Decree Makes IP Regime “Easier, More Effective”

19 December 2012

Decree 97, effective November 9, 2010, makes Vietnam’s IP regime “easier and more effective,” according to a news alert issued by IP specialist Rouse.

The firm clarifies the meaning of “causing damage” under the IP law, where it is necessary to prove that an infringement “causes damage to consumers, society and the IP rights owner.” Rouse lawyers note that “no guidance is provided as to whether it is necessary to establish actual damage or sufficient to show a likelihood of damage.” Decree 97 does provide that all infringements automatically cause damage and that rights owners no longer need to prove damage when seeking administrative action.

The decree also allows rights holders to once again obtain expert opinions from Vietnam’s National Office of Intellectual Property (NOIP). “Prior to the Intellectual Property Act 2005 (2005 Act), an IPR holder could seek expert opinions on infringement from the National Office of Intellectual Property (NOIP), the country’s most knowledgeable IP body,” Rouse lawyers said. “Since 2005, however, only independent IP assessment agencies have been authorized to provide expert opinions, and only one of these has been licensed: the Vietnam Intellectual Property Research Institute (VIPRI). Reinstating the NOIP’s ability to provide expert opinion should help speed up the enforcement process.”

Decree 97 also creates “penalty bands” based on the type and value of the infringing goods, with a maximum fine of VND500 million (US$25,000). Rouse lawyers believe that “it is questionable whether an appropriate fine can be determined on the basis of either the value of infringing goods (which often have little or no value), or the ‘seriousness’ of an infringement.”

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