Vietnam Criminal Legislative Development Update:

5 Reasons Permitting to Abolish Criminal Charge Condition at the Request

of the Victim Before Prosecuting Crime of Counterteit Geographical Indications

Email: vinh@bross.vn

It appears that criminal measures for intellectual property crimes are only governed in 3 Free Trade Agreements (FTAs) that Vietnam has signed and is obliged to comply with, namely Article 61 TRIPS Agreement, Articles 18.77 & Article 18.78 of CPTPP and Article 11.74 of RCEP. Criminal sanctions in these FTAs, which are required to be transposed into national legislation, share the characteristics as criminalization requirements for acts of intentionally forging trademarks (trademark counterfeiting), authors’ right and related rights piracy and trade secret infringement.  Article 18.77(6)(g) CPTPP states that competent authorities may act upon their own initiative to initiate legal action without the need for a formal complaint by a third person or right holder.[1]

The Supreme People's Procuracy of Vietnam proposed the National Assembly to amend Clause 1, Article 155 of the Criminal Procedure Code (CPC) in the direction of eliminating the reference to Article 226 of the Penal Code to allow competent authorities to prosecute criminal cases for the crime of infringing industrial property rights without the victim's request and amending Clause 8, Article 157 of the CPC in a way that removing the reference to Article 226 of the Penal Code in order to remove the grounds not to institute criminal cases in cases where there is a crime specified in Clause 1, Article 226 of the Penal Code, but the victim or his/her representative does not request prosecution.[2]

In our opinion, the proposal of the Supreme People's Procuracy is grounded and practical for the following 5 reasons:

1. Removal of the conditions for prosecution at the request of the victim does not infringe the private prosecution right because the elimination of prosecution condition at the request of the victim in Clause 1, Article 155 and Clause 8 of Article 157 of the CPC making reference to crime of infringing upon industrial property rights at Article 226 of the Penal Code would be the same as the National Assembly's approval of removal of this identical conditions applicable for offense of copyright, related right infringement as provided at Clause 1, Article 155 and Clause 8, Article 157 of the CPC referring to crime of infringing upon authors’ right and neighboring rights as set forth at Article 225 of the Penal Code.

2. Abolishing or not removing the conditions for prosecution at the request of the victim in Clause 1, Article 155 and Clause 8, Article 157 of the CPC referring to Article 226 of the Penal Code does not change the curent situation of Vietnam's current criminal policy against counterfeit goods, counterfeit geographical indications and pirated copies. This is because forging geographical indications on a commercial scale is subject to penal liability under Article 171 of the 1999 Penal Code revised 2009 (invalid) and Article 226 of the Penal Code 2015 amended in 2017 (in effect) was already approved by the National Assembly. Thus, concerns about Vietnam's broad protection for foreign entities because the CPTPP does not require criminalization for counterfeit geographical indication is both incorrect and redundant because the scope of this discussion is only about procedural legislation, not about substantive law.

3. Trademarks and geographical indications are two different forms of IPR protection, but they are very similar in essence, having the same characteristics of indicating commercial origin, helping consumers to distinguish commercial origin of the product. Therefore, removing the condition for prosecution at the request of the victim in Clause 1, Article 155 and Clause 8, Article 157 of the CPC that refers to Article 226 of the Penal Code, should be generally applied to both trademarks and forged geographical indications instead of only counterfeited trademark.

4. Vietnam is a country with many geographical indications and geographical indications are the property of the State, not subject to private entities.[3] Therefore, removing the condition for prosecution at the request of the victim in Clause 1, Article 155 and Clause 8, Article 157 of the CPC, referring to Article 226 of the Penal Code, is a correct proposal since the State does not need to ask the State if it is necessary to press criminal charge or not?

5. The current situation of IP right infringement in Vietnam as reported by the ICC Bascap and Special Report 301 of the United States Trade Representative (USTR) is of great concern while administrative sanctions are considered is too light, not enough to deter infringers from manufacruring and trading in trademark counterfeit goods or forged geographical indications. Proactively pressing criminal lawsuit without the victim's opinion will directly protect the rights and interests of the State, prevent deceiptive and illicit business activities, and contribute to maintaining a healthy and fair business environment for the Vietnamese business community.[4]

Bross & Partners, a Vietnam intellectual property law firm ranked Tier 1 in 2021 by Legal 500 Asia Pacific, has experience and capacity to resolve intellectual property rights complex disputes regarding trademark, copyright, patent, plant variety and domain name in Vietnam and abroad.

Should you need any assistance, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.