Vietnam Legal Update: Will Instition of Criminal Cases under

Section 226(1) of Vietnamese Penalty Code No Longer Need a Complaint by the Victim?

Email: vinh@bross.vn

Draft Amendment to Criminal Proceeding Code to Comply with the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP)[1]

The CPTPP stipulates that member countries must apply criminal procedures and penalties at least in cases of willful counterfeiting trademarks or copyright, related rights piracy on a commercial scale, in particular, point g, clause 6, Article 18.77 of the CPTPP provides that the competent authorities of a member state may act upon their own initiative to initiate legal action without the need for a formal complaint by a third party or right holder.[2]

With the responsibility of presiding over and coordinating with relevant ministries and competent authorities to review the 2015 Criminal Procedure Code, effective from January 1, 2018 (”CPC”), based on Resolution No. 72/2018/QH14 and Resolution No. 72/2018/QH14, Decision No. 121/QD-TTg, the Supreme People's Procuracy is proposing to amend Clause 1, Article 155 of the CPC in the direction of abolishing the reference to Article 226 of the 2015 Penal Code as revised to allow the competent authorities may initiate criminal proceedings against the offence of infringing upon industrial property rights without the need for the victim's request and amend Clause 8, Article 157 of the CPC in the direction of abolishing the reference to Article 226 of the Penal Code to remove grounds not to prosecute criminal cases in cases of crimes specified in Clause 1, Article 226 of the Penal Code stating that no instition of crime cases without the complaint made by the victims or victims' representatives.[3]

Does Abolition of Criminal Prosection Relied Upon the Victim’s Request Infringe Upon the Victim’s Private Prosecution Right?

Criminal measures applicable for intellectual property crimes, according to our research, seem to be currently only set out in three Free Trade Agreements (FTA) that Vietnam has signed and is obliged to comply with, specifically Article 61 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), Article 18.77 of the CPTPP and Article 11.74 of the Regional Comprehensive Economic Partnership (RCEP). Criminal sanctions in these FTAs that are required to be transposed into national law have the same features as criminalizing knowing acts of trademark counterfeiting and copyright piracy on the condition that the criminal consequence was proved to be on a commercial scale.

Vietnam already transposed its commitment into at Article 225 – Offence of infringing upon copyright and related rights, and Article 226 – Offence  of infringing upon industrial property rights in the 2015 Penal Code as revised but expanded to include new objective of the crime as fake geographical indication.[4] Both crimes require the satisfaction of all 3-constituent elements of the crime: (a) the individual commited the act with intentional fault; (b) the matter being infringed is the act of reproduction or distribution of copyrighted work, phonogram, video recording, or the matter being violated  as counterfeit  mark goods or goods bearing fake geographical indication; and (c) the commercial scale of the act (e.g., infringing goods valued at over 100 million VND for copyright/related rights, or 200 million VND or more for goods bearing counterfeit trademarks or geographical indications)

Clause 1, Article 226 of the Penal Code provides for that only when there is the request for prosecution by the victim or the victim's representative, institution of crime cases may be commenced. Thus, according to this provision, if the commercial scale of the crime falls into the aggravating circumstances in Clause 2 (such as the value of infringing goods from VND 500 million or more), the procedure conducting bodies will still act upon their own initiative to prosecute the criminal case regardless of whether the victim made any claim  for prosetion or not. The spirit of point g, clause 6, Article 18.77 of the CPTPP does not force the proceedings-conducting agency to actively prosecute when there is no request for prosecution of the stakeholder, but only recommends that Vietnam can choose to take the initiative to prosecute without the need for a request by the victim. Therefore, page 2 of the draft report assessing the impact of the policy in the proposal to develop a law amending and supplementing a number of articles of the Criminal Procedure Code No. 101/2015/QH13 of the People's Procuracy The Supreme Court wrote that "the provisions in Clause 1, Article 155 and Clause 8 of Article 157 of the CPC are not compatible with point g, Clause 6, Article 18.77 of the CPTPP Agreement" is not really accurate.

Nevertheless, regardless of our comments in the above paragraph, we still support the opinion of the Supreme People's Procuracy on choosing option 2 in the Impact Assessment Report and the Report to the National Assembly Standing Committee to propose that the prosecution should be based on the victim's request for an offense under Clause 1, Article 226 of the Penal Code because the prosecution of a criminal case which requires to have the victim’s request including Clause 1 Article 226 the legislation in nature protects the right to private prosecution (quyền tư tố),[5] specifically the victim’s rights to physicality, mentality, honor and dignity. The removal of the victim’s request as a basis for criminal prosecution under Clause 1 Article 226 of the Penal Code, in our opinion, does not have a negative impact on physicality, mentality, health, honor and dignity of the victim. In other words, the Supreme People's Procuracy’s proposal to amend the Criminal Procedure Code does not infringe on the right to private prosecution. On the other hand, the current situation of IPR infringement in Vietnam has caused a lot of concerns,[6] while the administrative sanctions are considered too light and not enough to deter those who carry out the act of production and trafficking in goods bearing counterfeit trademarks or forging geographical indications. In conclusion, prosecution against a criminal case under Clause 1 Article 226 of the Penal Code without the need for a claim by the victim is reasonable, which contributes to generate a healthy and fair business environment for the Vietnamese business community.

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.

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