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Enforcement of Intellectual Property Rights by Criminal Measure under the Laws of Vietnam

10

SEP

2020

Introduction

The nature of infringement of intellectual property rights is an infringement of civil rights, or infringement of property rights that the Constitution and the laws allow rights holders to protect their intellectual property rights by civil measure including claim for damages. Moreover, infringement of intellectual property rights also means that it violates the law on state management, so violators must also be responsible for administrative sanctions for such violations.

However, administrative sanctions[1] or civil remedies[2] imposed on intellectual property rights infringement may be not sufficient to prevent or remedy consequences associated with infringements of intellectual property rights committed at a serious level, endangering consumers and society such as acts of producing, trading in fake goods, or intellectual property counterfeit goods. Therefore, infringements of intellectual property rights in some cases need to be charged with a crime.

4 Stages of Handling Intellectual Property Crime

The process of handling criminal cases related to intellectual property rights crimes[3] is much more complicated and stringent than the process of handling intellectual property rights infringement by administrative or civil measures. because on the one hand it requires the coordinated participation of many agencies conducting legal proceedings including the Criminal Investigation Agency, the People's Procuracy, the People's Courts, the Criminal Judicial Execution Agency, and on the other hand, it is governed by various laws such as the Criminal Code, Criminal Procedure Code, Law on Organization of Criminal Investigation Agency, Criminal Enforcement Law, Intellectual Property Law, Civil Code, Civil Procedure Code, etc.,

To help readers learn about the process of dealing with a criminal case related to intellectual property crime, we would like to introduce 4 stages of criminal proceedings including (a) instituting a criminal case; (b) investigating a criminal case; (c) prosecuting period; and (d) trial period[4].

  1. Institution of a Criminal Case

Institution of a criminal case is the first criminal proceeding stage whereby the procedure-conducting body has identified a criminal sign (element) derived from one of the six sources of information: (a) the criminal denounciation by an individual; (b) criminal news reported by agencies, organizations, or individuals; (c) criminal news made by the press; (d) petitions to institute by state authorities; (e) the procedure-conducting body directly identifies the signs of a crime; (f) offenders confess[5].

Investigating authorities, within 20 days of receiving denunciations, information, and criminal charges, shall examine, verify and issue one of the following decisions: (a) decision to institute a criminal case; (b) decision not to institute a criminal case; (c) decision to provisionally suspend the resolution of criminal accusations, or decision to suspend handling a criminal case[6].

A decision to institute a criminal case must clearly state the grounds for the instituion, applicable articles and clauses of the Criminal Code. The procuracy must, within 24 hours from the issuance of the decision to institute a criminal case, send the competent investigating authority for investigation.

The procuracy has the right to exercise prosecution rights and monitor the institution of a criminal lawsuit made by the investigating authority, in particular the Procuracy issues a decision to assign procurators to administer the prosecution and investigate the case addressing to the investigating bodies if they assume that the decisions to institute criminal cases are grounded and lawful, or send a written request to the investigating bodies to cancel the decisions to institute criminal cases if they find that they have no grounds[7].

Crimes of intellectual property rights are often instituted and prosecuted based on two main sources of information, including individual accusations and petitions by state agencies. For example, Viet Phap Shal Aluminum Joint Stock Company – the owner of registered trademarks Viet Phap Shal - denounced Viet Phap Aluminum Joint Stock Company - Viet Phap Aluminum Factory that is located in Dich Vong Hau Ward, Cau Giay District, Hanoi and its Branch in Trung Ha Industrial Park, Tam Nong, Phu Tho province already infringed upon the former’s industrial property rights. It should be noted that the denunciation of a crime by the right holder, also known as the request to institute criminal cases at the request of the victim, is a mandatory condition to prosecute a criminal case for an infringement upon industrial property rights under Article 226, while this is not mandatory for infringement of copyright, related rights under Article 225[8].

A State administrative agency which has accepted and is settling by administrative measures against an administrative violation in the field of intellectual property rights may also detect cases with criminal signs and in this case, it is obliged to transfer violation records to the competent authority for criminal prosecution. In civil trials, although it may be rare to transfer the case to the competent authority to consider prosecuting a criminal case, in principle the judge can also actively transfer the file to the competent authority including the Procuracy to consider prosecuting criminal cases against forged evidences in the civil lawsuit with criminal signs[9]

  1. Criminal Investigation Period

Criminal investigation is the second stage of criminal proceedings in which the investigating authority will conduct various legal proceedings to identify criminals, persons committing crimes, compile dossiers, proposal for prosecution such as verification, collection of evidences of crimes, identification of causes and conditions of crimes.

Intellectual property cases are usually investigated by the system of Investigation Agency under the People's Public Security Force, mainly the investigation police system from central to local level including the Investigation Police Bureau of the Ministry of Public Security, the Provincial Investigation Police Agency, District Investigation Police Agency. The organizational structure of these investigating bodies is further subdivided into departments, divisions and teams, for example the Police Department for Investigation on corruption, economy and position crimes (C03) is a department under the Ministry of Public Security’s Investigation Police Bureau, the Police Division for Investigation on corruption, economy and position crimes under under the Provincial Investigation Police Agency (PC03). For instance, in the case of fake Hanoi vodka production according to the allegation of Hanoi Alcohol Joint Stock Company (HALICO) in 2009, the agency competent to conduct a criminal investigation of this case was the Hanoi city Police’s investigation police agency (former name is PC46 now PC03)[10]

Time limit for investigation of criminal cases shall not exceed 02 months for less serious crimes, not more than 03 months for serious crimes, not more than 04 months for very serious crimes and particularly serious crimes counting from the date of criminal institution until to the end of investigation. Where there are grounds to determine the complexity of the case, the Investigation Agency may request in writing the Procuracy to extend the investigation once every 2 months for less serious offenses, twice for each time lasting for not more than 04 months for very serious crimes, or up to four times, each time must not exceed 4 months for particularly serious crimes. Crimes of infringing upon industrial property rights under Article 226 and crimes of infringing upon copyright and related rights under Article 225 are all less serious crimes; crimes of manufacturing and trading in fake goods under Article 192 and crimes of manufacturing and trading in fake goods are food used for feeding animals, fertilizers, veterinary drugs, plant protection drugs, plant varieties and livestock breeds according to articles 195 are very serious crimes; crimes of manufacturing and trading fake goods being medicines, preventive drugs under Article 194 and crimes of producing and trading fake goods as food, foodstuffs and food additives under Article 193 are two particularly serious crimes[11]

The investigating authority shall issue a decision to institute the accused if there are sufficient grounds to determine whether a person or legal entity has committed acts prescribed by the Penal Code as a crime. Investigation authorities, within 24 hours from the issuance of the decision to institute a charge, must submit the decision to institute along with institution documents to the Procuracy of the same level for consideration and approval. The procuracy, in 03 days upon receiving the decision to institute the accused, must decide to approve or cancel the decision to institute the accused or request additional evidence and documents as a basis for decide the approval, and immediately send it to the Investigation Agency. After receiving the procuracies' decisions to approve the decisions to institute criminal proceedings, or the decisions to institute criminal proceedings against the accused issued by the procuracies, the investigating bodies must immediately hand over the decisions to institute the accused and the decisions to approve the decisions to institute the accused and it shall explain the rights and obligations of the accused. After receiving the decision to approve the decision to prosecute the accused, the investigating authority must take photos, make a list, show the copy of the person charged and put it in the case file[12].

A series of proceedings after the institution of the accused is conducted by the Investigation Agency, including summoning and interrogating the suspected at the investigating place, the place of residence of suspects, or the detention facility (if the accused held in custody or temporary detention), or at investigating bodies. Depending on the case, the summonsing of testimony of crime victims, litigants may be conducted by the investigating bodies if the testimonies between two or more people conflict with each other. Investigation authorities may also issue search warrants of persons, residences, workplaces, locations, means or seizure of electronic means and electronic data. Due to the complex nature of intellectual property rights, the investigating authority will often solicit a number of types of expertise such as the counterfeit goods inspection, the inspection of detained goods as intellectual property counterfeit goods or just goods infringing industrial property rights, assessing the quality of goods seized, or assessing damage caused by the criminal act of the accused.

Upon ending the investigation period, the investigating agency may issue a decision to temporily suspend the investigation, a decision to suspend the investigation, or a conclusion of the investigation in case of request for prosecution. In case of suspension of investigation, the investigating agency must still issue an investigation conclusion for the case of investigation suspension. Investigation conclusions must be sent to the Procuracies of the same level with the case files, handing investigation conclusions to suspects and defense counsels while victims, litigants and defense counsels of legitimate rights and interests their method, then send notice with investigation conclusion. An investigation conclusion for an investigation suspension is issued when there are grounds to determine that there is no crime, or the act is considered insufficient to constitute a crime, or the victim requires no charge with criminal liability agaisnt for infringement of industrial property rights under Article 226[13], while decisions to provisionally suspend investigations are issued without suspects being identified or unclear where the accused amid the time limit for investigation has expired, or the results of solicitation of expertise or request for referendum of property valuation have not yet come out but the time limit for investigation has expired

  1. Prosecution period[14]

As an independent stage in criminal proceedings, prosecution is featured as the decision of the prosecution agency - the People's Procuracy - after receiving the conclusion on investigation along with a request for prosecution from the Investigation agency. The procuracy must objectively, comprehensively and completely evaluate all existing legal grounds and evidences to issue one of the three decisions: (a) prosecute the accused in court by indictment (conclusion about the crime); (b) return the records requiring additional investigation; or (c) suspend or provisionally suspend the case.

Within 20 days for less serious crimes and serious crimes, 30 days for very serious crimes and particularly serious crimes from the date of receiving the case file and investigation conclusion report, the Procuracy must make one of the above three decisions. In case of necessity, the Procurator General may extend the time limit for deciding to prosecute but not exceeding 10 days for less serious crimes and serious crimes, not exceeding 15 days for very serious crimes. , no more than 30 days for a particularly serious crime.

The indictment sent to the Court by the Procuracy in the event that the Procuracy decides to prosecute the accused before the Court must clearly state the criminal activity and evidence identifying the criminal act of the accused, tricks, motivation, purpose of the crime, nature, extent of damage caused by the crime as well as aggravating or extenuating circumstances of criminal liability, the seizure of exhibits. The indictment must also specify the crime and the applicable articles, clauses and points of the Criminal Code

  1. Trial period

The investigation agency’ investigation conclusion and the Procuracy’s indictments are of a state accusation against the accused so it must be tried by another independent institution, being the Court, to ensure compliance with the constitutional principles stating that the accused must be promptly heard within the time limit of law by the court, fairly and publicly[15].

The Court plays a role as only agency with jurisdiction to consider and bring criminal cases to trial, assess independently, objectively and comprehensively cases before deciding the core issues of whether the accussed is guilty or not guilty[16].

By law, the trial of a criminal case in a court may be a first-instance trial in cases where the Court receives a prosecution decision accompanied by the Procuracy's indictment along with the entire case file, or may be appellate hearing if the first-instance judgment or decision without legal effectiveness has been protested by the Procuracy or appealed by the accussed; or may be trials based on the cassation or reopening procedures to check the legality and ground of a legally effective judgment or decision if such judgment or decision is protested against.

For example, the Procurator General of the Supreme People's Procuracy issued a protest decision no. 28 / QD / VKSTC - V3 against the appellate criminal judgment no. 263 dated May 31, 2010 of the Ho Chi Minh City’s People's Court and the first instance criminal judgment no. 21 of January 22, 2010 of the People's Court of Tan Binh District and requested the Supreme People's Court to hear the cassation review of the above judgments; require the Court of First Instance remand the case in accordance with the law for the reason that the Court of First Instance and Appellate Court based on the valuation amount of VND 149,160,000 by the Appraisal Council within the criminal procedure of Tan Binh district to sanction the accused is not legally correct because the principle of asset valuation should have been made against the valuation of real goods (12,440 ADIDAS branded T-shirts and 2,476 NIKE branded T-shirts) available on the market but not made against the value of counterfeit goods used as a basis for price determination[17]

In theory, decisions of cassation or reopening ruled by the Council of Judges of the Supreme People's Court may still mistake seriously in view of the application of laws or in case of new circumstances that substantially change the contents of the decisions of the Supreme People's Court Judge Council, so the law provides for that where there is the request by the Standing Committee of the National Assembly, the Judicial Committee of the National Assembly, and the proposal by the Procurator General of the Supreme People's Procuracy or by the Chief Justice of the Supreme People's Court, the Council of Judges of the Supreme People's Court must review such decision by opening a meeting with the participation of the Procurator General of the Supreme People's Procuracy and representatives of the National Assembly’s Judiciary Committee[18]

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.


[1] See more “Enforcement of Intellectual Property Rights by Administrative Measures in Vietnam available at the link: http://bross.vn/newsletter/ip-news-update/Enforcement-of-Intellectual-Property-Rights-by-Administrative-Measures-in-Vietnam

[2] With respect to civil remedies, you can more see some of our other articles:

  1. Which Disputes, Infringements of Intellectual Property Rights are Actionable at the Vietnamese Court System?”: http://bross.vn/newsletter/ip-news-update/Which-Disputes-Infringements-of-Intellectual-Property-Rights--are-Actionable-at-the-Vietnamese-Court-System
  2. “Jurisdiction of Vietnamese courts in the civil litigation of intellectual property rights”: http://bross.vn/newsletter/ip-news-update/Jurisdiction-of-Vietnamese-courts-in-the-civil-litigation-of-intellectual-property-rights
  3. “6 Key Features of Liability for Non-contractual Damages Compensation in Vietnam due to Infringement of Intellectual Property Rights Compared to Liability for Non-contractual Damages in the Civil Code”
  4. Standing, Conditions and Evidences in Support of Commencing an Action against an Infringment of Intellectual Property Rights before Vietnamese courts”: http://bross.vn/newsletter/ip-news-update/Standing-Conditions-and-Evidences-in-Support-of-Commencing-an-Action--against-an-Infringment-of-Intellectual-Property-Rights-before-Vietnamese-courts

[3] Intellectual property crime is understood as dangerous acts for society, infringing upon the objective being intellectual property rights protected by the State and laws. Some violations of intellectual property rights that have reached a threshold of danger to society, or got to so-called “on a commercial scale”, may be subject to criminal prosecution. These acts are manifested through the manufacture, sale of counterfeit goods, counterfeit trademark goods or fake geographical indications, or infringing upon the exclusive right to reproduction, the exclusive right to distribution, of the work to the public, of audio records, video recordings that are protected in the form of copyright or related rights. In general, intellectual property crimes may be subject to criminal liability and may be charged with 1 of 6 offenses specified in the 2015 Criminal Code as revised, including:

Article 225 - Crime of infringing copyright, related rights;

Article 226 - Crime of infringing upon industrial property rights;

Article 192 - Crime of producing and trading in fake goods;

Article 193 - Crime of producing and trading in fake goods is food, foodstuffs, food additives;

Article 194 - Crime of producing and trading in fake goods is a curative, preventive medicine; and

Article 195 - Crime of producing and trading in fake goods is food used for raising animals, fertilizers, veterinary drugs, plant protection drugs, plant varieties and animal breeds.

See more “Legal basis of penal liability for criminal offence of infringing upon intellectual property rights according to current Vietnamese laws”: http://bross.vn/newsletter/ip-news-update/Legal-basis-of-penal-liability-for-criminal-offence--of-infringing-upon-intellectual-property-rights-according-to-current-Vietnamese-laws

[4] To learn more about the current situation of intellectual property rights infringement in Vietnam and its current situation for dealing therewith including criminal remedies, please refer to other articles.

Infringement of Intellectual Property Rights in Vietnam and the Current Situation for Dealing therewithat the link: http://bross.vn/newsletter/ip-news-update/Infringement-of-Intellectual-Property-Rights-in-Vietnam--and-the-Current-Situation-for-Dealing-therewith

[5] See Article 143 of the 2015 Criminal Procedure Code

[6] See Article 147 of the 2015 Criminal Procedure Code

[7] See Article 166 of the 2015 Criminal Procedure Code and Article 7 of Joint Circular No. 04/2018 / TTLT-VKSNDTC-BCA-BQP of October 19, 2018 amongst the Supreme People's Procuracy, the Ministry of Public Security and the Ministry of National Defense

[8] See article 155 of the Criminal Procedure Code of 2015

[9] For example, according to Clause 2, Article 103 of the 2015 Civil Procedure Code, in case of forging evidence with criminal signs, the Court shall transfer relevant documents and evidence to the competent investigating agency for consideration. in accordance with the criminal procedure law.

[11] See Article 172 of the 2015 Criminal Procedure Code, Points a and c, Clause 1, Article 9 of the 2015 Criminal Code

[12] See Article 179 of the 2015 Criminal Procedure Code

[13] See Articles 179, 299, 230, 233, 234, 155 and 157 of the 2015 Criminal Procedure Code

[14] See Articles 243 to 249 of the 2015 Criminal Procedure Code

[15] See Clause 2, Article 31 of the Vietnamese Constitution of 2013

[16] See Articles 102 to 106 of the Vietnamese Constitution of 2013

[17] See "Drawing experience from the cassation review of the case Ngo Thi Phuong guilty of manufacturing fake goods (Rút kinh nghiệm qua việc giám đốc thẩm vụ án Ngô Thị Phương, phạm tội: sản xuất hàng giả)" in the link: https://vksndtc.gov.vn/tin-chi-tiet-2712

[18] See Articles 404 to 412 of the 2015 Criminal Procedure Code

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

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