that such equipment
may deactivate technical solutions applied by copyright holders to protect copyright
to their works.

15. Making and selling works with forged signatures of authors of original works.

16. Exporting, importing or distributing copies of works without permission of

copyright holders.

Decree No. 105/2006 sets out further guidance and information on how to determine
infringement of copyright, its articles 5–7 providing as follows:

Article 5 – Determination of acts of infringement

An examined act shall be regarded as an act of infringement of intellectual property rights

specified in Articles 28, 35, 126, 127, 129 and 188 of the Law on Intellectual Property when
all the following bases exist:

1. The examined subject matter is a protected one.

2. The examined subject matter contains an infringing element.

3. The person that takes the examined act is neither the intellectual property right
holder nor any person permitted by law or a competent agency under Articles 25, 26,
32, 33, Clauses 2 and 3 of Article 125, Article 133, Article 134, Clause 2 of Article 137,
Articles 145, 190 and 195 of the Law on Intellectual Property.
Intellectual Property Adjudication in Viet Nam

4. The examined act takes place in Vietnam.

An examined act that takes place in the internet but is targeted at consumers or
information users in Vietnam shall be regarded to take place in Vietnam.

Article 6 – Bases for determination of protected subject matter

1. The determination of a protected subject matter shall be based on the examination of

documents and evidence proving the bases for emergence and establishment of the
rights specified in Article 6 of the Law on Intellectual Property.
2. For intellectual property rights that have been registered with competent agencies,
the protected subject matters shall be determined on the basis of the registration
 65

certificates, protection titles and other documents accompanying such certificates

and protection titles.

3. For copyright and rights of performers, rights of producers of phonograms or

video recordings, rights of broadcasting organizations that are not registered
with competent agencies, these rights shall be determined on the basis of the
original exemplar of the work, the first fixation of the performance, phonogram,
video recording, broadcast and relevant documents, if any.
When the original exemplar of the work, the first fixation of the performance,
phonogram, video recording, broadcast and relevant documents no longer
exist, copyright or rights of performers, of producers of phonograms or video
recordings or of broadcasting organizations shall be deemed to be true on the
basis of information that is usually shown on lawfully published copies on authors,
performers, producers of phonograms or video recordings or broadcasting
organizations and on the subject matters of copyright or related rights.
[…]

Article 7 – Infringing elements of copyright and related rights

1. An infringing element of copyright may take one of the following forms:

a. Illegally made copy of a work;
b. Illegally made derivative work;
c. Work with the forged name and signature of the author, impersonation of the
author or appropriation of copyright;
d. Illegally recited, duplicated or incorporated part of a work;
e. Product with an illegally deactivated technical device used for
copyright protection.

Products containing an infringing element defined in this Clause shall be regarded as

copyright infringing products.

2. An infringing element of related rights may take one of the following forms:
a. Illegally made first fixation of a performance;
b. Illegally made copy of the fixation of a performance, illegally made copy of a
phonogram, video recording or broadcast;
c. Illegally duplicated, extracted or incorporated part or whole of a fixed
performance, a phonogram or video recording; illegally received, decoded and
distributed part or whole of a broadcast;
d. Product with an illegally deactivated technical device used for related rights
protection; the fixation of a performance from which related rights management
information has been illegally disengaged or modified.

Products containing an infringing element defined in this Clause shall be regarded as

related rights infringing products.

3. The basis for determination of an infringing element of copyright shall be the scope of
copyright protection determined according to the forms of expression of the original
work. For determination of infringing elements of derivative works, the basis shall be
the characters, images; ways of expression of characters’ personalities, images and
circumstances of the original work.

4. The basis for determining an infringing element of related rights shall be the scope of
related rights protection already determined according to the forms of expression of
Chapter 4: Copyright

the first fixation of the performance, phonogram, video recording or broadcast.

5. In order to determine whether a copy or a work (or the fixation of a performance,

phonogram, video recording or broadcast) constitutes an infringing element of
copyright or related rights, it is required to compare the copy or work with the
 66 original exemplar of the work (the first fixation of a performance, phonogram, video
recording or broadcast) or the original work.
A copy of a work or the fixation of a performance, phonogram, video recording or
broadcast shall be regarded as an infringing element in the following cases:
a. The copy is a duplicate of part or the whole of a protected work, the first fixation of a
protected performance, phonogram, video recording or broadcast of another person;
b. The work (part of the work) is part or the whole of a protected work, the first
fixation of a protected performance, phonogram, video recording or broadcast of
another person;
c. The work or part of the work contains a character, image, way of expression of
the personality of a character or image or circumstances of a protected work of
another person.

6. Products containing an infringing element defined at Points a and d, Clause 1,

Points b and c, Clause 2 of this Article shall be regarded as pirated goods under the
provisions of Article 213 of the Law on Intellectual Property.

4.8.2 Criminal proceedings

Article 212 of the Law on IP states that “[a]ny individual who commits an act of infringement
of intellectual property rights involving a criminal element shall be criminally prosecuted in
accordance with the criminal law.”

Article 8 of the Criminal Code defines a “crime” as follows:

Article 8 – Definition of crime

1. A crime means an act that is dangerous for society and defined in Criminal Code, is
committed by a person who has criminal capacity of corporate legal entity, whether
deliberately or involuntarily, infringes the sovereignty and territorial integrity of the
nation, infringes the political regime, economic regime, culture, national defense
and security, social order and safety, the lawful rights and interests of organizations,
human rights, the lawful rights and interests of citizens, other aspects of socialist law,
and leads to criminal prosecution as prescribed by this Code.

2. An act showing signs of a crime but not remarkably dangerous for society is not a
crime and shall be dealt with otherwise.

For an act of infringement to involve a criminal element or sign, it would typically be deliberate
and dangerous to society, and not merely commercially damaging to the rights owner.

4.9 Evidence

Evidentiary requirements in copyright infringement proceedings are set out in article 203 of the
Law on IP:

Article 203 – Right and burden of proof of involved parties

1. The plaintiff and defendant in a lawsuit against intellectual property right

infringement shall enjoy the right and bear the burden of proof provided for in Article
Intellectual Property Adjudication in Viet Nam

79 of the Civil Procedure Code and this Article.

2. The plaintiff shall prove that [they are] the intellectual property right holder with one
of the following evidence:
(a) Copies of the copyright registration certificate, related right registration
certificate or protection title; or an extract of the national register of copyright
and related rights … ;
(b) Necessary evidence proving the basis for establishment of copyright or related
rights in case of absence of a copyright registration certificate, related right
registration certificate; necessary evidence proving rights to business secrets,
trade names or well-known marks;
 (c) Copies of license contracts for intellectual property objects where the use right is
licensed under contracts.
 67

3. The plaintiff shall have to produce evidence of acts of infringing upon intellectual
property rights or acts of unfair competition …

4.9.1 Presumptions

Copyright registration is prima facie evidence of copyright ownership and subsistence, under
article 49(3) of the Law on IP:

Article 49.3 – Registration of copyright or related rights

[…]
3. Organizations and individuals that are granted certificates of registered copyright
or certificates of registered related rights shall not have to bear the burden of
proof of such copyright and related rights upon disputes, unless rebutting proofs
are adduced.

4.9.2 Defenses to allegations of infringement

Article 25 of the Law on IP outlines a number of circumstances in which “published works may be
used without having to seek permission or pay royalties or remuneration”:

Article 25 – Cases of use of published works where permission and payment of

royalties and/or remunerations are not required

1. Cases of use of published works where permission or payment of royalties and/or

remunerations is not required include:
a. Duplication of works by authors for scientific research or teaching purpose;
b. Reasonable recitation of works without misrepresenting the authors’ views for
commentary or illustrative purpose;
c. Recitation of works without misrepresenting the authors’ views in articles
published in newspapers or periodicals, in radio or television broadcasts,
or documentaries;
d. Recitation of works in schools for lecturing purpose without misrepresenting the
authors’ views and not for commercial purpose;
e. Reprographic reproduction of works by libraries for archival and
research purpose;
f. Performance of dramatic works or other performing-art works in mass cultural,
communication or mobilization activities without collecting any charges in
any form;
g. Audiovisual recording of performances for purpose of reporting current events
or for teaching purpose;
h. Photographing or televising of plastic art, architectural, photographic, applied-
art works displayed at public places for purpose of presenting images of
such works;
i. Transcription of works into Braille or characters of other languages for the blind;
j. Importation of copies of others’ works for personal use.

2. Organizations and individuals that use works defined in Clause 1 of this Article must
neither affect the normal utilization of such works nor cause prejudice to rights of the
authors and/or copyright holders; and must indicate the authors’ names, and sources
and origins of the works.

3. The use of works in the cases specified in Clause 1 of this Article shall not apply to
Chapter 4: Copyright

architectural works, plastic works and computer programs.

Article 26 of the Law on IP outlines the circumstances in which published works may be used
without consent, but royalties and remunerations must be paid to the copyright holders.
 68 In Viet Nam, it is possible to use certain types of work without the owner’s authorization,
provided that the user pays legal royalties to the copyright holder:

Article 26 – Cases of use of published works where permission is not required but the
payment of royalties and/or remunerations is required

1. Broadcasting organizations which use published works in making their broadcasts,

which are sponsored, advertised or charged in whatever form, shall not have to
obtain permission but have to pay royalties or remunerations to copyright holders
according to the Government’s regulations.

2. Organizations and individuals that use works defined in Clause 1 of this Article must
neither affect the normal utilization of such works nor cause any prejudice to the
rights of the authors and/or copyright holders; and must indicate the authors’ names,
and sources and origins of the works.

3. The use of works in the cases specified in Clause 1 of this Article shall not apply to
cinematographic works.

4.10 Remedies
What follows are the remedies broadly available in the event of infringement of copyright and
related rights in Viet Nam.

See also Chapter 4 of the first volume in this series, Introduction to the International Legal
Framework for Intellectual Property, for more on remedies more generally.

Article 199 of the Law on IP provides that:

Article 199 – Remedies against acts of infringing upon intellectual property rights

1. Organizations and individuals that commit acts of infringing upon intellectual

property rights of other organizations and individuals shall, depending on the nature
and seriousness of such infringements, be handled with civil, administrative or
criminal remedies.

2. In case of necessity, competent state agencies may apply provisional urgent

measures, measures to control intellectual property-related imports and exports,
or measures to prevent and secure the administrative sanctioning according to
the provisions of this Law and other relevant provisions of law.

4.10.1 Civil remedies

In civil proceedings, a copyright owner may seek any of the following remedies for
copyright infringement:

• injunctions compelling the termination of infringing acts;

• public apology and rectification;
• specific performance (i.e., compelling the performance of civil obligations);
• damages; and/or
Intellectual Property Adjudication in Viet Nam

• destruction, distribution or use for noncommercial purposes of goods, raw materials, materials
and means used largely for the production or trading of infringing goods, provided that such
destruction, distribution or use does not affect the exploitation of rights by their owners or
other authorized holders.122

122 Law on IP, art. 202.

4.10.2 Provisional urgent measures  69

Upon or after the initiation of civil proceedings, the patent owner may request that the court
apply provisional urgent measures if:

• there exists a danger of irreparable damage to the owner’s interests or the interests of other
authorized rights holders; and/or
• goods suspected of infringing upon intellectual property rights or evidence related to the act
of infringing upon industrial property rights are likely to be dispersed or destroyed unless they
are protected in time.123

The court will decide to apply provisional urgent measures at the request of the patent owner
before hearing from the alleged patent infringer.124

The following provisional urgent measures may be applied to allegedly infringing goods or to raw
materials, materials or means of production or trading of such goods:

• seizure;
• distraint;
• sealing;
• ban from alteration of original state;
• ban from movement;
• ban from ownership transfer; and
• such other provisional urgent measures as may be applied according to the provisions of the
Civil Procedure Code.125

For further information about civil remedies, see section 1.8.1 of the first chapter in this volume.

4.10.3 Criminal remedies

In Viet Nam, the People’s Procuracy or the court has the authority to impose the most severe
penalties for intellectual property infringement.

Criminal charges can be brought for copyright infringement and intellectual

property counterfeiting.

Criminal prosecution can be brought by government authorities, with penalties including fines
and jail terms.

Criminal enforcement authorities usually prioritize cases involving counterfeits that pose
serious harm to consumers and public health (e.g., fake pharmaceutical products, gasoline and
consumer goods).

The penalties for criminal copyright infringement are set out in article 225 of the Revised
Criminal Code:

Article 225 – Infringement of copyrights and relevant rights

1. A person who, without the consent of the holders of copyrights and relevant
rights, deliberately commits any of the following acts which infringe upon
copyrights and relevant rights protected in Vietnam for commercial purpose or
to earn an illegal profit of from VND 50,000,000 to under VND 300,000,000 or
causes a loss of from VND 100,000,000 to under VND 500,000,000 for the holders
of such copyrights and relevant rights, or with the violating goods assessed
at from VND 100,000,000 to under VND 500,000,000 shall be liable to a fine of
from VND 50,000,000 to VND 300,000,000 or face a penalty of up to 03 years’
community sentence:
Chapter 4: Copyright

a. Making copies of works, video recordings or audio recordings;

123 Law on IP, art. 206(1).

124 Law on IP, art. 206(2).
125 Law on IP, art. 207.
 70 b. Making the copies of works, video recordings, audio recordings publicly available.

2. This offence committed in any of the following circumstances carries a fine of from
VND 300,000,000 to VND 1,000,000,000 or a penalty of 06–03 years’ imprisonment:
a. The offence is committed by an organized group;
b. The offence has been committed more than once;
c. The illegal profit reaped is ≥ VND 300,000,000;
d. The loss incurred by the holders of copyrights and relevant rights is
≥ VND 500,000,000;
dd. The illegal goods are assessed at ≥ VND 500,000,000.

3. The offender might also be liable to a fine of from VND 20,000,000 to VND
200,000,000, prohibited from holding certain positions or doing certain works for
01–05 years.

4. Punishments incurred by a corporate legal entity that commits any of the offences
specified in this Article:
a. Any corporate legal entity that commits an offence specified in Clause 1 of
this Article for commercial purpose or to earn an illegal profit of from VND
200,000,000 to under VND 300,000,000 or causes a loss of from VND 300,000,000
to under VND 500,000,000 for the holders of such copyrights and relevant
rights, or with the violating goods assessed at from VND 300,000,000 to under
VND 500,000,000; earns an illegal profit of from VND 100,000,000 to under VND
200,000,000 or causes a loss of from VND 100,000,000 to under VND 300,000,000
for the holders of such copyrights and relevant rights, or with the violating goods
assessed at from VND 100,000,000 to under VND 300,000,000 while having
incurred an administrative penalty for any of the offences specified in this Article
or having an unspent conviction for the same offence shall be liable to a fine of
from VND 300,000,000 to VND 1,000,000,000;
b. A corporate legal entity that commits this offence in any of the circumstances
specified in Clause 2 of this Article shall be liable to a fine of from VND
1,000,000,000 to VND 3,000,000,000 or has its operation suspended for
06–24 months;
c. The violating corporate legal entity might also be liable to a fine of from VND
100,000,000 to VND 300,000,000, be banned from operating in certain fields or
raising capital for 01–03 years.

The Criminal Code identifies other related crimes in addition to those it sets out in its article 225,
including of:

• manufacturing and trading of counterfeit goods;126

• manufacturing and trading of counterfeit food or food additives;127
• manufacturing and trading of counterfeit medicines for treatment or prevention of diseases;128
• manufacturing and trading of counterfeit animal feeds, fertilizers, veterinary medicines,
pesticides, plant varieties, animal breeds;129 and
• deceiving customers.130

For further information about criminal remedies, see section 1.8.2 of the first chapter in
this volume.

4.10.4 Administrative sanctions

Intellectual Property Adjudication in Viet Nam

Article 200(3) of the Law on IP provides: “The application of administrative remedies shall fall
under the competence of inspectorates, police offices, market management offices, custom

126 Criminal Code, art. 192.

127 Criminal Code, art. 193.
128 Criminal Code, art. 194.
129 Criminal Code, arts. 195 and 196.
130 Criminal Code, art. 198.
offices and People’s Committee of all levels. In case of necessity, these agencies may apply
measures to prevent and secure the administrative sanctioning provided for by law.”
 71

For further information about the sanctioning of administrative violations of copyright and
related rights, see Decree No. 131/2013.

For further information about administrative sanctions for intellectual property infringement
more broadly, see section 1.6.2 of the first chapter in this volume.

Chapter 4: Copyright
The Intellectual Property Benchbook Series is a set of
practical manuals on IP law and procedure to assist judges
in adjudicating IP cases appearing before them in their own
courts, as well as for readers interested in learning about
judicial adjudication of IP disputes across jurisdictions.
This title in the Benchbook series provides a guide to
the judicial management of IP disputes at each stage
of adjudication in Viet Nam, with a particular focus on
procedural aspects. The volume was drafted by experienced
judges with the perspective of sharing good practices with
their judicial peers.

World Intellectual Property Organization

34, chemin des Colombettes
P.O. Box 18
CH-1211 Geneva 20
Switzerland

Tel: + 41 22 338 91 11
Fax: + 41 22 733 54 28

For contact details of WIPO’s

WIPO Publication No. 1081.3EN
External Offices visit: ISBN: 978-92-805-3498-6 (print)
www.wipo.int/about-wipo/en/offices ISBN: 978-92-805-3499-3 (online)