[PART 2] - Defining Boundaries and Criminal Liability in Overlapping Cases between Counterfeit Goods Offences and Intellectual Property Infringement Offences

Founding Partner Le Quang Vinh - Bross & Partners

Email: vinh@bross.vn

This article analyzes the difficulties in determining criminal charges for acts of producing and trading in counterfeit goods that simultaneously infringe intellectual property (IP) rights under the 2015 Penal Code of Vietnam (PC 2015). The problem arises due to the difference in the object of infringement (tangible vs. intangible) between the two groups of offences, leading to “competing offences” in practice. The article proposes two solutions: first, to improve the legal guidelines to clarify overlapping situations; second, to establish exclusionary provisions by incorporating Articles 225 and 226 into Clause 1 of Articles 192–195. This solution aims to address an offence act against multiple legal interest and ensure full criminal liability for both offences. This article was originally published on Tòa án nhân dân điện tử (the online Journal of the Supreme People’s Court of Vietnam) on September 11, 2025. Due to its length, the author has divided the article into three parts for readers’ convenience.

3. The Current Situation of “Competing Provisions” and Difficulties in Defining Criminal Liability

The difference in protected legal interests and the overlap in objective acts, along with the offender’s subjective intent to infringe both interests simultaneously, has created a situation of “competing provisions of law” in criminal proceedings, causing major difficulties in defining boundaries of criminal liability.

3.1. Manifestations of “Competing Offences” in Practice and Typical Cases

Many cases involve goods that are both counterfeit in quality/origin and counterfeit in trademark, making law enforcement bodies confused in selecting the appropriate offence. The intersection between “counterfeit goods” and “IP infringement” is the root cause of this competition. Acts of producing low-quality products but attaching counterfeit famous trademarks, or producing/distributing pirated copies of copyrighted works, raise the question whether to prosecute under Articles 192–195 or Articles 225/226, or both.

Judicial practice has demonstrated these difficulties through typical cases:

• Case of A-brand ballpoint pens and K-brand rulers: The defendant was initially prosecuted for producing and trading in counterfeit goods (Article 192 PC) with a severe penalty framework due to the large value of goods (over VND 2.2 billion). However, at trial, the Procuracy changed the charge to infringement of industrial property rights (Article 226 PC) with a much lighter penalty. The reason was that expert conclusion showed the products were not counterfeit in quality (some samples even reached 105.9% compared to genuine products)[1] but merely counterfeit in trademark. This case illustrates the necessity of clearly distinguishing between counterfeit in quality and counterfeit in trademark for accurate charge determination.
• Case of Rolex watches: The court convicted the defendant for trading in 3,037 watches suspected of counterfeiting famous trademarks Rolex, Tissot, and Longines, under the offence of trading counterfeit goods pursuant to Article 156 PC 1999. However, the expert conclusion only affirmed that all watches were counterfeit in trademark, without any conclusion on quality[2]. The absence of evidence regarding fake quality raised concerns about inaccurate charge determination, potentially leading to harsher penalties than warranted by the nature of the act. This case further highlights the necessity of distinguishing between counterfeit in quality and counterfeit in trademark
• Case of the website “phimmoi.net”: On 19 August 2021, the Investigation Police Agency of Ho Chi Minh City initiated a criminal case for copyright and related rights infringement concerning illegally streamed movies on this website[3]. However, the case faced difficulties in evidence collection and proving the offence due to the need to establish quantitative factors (illegal profit, damages to right holders). Another major difficulty arose from the nature of the act of online streaming—which is the communication of works to the public—rather than reproduction or distribution, which are the protected legal interests under Article 225 PC 2015.

3.2 Distinguishing “Concurrence of Provisions” and “Concurrence of Offences”

The difficulties in determining charges for overlapping acts, particularly between producing/trading in counterfeit goods (Articles 192–195) and IP infringement (Articles 225–226), should be resolved based on criminal law theory on “concurrence of provisions” (trùng luật) and “concurrence of offences” (phạm nhiều tội tư tưởng).

According to Professor Nguyen Ngoc Hoa[4], concurrence of provisions occur when one criminal act satisfies multiple constituent elements of offences (CEOs) but is not considered multiple offences because of the existence of relationships such as general–specific, special–ordinary, absorbing–absorbed, substitutive, or principal–subsidiary between the pairs of offences. In such cases, he assumes that “when one act already satisfies one offence’s CEO, it simultaneously satisfies the other, but the first CEO fully reflects the danger of the act; therefore, the offender is only convicted of the offence reflected by the first CEO”.

Concurrence of offences (phạm nhiều tội tư tưởng), also called “abstract cumulative offences” or “ideal cumulative concurrence”[5], refers to cases where a single act simultaneously satisfies the CEOs of multiple offences, but each offence protects a completely independent legal interest.

To explain why producing and trading in a product that is both counterfeit in quality/origin and counterfeit in trademark belongs to the category of concurrence of offences rather than competing provisions, we must analyze the nature of the act more deeply.

First, the nature of such an act is multiple legal interest because it is not a single physical motion. It is a complex act carried out with two different purposes, infringing two independent legal interests:

• Aspect one (Counterfeit goods offence): Counterfeiting quality or function to deceive consumers. This infringes economic management order and consumer health, which are the protected legal interests of the counterfeit goods offences (Articles 192–195).
• Aspect two (IP infringement offence): Counterfeiting trademarks to exploit brand reputation and cause confusion about product origin. This infringes the IP rights of trademark owners, which are the protected legal interests of IP infringement offences (Articles 225–226).

Second, the relationship between the CEOs of counterfeit goods offences (Articles 192–195) and IP infringement offences (Articles 225–226) is neither inclusive, exclusive, nor absorptive. These two groups of offences are completely independent. The counterfeit goods offence cannot encompass the IP infringement offence because it ignores the aspect of exclusive rights infringement. Conversely, the IP infringement offence cannot encompass the counterfeit goods offence because it ignores consumer health and economic management.

In other words, no single CEO among these CEOs of two groups of offences fully reflects the dangerousness of an act that is both counterfeit in quality and counterfeit in trademark. Therefore, criminal prosecution for both offences is necessary to fully reflect the nature of the act. Prosecuting under both offences does not violate the principle “one act, one offence” (Ne Bis In Idem) but correctly applies the principle of concurrence of offences to a complex, multi-legal interest criminal act.

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