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Hogan Lovells' LimeGreen IP

The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Trademarks - Anti-counterfeiting: Customs watch applications - Vietnam

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-Are there any fees or local procedural requirements?

Border control includes (i) monitoring/supervision to detect suspected infringing/counterfeit goods; and (ii) detain allegedly infringing/counterfeit goods.

Applicants for measures to control imported and exported goods relating to intellectual property shall have the following obligations: 

  • To provide documents or evidence proving that the applicant is an IPR holder relating to the imported and/or exported goods;
  • To supply sufficient information to identify goods suspected of infringing IPRs or to detect goods showing signs of infringing IPRs;
  • To file a recordal application to the Customs Office and to pay fees and charges stipulated by laws;
  • To pay damages and other expenses incurred to persons subject to control measures in a case where the detained goods are found not to have infringed IPRs.

Applicants for suspension of customs clearance shall provide a pledge in one of the following forms:  

  • A sum of money equal to twenty (20) per cent of the value of the goods consignment subject to the application of the measure of suspension of customs procedures, or at least twenty million Vietnamese dong (VND 20,000,000) where it is impossible to determine the value of the goods consignment;
  • A deed of guarantee issued by a bank or other credit institution.

After receiving a full application, the Customs authorities shall check the application. If the application does not meet the requirements, Customs will reject it. If the application meets the requirements and is accepted, the process shall be as follows: 

  • After receiving the request for customs supervision and inspection for exported and/or imported goods that are subject of IPRs, the General Department of Customs shall update the database system of protection of IPRs and send an acceptance notice of the application to the Customs Departments of the provinces, cities and the Smuggling Investigation and Prevention Department to commence the inspection and supervision process.
  • Customs Departments of provinces and cities, the Smuggling Investigation and Prevention Department shall look up data on the system to arrange, commence the implementation within their administrative division upon receipt of the notice of the General Department of Customs.
  • Under the instruction of Customs Departments, the sub-departments will proceed with the supervision and inspection of exported and/or imported goods which are suspected of infringing IPRs as regulated by law.

 



-How do you register a customs watch application?

To monitor/supervise the infringing or counterfeit goods crossing Vietnam's border, it is necessary to file for recordal of the IP rights with the General Department of Customs (if recordal requested in several localities) or the local custom post where the supervision is requested. The application can be filed by the IP rights holder or an authorized person. 

When applying for Customs recordal of an IP right, a written application must be provided, which includes the following documents: 

  • A Certificate of registration of IP rights or other documents proving the IP rights are protected in Vietnam or Certificate of Registration of trademark licence agreement. Certificates of registration of copyright and related rights, plant variety rights or other documents of copyrights and related rights, which have to be stamped and certified by the IP rights holders or the authorized person;
  • A detailed description of IPR infringing or counterfeit goods, photos, characteristics to distinguish genuine goods from IP rights infringing or counterfeit goods;
  • A list of legitimate/authorised exporters and importers of goods requiring supervision; a list of people who may export and import IP rights infringing/counterfeit goods.

 


-How long does it take and what is the term of protection?

Once the recordal application is filed, Customs is required to review and approve (or reject) the application within 20 days from the date of receipt of satisfactory application.  

A Customs recordal is valid for two years from the date of acceptance notice by Customs and is renewable for a further two years upon request.  After two years a new application has to be filed.



-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

According to the law, the entities who are entitled to file the Customs recordal application are holders of IP rights (including IP rights holders and organizations or individuals to whom IP rights are transferred by the holders) or persons legally authorized by IP rights holders.  Accordingly, if filing on behalf of a subsidiary of the IP rights holder, evidence proving the transfer of the subject IP rights from the holder to the subsidiary or authorization documents by the IP rights holder authorizing the subsidiary to file the Customs recordal application must also be filed.


-Is a local agent required? If so, is a power of attorney required?

IP rights holders having presence in Vientam may file directly. Foreign IP rights holders must file through a local agent.

In order to act as the local agent, the agent should obtain a notarized and legalized power of attorney from the IP rights holder and they must be recorded with Customs. The recorded agent can participate in inspection, monitoring, control, verification, collection of evidence to determine IPR infringing or counterfeit goods, processing of goods, exhibits of violations, except in cases where it is necessary to protect trade secrets or State secrets as required by law. The recorded agent can also act on behalf of the IP rights holder during the seizure process, including receiving the official notifications, liaising with the customs officials, training customs officials, submitting responses and paying bonds.


-What level of understanding of IP rights is available from Customs? Are additional procedures or training required?

Customs' ability to identify IPR infringing or counterfeit goods will depend on the level of details provided in the application and any training provided to Customs.

IP rights holders should either hold training courses for Customs officials or participate in seminars organized by them to raise their awareness of IP rights infringing or counterfeit goods for higher effectiveness of customs monitoring.


-When Customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?

When finding a consignment of goods suspected of infringing IPRs, the Customs shall promptly notify, in writing, the applicant for customs recordal. Within 3 working days, the IP rights holders have to confirm the status of the detained goods, and f the confirmation is positive, lodge a claim to Customs and a bond, refundable, equivalent to either 20% of the value of the consignment, or at least 20 million Dong if the value of the goods has not been determined.

Once the IPR's holder confirms that the goods are IPR infringing or counterfeit products, Customs will issue a decision to suspend the customs clearance procedure. Customs must release the suspected goods if, within 10 days from the date of the decision, the IPR's holder does not file a lawsuit against the owner of the suspected goods and Customs do not initiate an administrative action against the owner of the suspected goods either. If an administrative action is commenced, Customs may order for payment of a monetary fine and destruction of the goods. In the case of a lawsuit, the court can order for damages including legal fees and destruction of the goods.