Enforcement of intellectual property rights under TRIPS agreement and compare with vietnamese law

LUND UNIVERSITY FACULTY OF LAW HANOI LAW UNIVERSITY ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS UNDER TRIPS AGREEMENT AND COMPARE WITH VIETNAMESE LAW Specialty: International and comparative law Code: 60 38 60 MASTER OF LAW THESIS STUDENT: v u THI HONG YEN THƯ VIỆN TRƯỜNG ĐA! H O C LỪẬTHA NÔI PHỎN6 GV _ _ Supervisors: Dr Bui Xuan Nhu Dr Prof Hans Henrik Lidgard HANOI - 2004 Contents SUMMARY ACKNOW LEDGEM ENTS A B B R E V IA T IO N S IN T R O D U C T IO N 1.1 Rational 1.2 Purpose 1.3 Method 1.4 Limitation 1.5 Previous research 1.6 Content O V E R V IE W O F IP R S A N D E N F O R C E M E N T O F IP R S U N D E R 10 T R IP S 2.1 Brief history of TRIPS 10 2.2 The definition of IPRs under TRIPS 13 2.3 The principles of enforcement of IPRs 15 2.3.1 Nation Treatment 2.3.2 M ost-Favored-Nation Treatment 16 16 2.4 The concept of enforcemnt of IPRS under TRIPS 2.5 Significance of effective enforcement of IPRs 17 2.5.1 Prom oting innovation and business competitiveness 17 2.5.2 Preventing tax losses and m arket destabilisation 18 2.5.3 Ensuring consum er protection 18 2.5.4 Ensuring the maintenance o f public order 19 E N F O R C E M E N T O F IP R S U N D E R T R IP S A N D A C C O R D IN G 21 T O V IE T N A M E S E L A W 3.1 General obligations of enforcem ent of IPRs 21 3.2 Civil procedures and remedies 23 3.2.1 Requirements o f civil procedures 23 3.2.2 Provisional measures 25 3.2.3 Civil remedies 31 3.2.3.1 Injunction to cease infringing activities 3.2.3.2 Compensatory remedies 31 32 3.2.3.3 Other remedies 35 3.3 Criminal procedures and remedies 3.3.1 Requirements o f criminal procedures 36 3.3.2 Criminal remedies 39 3.3.2.1 Imprisonment and/or monetary fines 39 3.3.2.2 Other remedies 39 3.4 Administrative procedures and remedies 40 3.4.1 Requirements o f adm inistrative procedures 40 3.4.2 Adm inistrative remedies 42 3.4.2.1 An admonitory 42 3.4.2.2 Fines 42 3.4.2.3 Other remedies 43 3.5 Special requirement related to border measures 3.5.1 Requirements o f procedures at b order 3.5.2 B order measures 36 43 43 46 3.5.2.1 Suspension of goods enter in to channels of commerce 46 3.5.2.2 Other remedies 47 REAL SITUATION AND SUGGESTED SOLUTIONS TO IMPROVE ENFORCEMENT OF IPRS IN VIETNAM 49 4.1 Real situation of enforcem ent of IPRs in Vietnam 49 4.1.1 The present situation o f infringem ent o f IPRs Vietnam 49 4.1.2 Difficulties in IPRs enforcem ent in Vietnam 52 4.2 Suggested solutions to improve the Vietnamese lawof enforcement of IPRs 54 CONCLUSION 56 BIBLIOGRAPHY 57 Summary This discussion paper reviews the investigation of natures and characteristics of regulations on enforcement of intellectual property rights in T R IP S Likewise, thesis’s purpose is examining and assessment of Vietnam's regulations on IPRs enforcement in complain with standards of T R IP S Now that Vietnam’s intellectual property law are much more in tune with the G A T T Agreement on Trade-related Aspects of Intellectual property rights 1994 (T R IP S Agreement), the main international standard However, the lack of enforcement remains a serious issue Evidence suggests that, while positive measures have been taken to deter piracy and counterfeit, rampant violations of intellectual property rights still occur Section briefly examines the background of T R IP S Agreement, the nature o f IPRs, concept of enforcement of IPRs, the principles of enforcement of IPRs and significance of effective enforcement of IPRs in the context integrating of international economy Section concentrates the analyse part III of T R IP S about enforcement of IPRs Enforcement of IPRs includes formality procedures and remedies in the fields civil, administrative, criminal and remedies at border In addition, the paper compares provisions on enforcement of IPRs of Vietnam with requirements of T R IPS Real situation and suggested solution of enforcement of IPRs in Vietnam are addressed in Section before brief conclusions and recommendations in Section The bibliography lists the key source materials used, together with details of how lo obtain them Acknowledgements My thanks are first due to Dr, Professor H am Henrik Lidgard - Lurid University, to Dr Bui Xuan Nhu - Ha noi Law University fo r actively encouraging and advising me to write this thesis I am grateful to all those who spared time from their busy schedules to read one or more o f the draft chapters and valuable suggestions fo r the outcome o f this thesis Many others made time fo r discussions with me and/or gave me useful materials Abbreviations EC:European Communities EU : Europeans Union G A T T: General Agreement on Tariffs and Trade IPRs: Intellectual Property Rights T R IP S : Trade-Related Aspects of Intellectual Property Rights US: United States of America W1PO: World Intellectual Property Organization W TO : World Trade Organization ICC: International Chamber of Commerce Introduction 1.1 Rational In order for Intellectual property rights (IPRs) to have any impact, the right holders must be able to act against infringer rapidly, effectively and in a cost-effective manner Enforcement is however, weak point in many countries which have adequate legislative IPRs on paper, but not have the will, infrastructure or resources to help right holders to enforce these rights effectively The Agreement on Trade Related Aspects of Intellectual Property Rights (T R IP S ) created a new level of international treaties concerning IPRs deal and improve substance standards and procedural enforcement of IPRs These provisions present considerable institutional changes not only for developing countries, but also for developed countries in various aspects, including their legislative, their judicial systems and their enforcement authorities Vietnam has applied for and requested accession to the Word Trade Organization (W TO ) The Working Party on Accession was established in January 1995 To become a member of W TO, Vietnam in obliged to accede to T R IP S Over the years, the Government of Vietnam has attached great importance to protection of IPRs The Government considers that the IPRs protection system is of great significance to the promotion of scientific and technological progress, culture prosperity and economic development For Vietnam, IPRs protection is an important component part of its reform and open policies and its efforts to develop a socialist legal system In the present, trend of global economic integration and IPRs based commercial competition; the effective protection and enforcement of IPRs in nations have become vital important and is always a foremost interest of all IPRs owners and investors Today, Vietnam provides a rather comprehensive legal framework for protection of IPPs The basic IPRs legislation in Vietnam has been referred in the Civil Code of Vietnam, which took effect on I July 1996 Provision guiding the implementation of Civil Code relating to IPRs protection and enforcement are scattered in various Decrees and Circulars While the basic legal framework is in place to protect IPRs, but Vietnam market is still completely dominated and overwhelmed by piracy and counterfeiting To effective enforcement of IPRs, Vietnam has been confronted at three fronts, namely: - Effective legal framework and environment to guarantee strong legal basic for enforcement Vietnam legal framework of enforcement of IPRs is not consistent, it difficult to put in to practice - Expedition’s judicial and administrative processes to ensure availability of remedies for right holders - Public education to get staunch support for IPRs enforcement activities from relevant government agencies, stake holders and general public Thus, the effective enforcement of IPRs is a challenge faced by Vietnamese government The increase in both the quality and quantity of counterfeits and pirated copies combined with increasing involvement of organized criminal syndicates presents a threat to rights holders and society The measures and procedures to ensure the enforcement of IPR.S are playing an important role 1.2 Purpose Because of above reasons this thesis will deal with Enforcement of intellectual property rights under T R IP S Agreement in relation to Vietnam Law Accordingly, the thesis aims at: • Investigating the nature of enforcement of IPRs under T R IP S agreement • Examining the systems of enforcement of IPRs in Vietnam including administrative measures, civil remedies as well as criminal sanctions, special measures at border, with respect to their compliance to the T R IP S ’s standards • Finding ways to adapt the Vietnamese enforcement system to T R IP S ’ standards while keeping in mind Vietnam interests on economic development The ambition of this paper is to provide a comprehensive advice on the current development of the Vietnamese Law of enforcement o f IPRs which was amended to satisfy T R IP S Agreement’s requirement It is obvious that even the best law was has no value unless it is efficiently administrated and effectively enforced 1.3 Method In order to produce detailed and accurate results in my research, both the analysis method and comparative method are to be applied As such, the paper is to investigate, describe and compare different approaches to the regulations of enforcement of IPRs in Vietnam and in T R IP S A comparative method will be used, not with the main purpose to highlight differences and similaries but, in order to advance the discussion and to underline the problems of the subject Each legal matter will be examined as they apply to each step of the subject analysis Likewise, the use of the analysis method is particularly helpful and explicitly employed to conduct a comprehensive logic of the enforcement of IPRs according to different procedures (such as civil procedures, administrative procedures, criminal procedures, special requirement at border ) Additionally, the enforcement system of IPRs in Vietnam made to be in compliance with the T R IP S Agreement Descriptive and synthetic methods are applied in order to present only the essential of what has been to be developed in these areas 1.4 Limitations The doctrine of unfair competition, dilution, copyright, patent, and other areas of IP Law will not be discussed more than necessary for understanding the subject matter of this thesis Moreover, issues which are interesting but of immediate concern of this discussion, such as the enforcement of IPRs in EC, US and other countries will not examined Mechanisms and social economical policies, education and training to effective enforce of IPRs also not addressed in this thesis This thesis seeks to evaluate the possibilities of enforcement of IPRs limiting its analysis to the T R IP S ’s regulations and Vietnamese legislations In the near future, Vietnam will become a member of W TO; Vietnamese’s regulations have to consistent with and meet T R IP S ’s regulations The subject matters of comparison in this thesis are the T R IP S Agreement and Vietnamese Law An analysis of the T R IP S must therefore in some contexts include the situation in Vietnamese Law to be completing Additionally, these thesis only comments about procedures and remedies to enforce of IPRs, which has been to be stipulated in T R IPS Measures to enforce of IPRs involve civil, administrative, and criminal procedures and special requirement related at border measures The legal and practice perspectives of the enforcement of IPRs in real situation of Vietnam will be deeply research and to find out some suggested solution to perfect Vietnamese Law 1.5 Previous research on enforcement of IPRs under TRIPS Enforcement of IPRs is not completely a new phenomenon, however not many studies have been made on this topic The first study to properly analyse the enforcement of IPRs was “ Enhance the role and capability of Court in IPRs enforcement in Vietnam” by Sciences Considerate Institute of Supreme Court (1999) This report is of prime interest since it can be considered to establish the ground of the subject and thereby acting as important reference to following studies, such as “ The T R IPS Agreement Drafting History and Analysis” (2003) by Dannie Gravis and “ Intellectual property rights in the W TO and developing countries” (2000) by Jayashree Watal However, the report only mentions the enforcement of IPRs in one chapter Furthermore, many articles treating non traditional or non visual intellectual property rights include enforcement of IPRs in their analysis, but without going into any profound study 1.6 Content As already indicated by the title, the thesis concentrates on the legal and practical issues concerning enforcement of IPRs under T R IP S Agreement in relation to Vietnam Law The thesis is divided in to four chapters Chapter I : Introduction Chapter 2: Overview of IPRs and enforcement of IPRs under T R IP S Chapter 3: Enforcement of IPRs under TRIPS and according to Vietnamese law Chapter 4: Real situation and suggested solutions of enforcement of IPRs in Vietnam discretion to procide for border measures applicable to exports by the wording ’’may” In Vietnam, border measures are applicable to export and import Article 57 of the Customs Code of Vietnam defines that these regulations apply to IPRs related to the import and export of goods, and protected by the laws and administrative regulations of People’s Republic of Vietnam The main reason for the application of border measures of Vietnam to exports might be that Vietnam desperate, for improvement in intellectual property protection Article 52 places the burden on the right holder to make an application for such suspension of imported goods, provoding adequate prima facie evidence of infringement and to provide a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities The World Customs Organization adopted a model legislation in 1995, to set out the means by which right holders may obtain assistance from customs authorities Article of this law gives examples of evidence which may be presented to include: • The name and address of the importer or consignee, • Country of origin/ manufacture, • • Entities involved in the manufacture/ distribution, The trademark registration and samples of the goods on which they are affixed or a photographic or other likeness, • • • • Mode of transportation, Identity of transporter, Port of arrival and presentation, Anticipated date of arrival The law could also require the applicant to submit other particulars, if available and appropriate A response has to be given to the application and the period of time, indicating acceptance of the application and the period for which action will be taken by the customs authorities Article 53 allows the requirement of a security deposit or other assurance sufficient to protect the defendant and the authorities and to prevent abuse Articles 54 and 55 of T R IP S lays down the requirements on prompt notice of suspension to both the applicant and the importer and the period of such suspension If the applicant has neither obtained preliminaty relief nor initiated any action for hearing the case on merits (particularly where this has to be done in a court and not before the very same customs authorities) within ten working days, then the suspended goods must be released In other cases, the importer will have an opportunity, within a reasonable period of time, of being heard and requesting a revocation or modification of the order Article 56 of T R IP S lays down that where the importer has been injured through wrongful detention or release of his goods due to inaction as set out under 55, the applicant can be ordered to pay him or the consignee or owner of the goods, any approriate compensation Article 57 of T R IP S gives the right of inspection and information to both the applicant and the importer to substantiate or rebut claims of infringement Developing countries may make a provision for informing the applicant of the relevant details of the infringing consignment in the case of a positive 45 determination on infringement This is, however, not required and hence it can be included as a ’best endeavours’ measures92 3.5.2 Border remedies 3.5.2.1 Suspension of goods entering into channels of commerce Competent Customs will give an order to suspension of imported goods if it sastify three conditions as follows: • The right holder has to make an application for such suspension of imported goods, provide adequate prima facie evidence of infringement and provide a detailed description of goods to make them readily recognizable by the customs authorities • The petitioner has to have security deposit or other assurance sufficient to protect the defendant and authorities and to prevent abuse • The requirements on prompt notice of suspention to both the applicant and the importer and the period of such suspension Decree N IOI/ OOI/ND-CP, Providing Detailed Stipulations on the Implementation of some Articles of the Law on Customs regarding Customs Procedures, Customs Control and Supervision lays down this detention order as follows: The first step taken in carrying out the detention order is finding out when the infringing goods will be arriving and on or in what containers It is really a pity that the Customs in most jurisdictions has no resources to search Containers systematically on a random basis for infringing goods Therefore, the owner of the IPRs is obligated to extend assistance by supplying to the Customs sufficient information on the goods and the particular importation to render the goods recognisable and the shipment or particular importation identifiable, and any other information the Customs may reasonable require for the purpose of carrying out the detention in writing by the Customs of the seizure or detention of the infringing goods, has also to provide such storage space and other facilities as the Customs may require Since intellectual property disputes belong to the private law regime, owners of IPRs bear all the cost resulting from the actions brought by them Thus, in mainland Vietnam the applicant is asked to provide the Customs with security money which is equal to the price of the imported goods or the price of the exported goods There are considerable similarities between the first sentence of Article 55 of T R IP S and Article 14 of Decree No 101 /2001/ND-CP The owner, importer or consignee is entitled to the release of the goods, without prejudice to the rights of the right holder, if these conditions are met: • On the basis of a decision by the customs authorities or an authority not independent of customs it does not apply where the suspension is 92 See footnote 4, p.359 46 ordered by a judicial or administrative authority independent of customs • 10 working days must have passed (possible extension by another 10 working days) without the granting of provisional relief by the authority empowered • A security is posted in an amount to protect the right holder for any infringement as determined by the competent authority The security or equivalent assurance provided by the applicant shall all be refunded to the applicant where the competent authorities decide that there was an infringement of the IPRs of the applicant who lodged an application with competent authorities for the suspension of release into free circulation o f goods The applicant shall also not be charged a fee for detention of goods in such case 3.5.2.2 Other remedies Article 59 requires competent authorities, the customs or the court to be empowered to dispose of or destroy infringing goods so that they not enter into channels of commerce Unlike Article 46, sale of infringing goods, after removing the offending trademark is permitted as this would be an altered state, thus meeting the obligation of not allowing the re­ exportation of the infringing goods in an ’ unaltered state’ They can also be re-exported in an unaltered state under exceptional circumstances In addition, Article 60 allows small quantities of infringing goods imported in personal baggage to be exempted from these border measures It is unlikely that this provision would be reviewed as such a de minimis provision is allowed under G A T T also Over the years, Vietnamese customs office has made great effords to handle infringing cases of IPRs which relate to exportation-importation activities For example, we will demonstrate by outstanding cases follows: The Company K.I owner’s trademark ” K K K ” is used for production of stationery The headquater of the company is locatted in India The products of the company has fixed a trademark ” K K K ” , imported and sold popularly in Vietnamses market with high profit Company K.I registered to protect trademark ” K K K ” in Vietname in July 2002 However, May 2003 Company K.I investigated that the stationery products of another company also have a simillar trademark to ” KKK” By careful control, Company affirmed that Company K.N from India product these illegal goods, and exported them to Vietnamese market The Company’s trademark is essentially similar to one validy registered by Company K ]\ To deter infringement at source, company K.I chosed special measures at border This Company made a complaint to the Intellectual Property Office of the Ministry of Science and Technology It provided detailed information such as: name, address of defendant, the post of arrival, the anticipated date of arrival The Inspectors of the Ministry of Science and Technology have affirmed this infringing activity With this neceesary evidence, company continuously required the customs office which was the post o f arrival to suspense the release of these goods The Competent customs office have excuted necessary lawful procedures such as: 47 investigation, examination of evidence, dispatch notion to alleged and decided to suspense these infringing goods Article 14 in Decree No.lOl/2001/ND-CP providing detailed stipulations on the implementation of some articles of Law on Customs regarding Customs Procedures, Customs Control and Supervision stipulates that the applicant has to deposit 20% of the value of the imported goods to ensure the compensation and expenses which will be paid for the defendant through wrongful detention However, in practice there is not any provision in the Vietnamese legislation guiding the procedures of compensation, thus the competent customs office no received this deposit from applicant According to the measures of T R IP S , these illegal goods must be destroyed, disposed because it was impossible to replace the trademark and it is also impossible to remove the offending trademark However, at present Vietnamese legislation does not have any provision on procedures of this remedy, thus suspensed goods have been preserved in stores of the customs93 93 This case is cited from Département of Intellectual property right of Investconsult Group in Vietnam 48 Real situation and suggested solutions to improve enforcement of IPRs in Vietnam 4.1 Real situation of enforcement of IPRs in Vietnam 4.1.1 The present situation of infringement of IPRs in Vietnam It is accepted that the Vietnamese market is still completely dominated and overwhelmed by piracy and counterfeit Infringing activities of IPRs are becoming rampant and more complicated The number of infringement cases reported to the Nation Office of Intellectual Property of the Ministry of Science and Technology have been continuously increasing, namely94: Year 1994 Total of infringing cases 48 2001 2002 2003 203 399 326 Objects ot'IPRs has been violated Trademarks Industrial Patent Designs I 41 198 282 108 260 43 23 From the data above it can be shown that infringing cases essentially occur with industrial designs and trademarks In practice, the total number of infringing cases is more numbers, but its cannot control by competent authorities Many types of products are almost no more the subject matters of IPRs infringement (such as pharmaceutical products, tobacco), other products less become subject matters of IPRs infringement (beverage, especially those bearing the trademark ‘L a V ie ’)95 In contrast, many types of products and industries have developed rapidly with more complexity for example, the motorbike industry (both manufactured and assembled) where infringements relate to trademarks, industrial designs, and some cases have 94 Reports of Ministry of Science and Technology about enforcement of IPRs at Conference wide nation, 2004 95 LA VIE-a mark registed for mineral water by the Long An Joint Venture Company For over the years, this company has been fighting infringements with regard to its famous trade mark in the Vietnamese market, yet the situation rather than improving, has worsned, although the Market Management agencies have already punished certain infringing unit See Dang T.H TH U Y, Protection of well-known marks in Vietnam, Kluwer Law International 2000, p 146 49 elements infringing the IPRs in respect of industrial property rights to inventions and utility solutions, geographical indications It is an observation that infringement occurs in respect of new products attracting great attention of the vast of consumers, whereas the enterprises concerned not take prompt measures to prevent the infringement Furthermore, as infringement of IPRs is closely related to goods and services, it may occur in all fields of trade activities, from export-import to production and sales of goods and services This generates confusion to consumers by attaching the infringing trademark on a secondary part, especially for those products, which are assembled from many parts Infringement of trade marks in Vietnam is most alarming, damaging honest manufactures, harming the consumers’ interest and discouraging foreign investors What is most alarming is the wide range of different economic sectors and from private production units to research institutes, from stateowned to foreign-owned companies that participate in the production and distribution of counterfeit goods A recent case concerned the Golden Side Company of Hong Kong entering into a joint venture with two Vietnamese partners to import material for production of counterfeit cigarettes bearing the trade mark M A R L B O R O The joint venture had exported over 20 million packages of counterfeit cigarettes before it was discovered96 Infringers always have intentional infringement By taking advantage of the reputation of other enterprises to build up one’s own reputation This often happens to enterprises of adequate size, even somehow with the enterprises are well-known in the related field of goods production, the infringement usually is in the form of using the combination of protected features/signs and the protected features of other enterprises, using trademarks of others in an increasing order from one trademark to another where the similarity of trademarks is decreasing For the rest, infringers are wilful to make profit by grabbing reputation of others’ trademarks This often happens to small business producing low-quality goods They often change their business address and trade name so as to get rid of legal liability for the infringing acts Even taking advantages of the poor knowledge of IPRs enforcement competent agencies, they very often change the products’ designs and the packaging patterns’so as to prolong the term of handling the infringement cases The use of regulations in different agencies responsible for the management of industrial property to justify the infringement (registration of quality, business registration, business license ) is not unformed, thus it creates an impression that there is a contradiction between various State agencies97 Even some of them committ infringing acts by using others’ industrial property subject matters which are under protection with some modifications In 2004, the departments for the administration of intellectual property at all levels of the Government implemented for rectifying and standardizing the economic order in the marketplace, by combating against infringement and 96 See footnote 75, p 146 97 Hoang Van Tan, Deputy Director General Nation office of Industrial Property of Vietnam, Updated Information on enforcement of industrial property right in Vietnam (A C E/IP- IPEIS Electronic Forum), available at http://www.wipo.int 50 piracy that are detrimental to the public interest, strengthening supervision and control, and improving services Remarkable progress has been made in the encouragement of innovation promotion of industrial development, standardization of the market order and deepening of the reform and opening up efforts With the continuous enhancement of workforce in the field of intellectual property law enforcement and judicial protection, various people’s courts have increased their efforts in the judicial protection of intellectual property According to statistics of Ministry of Science and Technology, from 1995 to the end of 2001, the total number of infringing civil cases of IPRs which was settled by people’s courts in provinces and at city level was 45 cases Most of the intellectual property disputes were related to infringing of trademarks and industrial designs O f the above 45 cases, 10 cases were settled through mediation In practice, there are hundreds of criminal cases involving production and distribution of forged and inferior products and illegal business, but up to now there are not specific statistics In the same year, administrative organs for industry and commerce at all levels across the country continued to increase their affords in trademark administrative enforcement by strictly investigating and prosecuting acts of trademark infringement and counterfeit, so as to effectively safeguard the lawful rights and interests of trademark holders and consumers From 2000 to mid-2003, the Local Market Management Office (established in each province to keep order in the markets) was handled about 1,500,000 cases concerned trademark counterfeit The Local Market Management Office also cooperated with other competent authorities to settle infringement piracy Infringing activities are typically found in the piracy field with copying musical work, films and other entertainment products without permission.In 2000, the Local Inspectorate of the Ministry of Science, Technology and Environment organized nation-wide focused campaigns against infringement of counterfeit and piracy In the end of 2003, 252 marketplaces were checked by this local inspectorate of science, technology and environment with 141 infringing institutions being warned, 111 business institutions being fined with 750,000,000 V N D as the total98 At the border, the Customs Office continuously enhances the workforce to control the importation-exportation of goods in relation to infringement of IPRs From 1999 to 2003, there were 400 of cases importation-exportation related infringement goods were handled by customs authorities The infringer was also a foreigner" These efforts have demonstrated the firm position of the Government of Vietnam to stringently fulfil international commitments, to act in accordance with international rules, and to protect intellectual property at home and abroad, as well as its strong leadership in this respect They have also show that the various judiciaries and public security organs, as well as administrative organs for intellectual property government’s at all levels, have gradually increased their efforts, built up their capacity and improved their effectiveness and efficiency in intellectual property law enforcement The government has been conscientious and has done solid work in 08 See footnote 73 99Ibid 11 • I 51 protecting the lawful rights and interests of IPRs holders as well as the vital interests o f the general public 4.1.2 Difficulties Vietnam in IPRs enforcement in Intellectual property is a new concept for most Vietnamese, even though intellectual property law have existed in what is now known as Vietnam since the nineteenth century Most Vietnamese have therefore had insufficient time to come to terms with intellectual property In Vietnam, where creators are often unaware of their IPRs, they rarely register their intellectual property, are unfamiliar with procedures, or attempt to enforce it Because the concept of intellectual property is new, the authorities have had insufficient time to come to terms with new enforcement measures or develop effective ones Consequently, the authorities and general populace have had little experience with the concept, practice and regulations of intellectual property In general, enforcement procedures are available in domestic legislation OÍ Vietnam, but those procedures are not exercised in a manner that provides effective action against acts of infringement Remedies are not sufficiently high, expeditiously applied, or even carried out, meaning that they certainly are not deterrent Pre-established damages are rarely an option, but need to be because it is practically impossible to prove actual losses and monetary damages Infringers are engaging in illegal activity and, therefore, neither keep records nor easily discoverable supplies of goods to determine the extent of piracy and counterfeiting Judiciaries not have meaningful power to order the production of evidence and power to impose penalties on parties failing to comply with an order to produce evidence Judicial power to issue preliminary and final determinations on the merits on the basis of information presented in cases involving an injured party that is denied access to information or evidence not presented based on a voluntary and unwarranted refusal to provide information or evidence is sometimes interpreted as a right to dismiss a cases against an uncooperative defendant, despite the right owner’s evidence of infringement Experts are not used and courts plead ignorance, dismissing or delaying cases, or courts use experts that will say whatever the court wants Judges often misapply knowledge requirements For example, a judge might fail to order a party to desist from infringing activity unless the right owner can prove that the party has knowledge that preservation of evidence, compensation to be paid to right holders'00, and identification of third party infringers, in many cases, these order are not carried out, are carried out with extreme delays, or are carried out in a manner that alerts the infringers so they can evade the order State authorities does not have obligate to investigate, collect of evidence, assesses damage '00 See footnote 60 52 Right holders have had to pay compensation to infringers who have been able to avoid liability for their infringing activities, regardless of any showing of injury suffered by the infringer or of bad faith on the part of the right holder Although proceedings leading to a decision on the merits must be initiated within a reasonable period, delays in the courts are utterly unreasonable and deny justice T R IP S border measures provisions are written in a way that allows Members to comply on paper, but not in practice However, in reality, and depending on the amount and nature of the information sought from a right owner in the application process, an application system could exist without generating a single In Vietnam, right owners are required to know every detail of incoming, often smuggled, merchandise aboard airplanes, boats, and trains entering country The right owner cannot know which infringing goods are corning, in what quantities, shipped by whom, and to whom, unless they engage in illegal activity themselves Only ex officio border enforcement, carried out in tandem with other import controls, provides truly effective enforcement Competent authorities must be empowered to act upon their own initiative and suspend release where reasonable grounds exits for suspecting infringement Right owners often must submit applications in each port, rather than submit one application in which the right owner elects nationwide or local enforcement In Vietnam, the customs IP database and the database of registered trademarks (and copyrights) are maintained separately, doubling the burden on the government Domestic copyright and trademark registration databases border enforcement There is no need to create a separate border enforcement database and separate administrative requirement just to enable border measures Civil enforcement by the right owners, if effective, permits right holder to share the burdens of enforcing their rights, in appropriate circumstances One way in which a government could facilitate this process is by providing the right holder with the names and addresses of the consignor, importer and consignee and the quantity of the goods in question, as T R IP S requires This practice is, however, quite rare Infringing goods are often returned to the importer upon payment of a small fine or are auctioned or sold to the public by the seizing authority, often without the obliteration of the offending marks In some cases, re­ exportation of the intact counterfeit goods occurs instead of seizure and destruction These are unacceptable conclusions to border enforcement cases, wasting the time, effort and resources of the both law enforcement and industry and inflicting harm on industries and on the public Infringing goods should be destroyed and those involved should incur a penalty, whether an administrative or civil fine, plus the possibility of losing licenses to engage in the business of importing or exporting goods Often, statutes provide for terms of imprisonment that would be sufficient to provide a deterrent, if they were actually imposed and served, which they 101 Vu Ngoc Anh Head of an institute of Sludy Custom, Custom General Département, Practically experiences of Vietnamese Custom in enforcement of intellectual property, which was cited from workshop about enforcement of IPRs between Vietnam and Switzerland, 5/2002 53 most often are not Infringing goods should be seized and destroyed in all criminal cases, regardless of whether the defendant is convicted However, goods often are not destroyed, or, worse still, the courts use the defendant’s ignorance as a reason not only to acquit, but also to release the contraband into his custody Since T R IP S requires the additional presence of a mental state - wilfulness - for criminal conviction, the goods may be counterfeit regardless of the defendant’s criminal culpability, and , if so, should be destroyed Vietnamese government should also strive to make a lasting impact on the ability o f criminal infringers to renter the marketplace by seizing and destroying any materials and implements the predominate use of which has been in the commission of the offence, but this practice too is uncommon These items are often returned to the defendant upon payment of a small fine, or sold at public auctions to the defendant, to his business partners, or to others engaged in unlawful activities The practice of not seizing these items, or of returning them to the stream of commerce after they have been seized, negates the value of the enforcement action 4.2 Suggested solutions to improve the Vietnamese law of enforcement of IPRs Countries that have little or no experience of the protection of IPRs will find the prospect of putting in place all of these elements intimidating Through judicious implementation and, to the extent appropriate, regional and international cooperation, however, the reality of meeting these obligations may not be as difficult as it may seem • W e are operating in an era when the training and infrastructure building problems of countries trying to meet their international obligations may, through judicious use of modern technologies, be more easily addressed The explosion in the commercialisation of the Internet has brought with it open data standards and new capabilities for facilitating secure communications between patent offices and patent applicants The cumulative effect of these factors is that we now can take advantage of information technologies to make providing intellectual property protection more efficient • Quickly enact and fully enforce TRIPS-consistent laws, including a law or laws for each area of intellectual property protection and any necessary authority for its enforcement in the civil code, criminal code, or administrative code, as appropriate Some ot the matters have to be amended and supplied in statutes of Vietnam for example: * Creating provisions of pre-established damages It is necessary because it is practically impossible to prove actual losses and monetary damages * Establishing a special court of IPRs Judges in this court should be intensively trained and will gain this specialized knowledge and experience, thus making for greater legal security for IPRs holders 54 • • • • • • • • Establish access to a properly staffed, trained, and equipped the intellectual property office that grants industrial property protection, disseminates information about intellectual property, and cooperates with enforcement agencies Establish a well-trained judiciary that has the ability to conduct criminal and civil proceedings in a fast, fair, and transparent manner, the authority to impose an adequate level of fines and jail term, as well as the will to actually impose them, and-the will to impose preliminary and permanent injunctions with severe penalties for violation Establish a well-trained police force operating in a transparent manner that has the will and authority to undertake investigations and initiate legal action against intellectual property pirates ( if necessary, in cooperation with other authorities) Such a police force also needs the power to conduct raids without notice to the infringer ( but with proper safeguards to prevent abuse) and the will to so, and the legal power to confiscate and destroy (or turn over to the intellectual property owner ) infringing products, machinery to make such products, and business records Establish a well-trained customs force operating transparently with the will and authority to enforce intellectual property laws at the border Encourage the development of a well-trained corps of attorneys or agents in the private sector that is capable of working with administrative authorities, police, judiciary, and customs authorities to obtain and ensure the enforcement of intellectual property rights for the legitimate rights holder Encourage the development or the establishment of private sector organization in, such as colleting societies, bar associations with specialization in intellectual property matters, and organizations representing authors and inventors Increase public awareness about IPRs The Government should is conducting public education activities such seminars and workshops, and “ other training” to create greater awareness about IPRs law among the enforcement personal and the general public In order to ensure effective enforcement of IPRs in Vietnam, the Vietnam’s objective is not only to set up a modernized and integrated IP infrastructure but also to extend cooperation to other developing countries whenever sought 55 Conclusion Since commencing intellectual property law reform in the mid-1980, the Vietnamese authorities have improved enforcement measures Intellectual property owners now have access to most of the remedies prescribed by the T R IP S Agreement, and counterfeit and pirated was facing substantial maximum criminal penalties In this paper, the author advocated two strategies of provisioning enforcement of IPRs The first of these strategies exploits the tension inherent in the T R IP S ’s mandate of Vietnamese law The author exploits this tension by examining the provisions on enforcement o f IPRs such as those stated in Articles 41-61 of T R IP S , as well as the possibilities for regulations concerned of Vietnam The second of these strategies that Vietnam has discretion in implementing T R IP S to set very high standards for procedures and remedies to enforce IPRs that would be inconsistent with Vietnam’s legal standards With the reform and opening policy, Vietnam is changing with each passing day Today, great achievements have been made in the development and enhancement of the legal system and protection of intellectual property in Vietnam, which has contributed to the significant improvement in its situation of intellectual property protection These are indisputable facts and have been highly commended by the great majority of countries and international organizations Nevertheless, we should not rest on our achievements made so far, but should continue to improve our intellectual properly system, to further upgrade the protection level, and to actively promote international cooperation in the area of intellectual property protection Vietnam will, as always, take an active part in the activities of relevant international organizations, and fulfil its obligations under various international treaties and agreements on intellectual property We are ready to continue our cooperation with all countries across the world on the basic of five principles of peaceful co-existence and in accordance with the principles of equality and mutual benefit, to make joint efforts in, and positive contributions to, the improvement and development of the international intellectual property system 56 Bibliography Books: Danie Gervais, The T R IP S Agreement Drafting History and Analysis, Second edition ( Sweet & Maxwell, 2003, London) Bhagirath LalDas, The WTO-A guide to the Framework for International Trade, Second edition ( Zed Books Ltd, 2000, London and New York) Stephan M.Steward assisted by Hamish Sandison, Copyright and neigbouright (Butterwoths, 1989, London, Boston, Dublin, Edinburgh, Kuala Lumpur, Sudney, Toronto, Wellington) Geoff Tansey,Trade, Intellectual property, Food and Biodiversity (Quaker peace & Service, 1999, London) Shahid Alikhan, Socio-Economic benefits of intellectual property protection in developing countries ( World Intellectual Property Organization, 2000, Geneva) Jayashree Watal, Intellectual 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cooperation between Vietnam and Switzerland in the field of intellectual property W ebsites: http http http http http //www.W IPO.int / / W W W WTO.ore //international, westlaw.com //w w w iipa.com //www.dnlaw.com 59 ... UNIVERSITY FACULTY OF LAW HANOI LAW UNIVERSITY ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS UNDER TRIPS AGREEMENT AND COMPARE WITH VIETNAMESE LAW Specialty: International and comparative law Code: 60... Overview of IPRs and enforcement of IPRs under T R IP S Chapter 3: Enforcement of IPRs under TRIPS and according to Vietnamese law Chapter 4: Real situation and suggested solutions of enforcement of. .. types of intellectual property and enforcement mechanics of intellectual property rights The Agreement prescribes minimum standards for Members in various areas of intellectual property Intellectual