New Customs laws protect IP
By Chris Vale and Hieu Nguyen of Rouse Legal (HCM City Branch) WWW.IPRIGHTS.COM
Viet Nam has nearly 60 border gates along its borders with China, Laos and Cambodia – and its sea ports provide access for goods from all around the world.
This means there are many access points into Viet Nam for counterfeit goods and those that infringe copyright. Once inside the country, they must be dealt with by authorities such as the Market Management Bureau(MMB), the police or the courts and this is a heavy burden.
It is far easier to block goods at the borders. Therefore effective Customs control is vital in the prevention of illegal goods flooding into Viet Nam.
While Viet Nam’s Intellectual Property (IP) law has been strengthened in the last few years, until March this year, there was no effective Customs monitoring procedure for it.
Then the Customs Office issued Decision No. 916/QD-TCHQ introducing detailed procedures for monitoring imports and exports. This decision will revitalise border-control procedures. This is great news for intellectual property protection in Viet Nam.
This article reviews how the Customs monitoring procedure operates and proposes some recommendations to holders of intellectual property rights.
In theory, Customs have the power to detain goods infringing any type of intellectual property rights. In practice, however, the Customs monitoring procedure appears to be more suited to detaining counterfeit goods bearing infringing marks only, rather than goods infringing, for example, patent rights. Rights holders who wish to enlist the assistance of Customs must submit a Customs-monitoring application to the provincial Customs office in the region in which it suspects infringing goods are crossing the border.
Where the rights holders suspect borders are being targeted in two or more provinces, they may lodge a single request with the Central Customs’ Anti-Smuggling and Investigation Bureau designating the relevant regions.
The formalities behind lodging a Customs-monitoring application are straightforward. A rights holder must complete an application form and enclose evidence of the holder’s entitlement to intellectual property rights (e.g. trade-mark certificate) as well as guidance on identifying infringing goods.
Customs has one month in which to process the application. Once accepted, the Customs-monitoring application will remain in place for one year from the application date. The application may be renewed annually (by submitting a new application form) for as long as the intellectual-property-rights remain valid. The application may be amended or updated at any time.
Suspension of Customs
On detecting suspected infringing goods, Customs will hold the consignment and immediately notify the rights holder.
The rights holder then has three days in which to request Customs to detain the consignment. A bond must be paid as security in the event that the goods have been wrongly seized and the importer/exporter requires compensation.
Once a bond has been lodged, the consignment will be detained for a 10 day period (extendible for a further 10 days), during which the rights holder must provide evidence that the goods are in fact infringing. The rights holder must also co-operate with Customs in support of any administrative action, or where appropriate, initiate civil court proceedings.
Customs measures do not apply to goods in transit through Viet Nam or goods temporary imported into Viet Nam for re-export.
The large number of border gates throughout Viet Nam, make it imperative to have effective Customs procedures.
While it is possible for rights holders to have a Customs-monitoring application in place at every border gate, this may prove a strain on resources. There are, however, a number of steps that rights holders can take to make best use of this procedure.
First, identify and target the main routes through which infringing goods are entering Viet Nam. Second, work together as much as possible with the relevant Customs offices, sharing intelligence on the source of infringing goods, known infringers and their shipping routes; and third, educate Customs on how to spot and identify infringing goods.
The introduction of the decision is of great benefit to rights holders looking to enforce their rights. These benefits will be magnified even more when Central Customs create a central computerised database allowing officers to cross-check suspected infringing consignments.