Procedures for suing, mediating, preparing for hearing and

first-instance trial of intellectual property rights cases in Vietnam

Email: vinh@bross.vn

As prescribed by law, procedures for hearing first-instance of a civil or commercial dispute related to intellectual property rights shall be carried out according to the following 4-step process:

(a) Filing a lawsuit with or without a request for the provisional emergency measure (temporary injunction)

(b) Acceptance of the case

(c) Mediation

(d) Opening first-instance trial

Step 1 - File a lawsuit with or without the request for the application of provisional emergency measures

Individuals, organizations and agencies initiating lawsuits must make petitions, including the main details such as date of the petition, name of the court that will receive the petition, name and address of the plaintiff and defendant, list of documents and evidence accompanying the petition, which shall include the evidences proving that the plaintiff's lawful rights and interests have been infringed upon.

The petition may be filed in one or three forms: filed directly in court, sent by post or filed electronically via the court's web portal. The date of initiation of a lawsuit shall be the date on which the applicant files his / her petition or the date inscribed on the postmark of the postal organization or the date on which the petition is filed if filing the lawsuit online.

In the event that there is a risk of irreparable damage to the intellectual property right holder, or goods suspected of infringing upon intellectual property rights, or evidence related to an infringement of intellectual property rights is in danger of being dispersed or destroyed, if it is not protected in time, the right holder, at the time of initiating a lawsuit or after having sued, may ask the court to apply, change, or revoke 1 out of 4 temporary injunctions for goods suspected of infringing upon intellectual property rights: (a) seizure; (b) inventory; (c) sealing, prohibiting from changing the status quo, banning movement; (d) prohibiting title transfer[1]. For example, according to Decision No. 1109/2015 / KDTM-ST on recognizing the agreement of the litigants of the Ho Chi Minh City People's Court on September 29, 2015, the request for application of the temporary injunction is to conduct an inventory of lots of bottles Campax due to infringement of the plaintiff's exclusive right to registered design, accepted by the court under Decision No. 30/2015 / QD-BPKCTT of June 1, 2015 and the litigants subsequently asked the court to cancel the temporary injunction on the ground that the parties reached a dispute settlement[2].

Step 2: Acceptance of the lawsuit

Within 03 working days from the date of receiving the petition, the Chief Justice of the Court which received an application shall assign a Judge to consider the petition. Within 05 working days from the date of assignment, the Judge must issue a decision to accept the petition to resolve it according to normal procedures or simplified procedures unless the Judge decides that the petition needs to be amended, supplemented, or to be transferred to another competent court, or is returned if the case is not under the jurisdiction of the Court.

Within 7 days before accepting the case, the judge must ask the petitioner (plaintiff) to pay court fee in advance and would only accept the case after the litigant has presented a receipt of payment of court fee.

Within 3 working days after accepting the case, the Judge must send written notice to the plaintiff, the defendant, agencies, organizations and individuals those who have rights and obligations involved in the civil legal case, and to the Procuracy of the same level stating that the Court has accepted the case. In addition to information on the accepted case will be adjudicated in accordance with normal or summary procedures, the notice of acceptance must provide a time limit for the parties concerned to submit a written opinion to the Court, including counter-claim or independent claim, as well as must notify legal consequences if the parties do not submit their written opinions

Step 3 – Mediation

Mediation is a procedure in the stage of trial preparation, in which the Court is responsible for conducting mediation for the litigants on the principle of respecting the parties' right to freedom of agreement but must ensure that they do not violate the laws, or contrary to social ethnics, except for cases that are not allowed to mediate (eg. claims for damages by reason of causing damage to the State’s property, or lawsuits derived from civil transactions in violation of prohibitive regulations), or the case failed to conduct a mediation (eg. the defendant is deliberately absent for second time despite being duly summoned twice, or one of the litigants proposes not to conduct the mediation). However, it should be noted that mediation between the parties may be conducted not only at the mediation and pre-trial stage, but may be conducted at the trial. For example, in the 2015 industrial property right dispute with respect to an industrial design granted under patent no. 13708 and heard by the Ho Chi Minh City People's Court, until the time of the first instance trial, the plaintiff declared and requested the court to narrow the scope of lawsuits, a request for recognition of the settlement between the plaintiff and the defendant[3]. 

Normally, the Judge will hold conciliation session together with the meeting to check the handing over, access to, and disclosure of evidence with a prior notice to the litigants. At the meeting, the Judge will publish documents and evidence available in the file and ask whether the litigants want to change or keep unchanged the initial claims and scope of the lawsuit, question about the agreed and inconsistent issues, documents and evidence that has been handed over as well as addressing these evidence to other involved parties[4]

With respect to conducting the content of conciliation, the plaintiff and the defendant, other involved parties, in turn present their disputes, grounds for initiating lawsuits, and raise their views on issues that need conciliation and settlement. At the end of the mediation session, the Judge must make a record of the mediation signed by the litigants. A record of successful mediation is established only when the parties reach a dispute settlement agreement. If the litigants do not change their opinions after the expiry of 07 days from the date of making the minutes of successful mediation, the Judge must issue a decision on recognition of the parties' agreement.

During the preparation for trial, the Judge must issue one of four decisions: (a) recognition of the settlement of the litigants; (b) provisional suspension of resolution of the case; (c) suspension of resolution of the case; or (d) bringing the case to trial.

Step 4 – Opening first-instance trial

Except for cases that are decided to hear according to simplified procedures or cases involving foreign elements, for civil disputes then the time limit for trial preparation is 4 months from the date of acceptance of the case while for commercial disputes, the time limit for preparation for a trial is 2 months from the date of acceptance of the case. In other words, disputes of intellectual property rights between individuals and organizations with each other and for profit purposes, the trial time limit is 2 months while disputes between individuals and organizations wherein there is at least one party having no profit purpose, this time limit is 4 months.

Within a period of 1 month (or 2 months if there is justified reasons) from the date of issuance of the decision to bring the case for trial, the court must open a first-instance trial. The trial must be conducted directly, verbally, at the time and place as determined in the decision to bring the case for trial or as in the notice to re-open the trial where the trial is postponed

Procedures for starting the trial include preparation for the opening of a trial, procedures for commencing a trial and litigation. The section of litigation procedure comprising such activities as presenting evidence, questioning and answering, answering and expressing opinions, arguing to evaluate the evidence takes place under the control of the presiding judge.

The argument section is central to the litigation. This section is conducted in the order that the person defending the lawful rights and interests of the plaintiff presents, and the plaintiff has the right to supplement his/her comments. Next, the person defending the defendant's legitimate rights and interests argues, answers and the defendant has the right to supplement opinions; and subsequently is the person defending the parties having the related right and obligations. At the end of the debate, the trial panel will deliberate and render judgment.

Bross & Partners have had experience in criminal litigation and civil litigation in cases involving intellectual property rights as well as experience in handling infringements of intellectual property rights by administrative measures. Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.