Vietnam Supreme People’s Procuracy: Rising Risk of

Intellectual Property Judgments Being Overturned

Founding Partner Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

In civil and commercial cases where the subject matter of the dispute involves intellectual property rights[1], the People’s Procuracy plays a vital role in supervising and ensuring that the trial panel and the litigants comply with the law. However, according to the Supreme People’s Procuracy’s (“SPP”) own review, the supervision of IP-related cases remains limited, as these cases are complex and the collection and assessment of evidence are particularly challenging. Bross & Partners summarizes the main deficiencies identified in supervision activities that have led to many IP judgments being amended or overturned, as stated in Notice No. 58/VKSTC.

1. Misjudging the Nature of the Infringing Act

A common violation occurs when the first-instance or appellate courts fail to correctly identify the true nature of the alleged act of intellectual property infringement. For example, in the dispute over the domain name “tictours.vn”, the Director of a Tourism Center under Company K (the Plaintiff) unilaterally returned the domain name (which was still valid), and immediately registered the same domain name for Company L (the Defendant), of which he himself was also the Director.

The SPP determined that the Defendant’s conduct constituted “using deceitful means to unlawfully appropriate” and “causing confusion among customers”, since returning the domain name “tictours.vn” without reporting to the General Director of the Plaintiff violated the operational regulations of the subordinate Tourism Center.

Consequently, both the first-instance court (Judgment No. 02/2015/KDTM-ST) and the appellate court (Judgment No. 10/2016/KDTM-PT) were found to have erred in rejecting the Plaintiff’s claim, thereby seriously affecting the Plaintiff’s legitimate rights and interests. As a result, the cassation court (Decision No. 11/2019/KDTM-GDT) annulled all lower judgments for retrial. The core lesson here is that judicial authorities must examine the overall intent, purpose, and actual consequences of the Defendant’s conduct rather than relying solely on formalities.

2. Failure to Assess the Legality of Expert Conclusions Requested by a Party

In a patent infringement case where MSD (Plaintiff) sued DVP Company (Defendant), the case file showed that in September 2014, MSD discovered that the Defendant’s pharmaceutical products Zlatko-100 and Zlatko-50 contained the active compound Sitagliptin phosphate monohydrate, which fell within the protection scope of Patent No. 7037, owned by the Plaintiff.

The Plaintiff requested an expert opinion (Kết luận giám định), and on October 22, 2014, the Vietnam Intellectual Property Research Institute (VIPRI) issued Expert Conclusion No. SC008-14YC/KLGD, finding that the Defendant’s drug products overlapped with Patent No. 7037. The Inspectorate of the Ministry of Science and Technology also concluded that the Defendant had infringed the said patent. Consequently, the Plaintiff filed a lawsuit requesting the Defendant to cease the infringement, compensate for damages, recall the infringing drugs, and issue a public apology.

However, SPP found that the first-instance court relied solely on the expert conclusion obtained at the Plaintiff’s request to establish infringement, which lacked legal basis and objectivity because the expert conclusion itself contained several violations, namely:

• The Plaintiff requested the expert opinion without providing samples for analysis (a violation of Decree No. 105/2006/ND-CP);
• The expert conclusion failed to determine identity or equivalence between the Defendant’s products and the claims of Patent No. 7037 because no actual sample was obtained;
• The first-instance court refused the Defendant’s request for expert opinion once again (violating Articles 92(2) and 102 of the Civil Procedure Code 2015).

3. Courts Issuing Unenforceable Judgments and Other Procedural Errors

In many other intellectual property (IP) disputes, plaintiffs often request that the court compel defendants to recall and destroy all infringing products. For instance, in the aforementioned case where MSD (Plaintiff) sued DVP Company (Defendant), the first-instance court ordered: “The Defendant, DVP Company, must recall and destroy all Zlatko-branded pharmaceutical products…”

However, since many of these products had already been distributed, used, or sold across multiple locations, they were no longer capable of being recalled. Therefore, the court’s acceptance of such a request rendered the judgment unenforceable, which ultimately led the appellate court to annul the first-instance judgment for retrial.

In several other IP cases, courts also committed procedural errors by refusing the defendant’s request (typically a pharmaceutical importer) to include the foreign manufacturer—which had a representative office in Vietnam and produced the imported drug—in the proceedings as a party with related rights and obligations. The courts justified this refusal on the ground that the plaintiff had only sued the defendant importer, not the foreign manufacturer. This reasoning was found to violate Article 68 of the 2015 Civil Procedure Code.

Lessons Learned

The Supreme People’s Procuracy assessed that IP cases are becoming increasingly complex, requiring prosecutors and courts to pay close attention to the timing of disputes and apply relevant legal provisions accurately—such as Article 464 of the Civil Procedure Code 2015 on disputes involving foreign elements, and specialized laws including the Law on Intellectual Property, Decree No. 65/2023/ND-CP, and Decree No. 17/2023/ND-CP.

Regarding expert conclusions, SPP emphasized the need for strict supervision over the assessment of their legality, procedural compliance, the relevance, and completeness in accordance with the Law on Judicial Assessment, as well as IP- and copyright-related laws such as the Law on Intellectual Property, Decree No. 105/2006 (now replaced by Decree No. 65/2023), Decree No. 17/2023, Circular No. 02/2019/TT-BVHTTDL, and Circular No. 03/2021/TT-BVHTTDL. In cases where no expert conclusion has been issued, the Procuracy advised that courts must first determine whether sufficient grounds exist to adjudicate the case.

Finally, the Procuracy noted that in many cases, the disputed subject matter was not eligible for protection, and thus the conduct did not constitute IP infringement. Examples include purely factual news reports that lack creativity, or cases of legitimate use of related rights where no authorization or remuneration is required—such as reasonable quotation or personal reproduction of part of a performance, sound recording, or video recording for scientific research or personal study and non-commercial purposes, as permitted under Article 32 of the Law on Intellectual Property.

Bross & Partners, a Tier 1-ranked intellectual property law firm by Legal 500 Asia Pacific, has extensive experience in strategic IP litigation, cross-border enforcement. Please contact:
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