Changes In Regulations on Sanctions Against Administrative Violations in the IP Field
Nguyen Quang Huy, Vision & Associates (Vietnam)
Administrative proceeding is the most common route for handling infringements in the field of industrial property in Vietnam, and for this purpose, Decree No. 99/2013/ND-CP on sanctioning of administrative violations in the industrial property field (“Decree 99”) is a key instrument. However, since the implementation of Decree 99 from 2013, the authorities and practitioners observed some issues, which sometimes hindered their enforcement actions. Further, it should be noted that the framework of administrative proceeding is regulated in the law on handling administrative violations, and its amendment has recently taken effect since 01 January 2022. Hence, on 30 December 2021, based on the proposal of Ministry of Science and Technology, the Vietnamese Government issued Decree No. 126/2021/ND-CP, amending and supplementing a number of articles of Decree 99 (“Amended Decree 99”).
In general, main amendments made in the Amended Decree No. 99 are as stated below:
- Pursuant to Article 1a, Amended Decree 99, not only Vietnamese but also overseas individuals and entities are subject to the administrative sanctions if they commit IP infringement in the territory of Vietnam.
- The monetary fines against certain violations have been increased. For example, for the act of “providing wrongful indications on the legal status and scope of protection of industrial property rights”, the new monetary fine is now VND10-20 million (approx. US$435-870), instead of the previous one of not exceeding VND1 million (approx. US$43.5).
- The Amended Decree limits the application of the sanction of “temporary suspension, whole or a part, of production, trading of infringing goods/services”. In the previous Decree 99, enforcement authorities were able to impose such type of sanction against infringers, regardless the severity of the infringements. However, under the Amended Decree 99, this sanction is only applied if the value of infringing goods/services exceeds certain amounts.
- For counterfeit goods bearing protected trademark or geographical indication, Article 12.13(a), Amended Decree 99 stipulates that the remedial measure of “forcible destruction” is applied if such counterfeits cause harms to the health of people, animals, plants or the environment. Otherwise, the counterfeit goods will be distributed or used for non-commercial purpose after the removal of infringing signs from goods, and under the condition that such distribution or use does not adversely affect the exercise of the IP rights by the holders.
- Under the previous Decree 99, enforcement authorities were able to confiscate material evidence or means used for the violations, with the value not exceeding the corresponding monetary fines imposable by such authorities for such violations. However, under the Amended Decree 99, the maximum values of confiscated material evidence or means can be double that of the corresponding monetary fines.
- Pursuant to Article 27.2, the Amended Decree 99, the Complainant can proactively request the authorities to cease the administrative proceedings.
- Last but not least, the Amended Decree 99 amends the regulation on the sanction of coercive withdrawal of infringing domain names. It should be noted that in the past, there were some glitches in terms of cooperation between enforcement authorities that issue the sanctions, and Vietnam Internet Network Information Center (VNNIC) – the state body responsible for the management of country code top-level domain (ccTLD) regarding withdrawal of infringing domain names. Now, the Amended Decree 99 clearly stipulates that VNNIC is now obliged to withdraw the infringing domain names upon requests by the enforcement authorities. With such a provision, it is expected that such glitches will no longer exist.
Decree No. 126 took effect since 01 January 2022, just few days after its issuance by the Government.