10 Key Changes in Enforcing Patent, Design, Trademark Rights via Administravive Measure under Revised Decree 99/2013/NĐ-CP

By Attorney at Law Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

In Vietnam, IP rights enforcement by administrative violation sanction accounts for over 90% of IP rights infringement cases.^[1] Decree No. 99/2013/ND-CP recently amended under Decree No. 46/2024/ND-CP that takes into effect from 1st July 2024 (“Decree 99”) plays a significant role for the protection of exclusive rights to patents, industrial designs, trademarks, geographical indications, and unfair competition. Bross & Partners updates 10 key issues of Decree 99.

1. Decree 99 has altered, supplemented several additional sanctioning forms, including: forcible return of domain names; forcible withdrawal of domain names; forcible restoration of the initial state; forcible monetary compensation in cases where it is grounded to believe that the transfer price of the right to use the infringed industrial property rights can be determined correspondingly to the time and manners used; and the total or partial suspension of the operation of production, business and services .

2. Decree 99 has amended, repealed some remedial measures, including: forcible removal of infringing elements on goods and means of business (forcible destruction of infringing elements has been repealed); forcible withdrawal of domain name (instead of the forcible change of domain name information); forcible distribution or use for non-commercial purposes of goods bearing counterfeit trademarks or geographical indications (this forcible distribution or use is no longer applicable for the ingredients, materials, and means used to produce and trade in those goods with counterfeit trademark or geographical indications); measure of forcible public apology for false indications of industrial property is repealed.

3. According to Decree 99, only imported and transited goods with counterfeit trademarks or geographical indications, including the ingredients, means, or materials mainly used to manufacture and trade in these goods, will be forced to be taken out of Vietnam’s territory or forced to re-export (after the removal of infringing elements).

4. In addition to the remedial measure of the forcible return of illegal profits obtained from administrative violations, for the first time, Decree 99 has imposed that the forcible monetary compensation in cases where there is a basis for determining the transfer price of the right to use the infringed patents, utility models, industrial designs, and layout designs corresponding to the time and manners used. Violating individuals and organizations those who do not voluntarily compensate the right holders will be coerced into doing so.

5. Decree 99, for the first time, has set down the application of measures to prevent and ensure the handling of administrative violations against internet domain names through the temporary seizure of domain names, demanding the Vietnam Internet Network Information Center (VNNIC), and the domain name registrar to maintain the current status of the domain name to serve the process of verification and handling of administrative violations. Where a decision on administrative sanctions includes the remedial measure of the forcible return of the domain name, the violating party must return the domain name to VNNIC within 30 days. Expiry of this period without voluntary return then it is to be coerced into returning. Accordingly, VNNIC and the domain name registrars must revoke the afore-mentioned domain name and notify the registrant (IP right holder).

6. Where the infringing goods are counterfeit (for the purpose of determining the fine amount and competence for ordering sanctions), Decree 99 has stated that the determination of their value must be evaluated according to the market price of the authentic goods or goods with similar features, technology, and uses.

7. Decree 99 states that no administrative sanctions shall be imposed on goods in transit that has infringed registered patents, utility solutions, and layout designs, as well as on commodities that are produced from a process that has infringed registered patents and utility solutions.

8. Registering a domain name is no longer considered an administrative violation, in particular, Decree 99 stipulates that only the unauthorized possession or use of a domain name that is identical with or confusingly similar to the other’s registered trademark, tradename, or geographical indication with bad faith (bad intentions), or to take advantage of his prestige and reputation for profit, can be fined from 5 million VND to 20 million VND.

9. Decree 99 has abolished the additional sanction form of total or partial suspension of the operation of violating production, business, and services if the value of infringing goods and services are worth between 100 million and VND250 million for unfair competition practices in the field of industrial property.

10. Within 60 days from the receipt of the decision on administrative sanctions along with applied remedial measure of the forcible change of the enterprise name (business name) or the forcible removal of infringing elements in the enterprise name, the violating party has to change his enterprise name or remove infringing elements in the business name. Otherwise, the violator will be forced to change the business name. Within 10 working days after the expiration of the 60-day period mentioned above, the Business Registration Authority is responsible for issuing an official letter requesting the violator to report and explain within 5 working days from the date of receipt of such official letter issued by the agency that made the sanctioning decision.

Bross & Partners, an intellectual property company ranked Tier 1 for 3 consecutive years (2021-2023) by Legal 500 Asia Pacific, has extensive experience in intellectual property rights dispute resolution regarding trademarks, domain names, copyrights, patents, plant variety in Vietnam as well as in other countries around the world.

Please contact: vinh@bross.vn; cellphone 84-903 287 057; Zalo: 84-4-3555 3466; Wechat: Vinhbross2603; Skype: vinh.bross.