[PART 1] - Defining Boundaries and Criminal Liability in Overlapping Cases between Counterfeit Goods Offences and Intellectual Property Infringement Offences

Founding Partner Le Quang Vinh - Bross & Partners

Email: vinh@bross.vn

This article analyzes the difficulties in determining criminal charges for acts of producing and trading in counterfeit goods that simultaneously infringe intellectual property (IP) rights under the 2015 Penal Code of Vietnam (PC 2015). The problem arises due to the difference in the object of infringement (tangible vs. intangible) between the two groups of offences, leading to “competing offences” in practice. The article proposes two solutions: first, to improve the legal guidelines to clarify overlapping situations; second, to establish exclusionary provisions by incorporating Articles 225 and 226 into Clause 1 of Articles 192–195. This solution aims to address an offence act against multiple legal interest and ensure full criminal liability for both offences. This article was originally published on Tòa án nhân dân điện tử (the online Journal of the Supreme People’s Court of Vietnam) on September 11, 2025. Due to its length, the author has divided the article into three parts for readers’ convenience.

1. The Necessity of Defining Boundaries in Overlapping Cases of “Counterfeit Goods” and “IP Infringement”

Counterfeit goods and IP-infringing goods are a serious problem, causing significant damage to the economy and consumers. Counterfeit goods are becoming increasingly sophisticated, especially through e-commerce, posing challenges for law enforcement. Penal Code of 2015 as revised (“PC 2015”) stipulates a separation between the group of “producing and trading counterfeit goods” offences (Articles 192–195) and the group of “IP infringement” offences (Articles 225–226), reflecting a strict criminal policy to protect economic order, consumer rights, and IP rights, in line with international commitments.

However, when a single act simultaneously satisfies the elements of both offences, the overlap creates “competing offences” and generates a “grey area” in criminal prosecution. Judicial practice has shown confusion and inconsistency in determining offences, affecting fairness and deterrence.

2. The Root Cause of the Difficulty in Determining Offences: Difference in the Object of Infringement (Tangible vs. Intangible)

To fully understand the complexity of determining offences, it is necessary to distinguish the legal nature and protected objects of these two groups of offences, especially the difference in the object of infringement. This is the root cause of the overlap and competition, creating challenges in correctly determining the offence.

2.1. The Group of “Producing and Trading in Counterfeit Goods” (Articles 192, 193, 194, 195 PC 2015)

This group of offences protects an independent legal object: economic management order and consumer rights regarding product quality. The criminal act directly affects a tangible object, namely the physical goods themselves. For example: a person who counterfeits medicines, infant formula, or functional foods. Such acts falsify the quality and function of products, directly harming consumer health and disrupting the market. Even if the products do not bear any trademark, or the trademark affixed is not protected, the act still constitutes the offence under this group.

It should be noted that the definition of “counterfeit goods” has undergone an important change when Decree 98/2020/ND-CP[1] removed “IP-infringing goods” from the definition. This change reinforces the view that IP infringement is no longer considered “counterfeit goods” under administrative law criteria, but it creates inconsistency between administrative and criminal law, making unified offence determination difficult.

2.2 The Group of “IP Infringement Criminal” (Articles 225, 226 PC 2015)

This group of offences protects a completely different legal protected object: intellectual property rights, an intangible asset. However, the criminal act does not directly affect this intangible object. Instead, it acts upon a tangible object—physical products or copies containing IP rights—in order to infringe upon the intangible legal protected object.

For example: a person unlawfully reproduces film DVDs, computer software, or produces products bearing counterfeit famous trademarks that have been protected, such as Louis Vuitton, Chanel, Nike. Even if the physical products are of guaranteed quality, the unauthorized use of a trademark on such tangible goods constitutes infringement of the trademark owner’s rights, causing damage to reputation and goodwill.

2.2.1. The Legal Nature of Copyright and Related Rights (Article 225 PC 2015)

Author’s right includes both moral rights and economic rights attached to a work. Independent of author’s right, related rights (neighboring rights) are also protected provided they do not prejudice author’s right. These include moral rights (for performers only) and economic rights attached to performances, sound recordings, video recordings, broadcasts, and encrypted satellite signals. The beneficiaries are performers, producers of sound/video recordings, and broadcasting organizations[2].

The legal nature of author’s right and related rights is the exclusive right to exploit or prevent others from making copies, distributing works, recordings, and also the exclusive right to control whether the work, recording, or broadcast is published, edited, quoted, transmitted, performed, or altered without authorization.[3]

It should be noted that the legal interested protected under Article 225 PC 2015 does not include any moral rights of author’s right or related rights. The scope of protection is very narrow—specifically only two economic rights: the right of reproduction and the right of distribution of works, sound recordings, and video recordings. The objects directly affected are tangible entities that embody these protected rights.

Infringement of reproduction right means using any means to duplicate all or part of a work, sound recording, or video recording without authorization. Infringement of distribution is typically understood as selling, leasing, or transferring ownership of the original or copies of these objects in tangible form[4].

However, the language of “reproduction” in Article 225 PC 2015 risks being interpreted too broadly. Article 213 of the IP Law defines three types of counterfeit IP goods: counterfeit trademarks, counterfeit geographical indications, and pirated copies. “Pirated copy”[5] is defined as a copy made without authorization of the copyright or related rights owner. Yet Clause 1(a) Article 225 PC 2015 does not reuse the term “pirated copy” but merely provides “reproduction of works, sound recordings, video recordings,” which risks misunderstanding reproduction as including any copying, whether partial or whole. Consequently, even reproducing a small part of a work (e.g., 10 pages out of 100) or a short segment of a recording (2 minutes out of a 60-minute recording) could be deemed “reproduction” subject to criminal liability. This creates the risk of over-criminalization, especially when the act has not reached the necessary threshold of seriousness.

2.2.2. The Legal Nature of Industrial Property Rights (Article 226 PC 2015)

Trademarks and geographical indications (Gis) are two forms of industrial property (IPR) protection, alongside patents, utility solutions, industrial designs, trade names, well-known trademarks, trade secrets, and protection against unfair competition.

A trademark is a sign (including sound marks) used to distinguish goods and services of different business entities. Trademark rights (except for well-known marks) arise only upon issuance of a protection title by the IP Office of Vietnam (VNIPO) and are valid from the date of grant for 10 years from the filing date. A geographical indication identifies the geographical origin of products from a particular area, locality, territory, or country. It is protected if: (1) the product originates from the corresponding geographical area; and (2) the product’s reputation, quality, or characteristics are essentially attributable to its geographical origin. GIs are protected indefinitely upon registration[6].

Criminal law does not address ordinary infringements of industrial property rights, nor rights relating to patents, utility solutions, industrial designs, trade names, well-known marks, trade secrets, or unfair competition. Thus, distinguishing between ordinary infringement and counterfeiting is the mandatory threshold for criminal liability.

To determine whether an act constitutes trademark or GI counterfeiting under Article 226 PC 2015, it must satisfy the definition under Article 213 of the IP Law. Generally, an act is considered counterfeiting if all four conditions are met:

(a)     The suspicious sign is used for goods;

(b)    The suspicious sign is identical or indistinguishable to a protected trademark or GI;

(c)    The trademark or GI in question is under valid protection; and

(d)    The suspicious trademark or geographical indication must be in use and affixed to the exact type of goods that are subject to the counterfeiting.

If any of these four conditions is not met, there are no criminal signs under Article 226 PC 2015. In such cases, the expert conclusion (trademark or GI counterfeiting element assessement conclusion) on trademark or GI counterfeiting—an essential constituent element—plays a decisive role in establishing evidence for prosecution.

Trademark or GI counterfeiting is always deemed an infringement of protected industrial property rights, but ordinary infringement does not necessarily amount to counterfeiting. This means that acts of trademark or GI ordinary infringement, even with goods worth tens of billions of VND, cannot be criminally prosecuted but are only subject to civil or administrative remedies.

Conclusion of Section 2: The fundamental difference in the object of infringement – tangible for counterfeit goods and intangible for intellectual property rights – is the root cause explaining why these two crime groups are independent in nature regarding their protected legal interests, despite having overlapping acts in practice (creating an area of intersection).

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, and advising on legislative and institutional reform. Please contact:
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