Trade Marks & Copyright 2024 Comparisons

As a civil law country, Vietnam does not recognise common law trade marks or copyright. Some of the principal laws and legislation governing trade mark and copyright are as follows:

• Law on Intellectual Property of 2022 (the “2022 IP Law”) in force from 1 January 2023;
• Civil Proceeding Code of 2015 (the “2015 CPC”);
• Civil Code of 2015 (the “2015 Civil Code”);
• Law on handling of administrative violations of 2012 as revised up to 2020; and
• Criminal Code of 2015 as revised (the “2015 Criminal Code”).

Subsidiary legislation guiding the 2022 IP Law is as follows:

• Decree 65/2023/ND-CP on the enforcement of industrial property rights and plant variety;
• Decree 17/2023/ND-CP on the enforcement of copyright and related rights;
• Decree 79/2023/ND-CP guiding the procedure for registration of plant varieties;
• Decree 31/2023/ND-CP on administrative sanction regarding plant varieties;
• Decree 99/2013/ND-CP as revised on administrative sanctions against administrative violations regarding industrial property rights; and
• Decree 131/2013/ND-CP as revised on administrative sanctions against administrative violations regarding copyright and related rights.

With respect to trade mark and copyright, Vietnam is a member of the following treaties and conventions:

• Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPs Agreement);
• Paris Convention for the Protection of Industrial Property;
• Berne Convention for the Protection of Literary and Artistic Works ;
• Madrid Agreement Concerning the International Registration of Marks and Madrid Protocol;
• Brussels Convention;
• Marrakesh Treaty;
• Phonograms Convention;
• Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations;
• WIPO Copyright Treaty; and
• WIPO Performances and Phonograms Treaty.

Basically speaking, provisions in these treaties are no longer self-executing but were transposed into domestic laws for the purpose of implementation.

The 2022 IP Law and its subordinate legislation govern the rights of foreign trade mark or copyright holders in Vietnam (see 1.1 Governing Law).

The following types of trade marks are afforded protection:

• sound mark;
• trade mark;
• service marks;
• design marks;
• trade dress;
• collective marks;
• certification marks;
• product design;
• product packaging;
• surname; and
• geographic indicators.

However, product design, product packaging, and geographic indicators may be unlikely to be registrable due to their nature of weak distinctiveness or geographical descriptiveness. Geographic indicators can apply for registration in the form of certification mark, collective mark or geographical indication (GI) if the applicant is considered qualified and products bearing these geographical indicators have reputation or unique characteristics. Nevertheless, in practice registration may be difficult for product design and product packaging since they are generally considered to be 3D trade mark (shape marks) and usually fall into one of three functionality-based reasons for rejection:

• generic configuration or common configuration of a part of the goods;
• merely consisting of the shape of the commodity necessary for obtaining technical effects; or
• the need to give the goods substantive value.

An industrial design may be registered in the form of 2D or 3D trade mark on the condition that it has distinctive character or has acquired secondary meaning.

Any marks that are visible or invisible (eg, sound mark – but scent mark is not registrable), embodied in letters, words, designs, images, shapes, colours or combination thereof are registrable if they have distinctive characters and are not confusingly similar to earlier registered trade marks. However, marks that are merely presented in non-Roman characters (eg, Chinese, Japanese, Korean, Thai scripts) are not entitled to protection, while other types of non-traditional marks, namely 3D mark, position mark, series mark, trade dress (get-up) may be protected in some limited cases. Other types of special marks (eg, collective marks, certification marks, geographical indicators) are registrable subject to their compliance with corresponding requirements applicable to them.

Vietnam does not provide special protection over other special marks in a way different than for ordinary marks: eg, the term OLYMPIC is registrable as an ordinary mark.

A trade mark that is well known outside Vietnam can be protected without using, filing or registration in Vietnam on the condition that it must be widely known by the relevant public in the territory of Vietnam. However, a person claiming their trade mark as famous has the obligation to prove that it has satisfied all or some of the eight-point criteria for recognition of famous trade marks under Article 75 of the 2022 IP Law:

• number of relevant public having knowledge of the trade mark through sale or advertisement;
• scope of territories where goods bearing the trade mark have been circulated;
• turnover of goods/services bearing the trade mark;
• time of continuous use of the trade mark;
• wide prestige of goods/services;
• number of countries recognising the trade mark as well known;
• transfer price; and
• value of investment capital contribution.

Not all marks (signs) are accepted for registration as trade marks. To be protected, a mark must satisfy two conditions:

• it must be inherently distinctive, eg, neither descriptive nor deceptive of ingredient, usage, function, or other characteristics of goods or services; and
• it must also not conflict with another’s prior rights, eg, no likelihood of confusion with another’s earlier registered trade mark.

Use in commerce of a trade mark is not required at the time of filing or renewal.

In some exceptional cases, an applied-for mark that lacks distinctive features may be deemed to have become distinctive in character through proof of acquiring distinctiveness (secondary meaning). To prove acquired distinctiveness, the following conditions must be met.

• Evidence of extensive use of such mark, consisting of:
1. number of relevant consumers aware of the mark;
2. time of commencement of the mark;
3. scope, and extent of use prior to the filing date; and
4. turnover from sale of goods/services bearing the mark.
• The mark has been used and is being used as a trade mark and it has been widely recognised by consumers that the mark has acquired distinctiveness for designated goods/services before the filing date.
• Extensive use means constant and popular use in the legal production, trading in, advertising or marketing of the mark.
• Secondary meaning is not applicable to, eg, any mark whose use is so popular and common that it has become a generalised mark, or a generic term.

Except for a trade mark recognised as well known, Vietnam grants protection to the earliest filed trade mark only, and after such trade mark has been granted a certificate of trade mark registration. An owner of a registered trade mark has three types of rights:

• to exclusively use or permit others to use the registered trade mark for designated goods/services in commerce;
• to prevent others from using the registered trade mark for designated goods/services in commerce; and
• to dispose of the registered trade mark (eg, relinquishment, assignment, inheritance).

Vietnam recognises an anti-circumvention right, as stipulated at Article 11 of the WIPO Copyright Treaty, but such right is merely applicable to fight against the infringement of technological measures in protecting copyright and related rights.

The trade mark owner is obligated to continuously use their registered trade mark, otherwise the trade mark registration is vulnerable to invalidity due to non-use by a third party. The use of a trade mark by the licensee under a trade mark licence contract is also considered to be use of the trade mark by the trade mark owner.

Use of a trade mark involves the following:

• attaching a registered trade mark to goods, goods packaging, business vehicles, services facilities, and transaction documents in business activities;
• sale, offer for sale, advertisement for sale, display for sale, store for sale, transporting goods bearing the registered trade mark; and
• importing goods or services bearing the registered trade mark.

The plaintiff has no obligation to prove that the defendant’s use of the infringing trade mark is purely descriptive. However, where a defendant has established that their use of a trade mark is purely descriptive then they have a defence that their use of the accused trade mark is not considered as a trade mark infringement under Article 125(2)(h) of the 2022 IP Law.

A trade mark owner may use the symbol ® or other expressions in words to denote that their trade mark is registered on goods/services but only when such trade mark has been granted in Vietnam. Although no relevant provision is available for asserting common law right through use of the TM symbol, it is possible to adopt the TM symbol on goods/services in practice. Failure to comply with this rule can result in the imposition of an administrative fine up to VND20 million. In addition, a licensee (in case of a signed trade mark licence agreement) may be fined up to VND20 million for failure to show information or indication on their goods denoting “goods manufactured under trademark licence of…”.

Apart from being protected against a trade mark infringement via civil proceeding or administrative measure, a registered trade mark can be protected by copyright (exactly authors’ rights), eg, a registered trade mark itself can be a copyrightable art of applied work as the law does not restrict the dual protection of trade mark and copyright.

Surname can be registrable as a trade mark since surname is not regarded as an excluded sign in relation to protection under trade mark legislation and practice in Vietnam.

By Article 14 of the 2022 IP Law, there are 12 categories of copyrightable works, eg, written works (comics, novels, poems, software), cinematographic works, architectural works, works of applied art (logo, brand identity), etc.

Since an industrial design may be one of 12 types of copyrightable works, it may be entitled to copyright protection.

Copyright is automatically protected regardless of its quality, content and non-registration as long as a work satisfies two conditions: (i) fixed in a tangible medium of expression; and (ii) originality (it was created by the author themself).

Authorship shall be the natural person who directly created the work. Work that is solely created by AI without human authorship is not entitled to copyright protection. Vietnam does not recognise those who support, give comments or provide materials for other persons to create literary and artistic works as authors or co-authors, but only recognises those who directly create the works as authors/co-authors. Vietnam also does not recognise the author as a legal entity, hence, Vietnam does not have the so-called work made for hire, as in US copyright law.

A work which, at the time of publication, does not include the author’s name, including birth name (real name) and pen name, is protected as an anonymous work: the term of protection is 75 years from the time it is first published. For an unpublished anonymous work and when information about the author appears, the term of protection shall be the entire life of the author and 50 years following the year of the author’s death.

Co-authorship is recognised where two or more natural persons directly create a work with the intention that their contributions are combined into a complete whole. Contributions in the form of support, assistance, comments or material provision are not recognised as joint authorship. The exercise of moral rights and economic rights in a co-authored work must be agreed upon by the co-authors, except where the work has separate parts that can be separated and used independently without prejudice to the shares of other co-authors or other laws have different provisions. No provision on ownership percentage is determined for works created by joint authors.

The copyright owner is granted up to six economic rights:

• right of reproduction;
• right of distribution;
• right of communication to the public;
• right of rental;
• right of making a derivative work; and
• right of public performance.

In addition, there are four moral rights individually accorded independently to the author:

• right to name works;
• right of attribution (right of paternity);
• right of publication; and
• right of integrity.

Economic rights in most works are protected for the entire life of the author and 50 years following the year of the author’s death. Except for the right of publication protected in a definite period and alienable like economic rights, the remaining three moral rights are perpetually protected and inalienable.

Vietnam has no provision on synchronisation rights (eg, the right to use a copyrighted piece of music alongside visual or audio-visual materials) distinct from other rights. Therefore, in this case, licence for the use of a copyright piece of music plus visual or audio-visual materials is to be granted by the copyright holder.

All three moral rights, namely right to name works, right of attribution (right of paternity) and right of integrity cannot be terminated; all six economic rights and right of publication are terminated upon the expiry of the term of protection of each work. See further detail at 3.4 Copyright Rights.

Use of the copyright symbol © or the word “Copyright” is not required by law. This means that providing notice of copyright ownership is not a condition for copyright protection.

There are collective rights management systems in Vietnam through the establishment and operation of the accredited collective management organisations (CMOs), namely Vietnam Literary Copyright Center (VLCC), Recording Industry Association of Vietnam (RIAV), Vietnam Center for Protection of Music Copyright (VCPMC), Vietnam Reproduction Right Organization (VIETRRO) and Association for Protection of Performing Artists (APPA). These CMOs, as collective licence bodies, are all non-profit and non-governmental organisations of which operational rules are voluntary, self-managed and transparent. The name of each CMO above denotes its powers and functions in granting a licence.

Copyright registration is not a prerequisite for copyright protection, including where initiating a lawsuit before a court. However, obtaining a copyright registration can bring some benefits, eg, copyright presumed in subsistence, exempting the obligation to prove that one is the copyright owner.

An individual or organisation can register copyright at the Copyright Office of Vietnam (COV) and the copyright register can be searched at the link: Tra cứu niên giám – Cục Bản quyền tác giả. However, only the names of works, authors and copyright owners are retrievable from the copyright register. Where applicants are foreign persons or foreign organisations, they need to register copyright through an accredited copyright representative in Vietnam.

The most essential documents required for registration include:

• certificate of business registration if the applicant is an organisation, or copy of passport/citizen identity card if the applicant is a person (a certified Vietnamese translation thereof is required);
• copy of decision issued by the Board of Members or the Board of Directors on assigning the creation duty to the author, an employee of the company, to create the work;
• notarised deed of assignment signed by all authors (in case of commissioned work) declaring the transfer of ownership to a company, or a notarised certificate of the work subject to an application for registration is created on the employment relation (a certified Vietnamese translation thereof is required);
• print-out of work or object containing the subject of the application for registration;
• a notarised commitment letter made by the author confirming not to infringe the copyright of others; and
• other information – date and place of publication of the work, category of work or related rights to be registered.

A legitimate application for registration along with the required official fee (from 6USD to 30USD depending on the genre of work) shall be submitted to the Vietnam Copyright Office (COV), which will grant a certificate of registration in 15 working days.

An application for registration of copyright or related rights may be rejected by the COV if it is found that the dossier is not legitimate or does not include the essential required documents or that declaration has been made in an incorrect manner. In general, it is not possible to fix incorrect information in the as-filed application, but a new application should be made and newly filed.

The COV may refuse to grant copyright registration if the subject matter seeking registration is not copyrightable or the applicants have no standing to register. The COV’s rejection may be subject to a complaint to its higher authority (the Minister of Culture, Sports and Tourism) or an administrative lawsuit at the court.

A copyrighted work can be also protected as a trade mark if an application for trade mark registration was filed and granted by the Intellectual Property Office of Vietnam (VNIPO). Vietnam has no restriction on dual protection of copyrighted work and trade mark.

Except for a well-known trade mark (if recognised), a trade mark right is established solely on the ground of registration, not on the ground of use in commerce. Obtaining a trade mark registration is crucial because it gives the registrant the right to prohibit others from using identical/similar trade marks designated for competing goods or services. In addition, a registrant of a registered trade mark can avoid legal risks, such as being threatened or sued for trade mark infringement by competitors.

The VNIPO can apply higher standards for non-traditional marks (eg, 3D, trade dress, product configuration) because the distinctive characters of these marks are more difficult to determine. For example, a three-dimensional mark (shape mark) may be protected in Vietnam as long as it does not fall into one of three circumstances:

• generic configuration of the goods/common configuration of a part of the goods;
• merely consisting of the shape of the commodity necessary for obtaining technical effects; or
• the need to give the goods substantive value.

In some cases, the VNIPO may accept secondary meaning if the relevant proof has shown that the distinctiveness of a trade mark was acquired through use prior to the filing date.

There is no separate trade mark register in Vietnam, but only the national register of industrial property (NRIP) is available. The NRIP records the establishment, change and transfer of industrial property rights for invention, industrial design, layout design, trade mark and geographical indication. The NRIP is the paper document kept and updated by the VNIPO and is not searchable online.

Undertaking a search for trade mark availability before filing an application for registration is advisable to avoid VNIPO’s rejection due to the likelihood of confusion with an earlier registered/filed trade mark. Members of the public can access a free-of-charge trade mark database containing all registered trade marks and pending trade marks (only those approved as to formality) at the following links: IP Viet Nam and WIPO Madrid Monitor.

No provision for registration of series marks is available in Vietnam.

A registered trade mark is protected for ten years and perpetually renewable after every ten years.

A registered trade mark shall be renewed six months before it expires. However, a trade mark owner can renew registration after the ten-year term has lapsed on the grounds that a request for renewal along with a fine shall be made within six months after lapse. There is no need to provide any evidence of use with the VNIPO at the time of renewal.

All changes in registrant’s name and/or address or reproduction of trade mark must be updated and approved by the VNIPO through procedures for amendment of registration, or procedure for recordal of assignment.

The following are required in order to make an application:

• name and address of the applicant;
• power of attorney for IP agent;
• reproduction of trade mark; and
• goods/services and classes by Nice classification (multi-class is accepted).

The official fee is about USD43 at application and examination stage and USD16 for grant stage, applicable for one application in one class containing up to six items of goods/services.

Statutorily, it takes about 12–13 months, if neither refusal grounds are found nor opposition submitted by a third party, from the filing date until receiving a trade mark registration, in accordance with the five-step examination process below. However, in reality, the pendency may be prolonged depending on the VNIPO’s workload from time to time.

• Step 1 – filing an application: an applied-for mark lodged with the VNIPO will be assigned an application number and filing date.
• Step 2 – formality examination: a decision on formality acceptance is issued within one month from the filing date.
• Step 3 – publication of application: a formally accepted application is published in the Gazette (Volume A) within two months from the date of the decision.
• Step 4 – substantive examination: both conditions of “inherent distinctiveness” and “no likelihood of confusion” are examined by the VNIPO within nine months from the month of application publication before a notice of grant, along with the grant fee payable within three months, is released by the VNIPO.
• Step 5 – grant of certificate: a trade mark registration will be issued within about one month after the grant fee has been paid by the applicant.

There is no need to provide evidence of use or declaration of intent to use before a registration is issued.

The VNIPO may reject an application for registration if it finds the existence of prior rights in its examination process or if it grants a third-party opposition. The following types of prior rights can be raised:

• earlier registered trade mark;
• registered trade mark but is not renewed more than three years;
• widely used and recognised unregistered trade mark;
• well-known trade mark;
• trade name being used by other;
• registered geographical indication;
• names, images, characters under a copyrighted work that has been widely known prior to the filing date; and
• plant variety denomination.

A letter of consent can be accepted in some limited cases for the purpose of overcoming the VNIPO’s refusal for likelihood of confusion. Nevertheless, the VNIPO would not grant a letter of consent if the rejected trade mark and cited trade mark are identical or closely similar, covering the same kind of goods/services. Vietnam also does not accept assignment-back procedure to surmount a refusal based on the likelihood of confusion.

Any third party, including those without concerned interest, can proceed with:

(i) trade mark opposition procedure,

(ii) third-party observation (TPO), or

(iii) both actions (i) and (ii) in order (early) to bar an applied-for trade mark from registration.

For trade mark opposition procedure, an opposition shall be filed within five months (non-extendable) from the date of application publication against a fee of USD24 per trade mark per class. The VNIPO shall deliver such opposition to be responded to by the applicant (the “Opposed Party”) within two months. Only where the VNIPO itself finds it necessary further to clarify the content of the opposition, or upon request made by both the Opponent and the Opposed Party, will the VNIPO organise an in-person dialogue between the parties.

Where the relevant parties have received the first notice or the second notice without/with the result of the dialogue between the parties (if any), the opposition will be settled, and the Opponent will receive the result of handling of the opposition along with the substantive examination report against the opposed trade mark.

The VNIPO will not accept an opposition, and will issue a notice requesting that the Opponent initiate a civil lawsuit before a competent court, if the content of the opposition is related to rights to register the opposed trade mark (except where it is clear that the applicant does not have the right to register the opposed trade mark, or the opposed trade mark is/contains geographical names, or other signs indicating the geographical origin of local Vietnamese specialties).

The opposition will be considered withdrawn, and the opposed trade mark will continue to be examined as if there was no opposition, if, within two months from the date of notice by the VNIPO requesting the Opponent to file a civil lawsuit, the Opponent has not yet sent to the VNIPO a notice of acceptance of the case by the court. Where a copy of the court’s notice of acceptance is received on time, the VNIPO will temporarily suspend the examination against the opposed trade mark pending the court’s judgment.

For TPO, neither fee nor procedure for TPO is available. This means any third party can send a TPO (like a letter of protest in the US) to the VNIPO from the date of application publication until prior to the date of the VNIPO’s issuance of the grant decision. However, the VNIPO will only consider TPO as a reference source in support of its examination against such objectionable trade mark application. Therefore, unlike trade mark opposition, the opponent who who filed a TPO will not receive any notice from the VNIPO, including the substantive examination report for the contested trade mark.

Any opposition must be accompanied by a legal basis with evidence, documents proving the reason for opposition. Legal bases commonly used in practice include the following.

• The opposed trade mark does not have inherent distinctiveness, eg, descriptive, deceptive, deceptively misdescriptive.
• The opposed trade mark conflicts with one of eight prior rights, as mentioned at 4.7 Consideration of Prior Rights in Registration.
• The opposed trade mark was filed by the applicant without entitlement (without the right to register) or was filed in bad faith.
• The opposed trade mark falls under one of the functionality-based rejections: generic configuration or common configuration of a part of the goods; merely consisting of the shape of the commodity necessary for obtaining technical effects; or the need to give the goods substantive value.

During the registration, the applicant can file a request for amendments or correction if these changes would not change the nature of, or not extend scope of seeking protection for, the initially filed trade mark. Amendment to reproduction of the trade mark as filed may be accepted in limited circumstances (now much more restricted than before). The applicant may revoke (withdraw) the as-filed application or abandon it if they so wish.

Before the VNIPO issues decisions of refusal of acceptance of application, or grant, or confirmation of rejection of grant, an applicant can divide part of the list of goods/services of the current application into one or more new applications called divisional applications. Divisional applications shall be published in the Gazette.

Each divisional application carries a new application serial number and is assigned the filing date of the original application. Filing and other fees shall be paid for each divisional application. Each divisional application is examined as to formality and is handled alongside any other procedure that has not yet finished in the original application.

The applicant, applicant’s representative or complainant shall be liable for all consequences arising from their obligation to ensure that all information and documents in transactions with the VNIPO are honest. The provision of incorrect information in connection with a trade mark application or other filings, if serious (eg, applicant is dishonest, fraudulent, etc) may result in the consequence that the VNIPO shall refuse them, or it can itself withdraw notices or decisions and correct them with re-issued notices or decisions regarding the application.

Applied-for marks can be rejected based on absolute grounds, in particular:

• those identical or confusingly similar to, namely, the national flag, the national emblem of Vietnam and those of other countries;
• symbols, flags, badges, full name or abbreviations of state agencies, social organisations and international organisations;
• real names, nicknames, images of leaders and national heroes of Vietnam and foreign countries;
• certification marks and warranty marks of international organisations requiring that use of them not be permitted;
• those that mislead, confuse or deceive consumers about origin, feature, usage, quality, value or other characteristics of goods/services; and
• those that are generic configuration or common configuration of a part of the goods, or merely consist of the shape of the commodity necessary for obtaining technical effects.

Refusal based on absolute grounds can be overcome in some limited circumstances, eg, the applicant obtained consent from the relevant government or international organisation, or the applicant’s 3D mark acquired distinctiveness through use.

An applicant can respond to the VNIPO’s rejection within three months (one-time request for three-month extension of time allowable) by arguing that the trade mark seeking protection is not confusingly similar to the cited trade mark or by providing more evidence proving that no likelihood of confusion exists. Upon receipt of the applicant’s dissatisfactory response, if the VNIPO upholds the initial refusal by issuing its decision confirming the refusal, the applicant can make an appeal to VNIPO’s board of appeal, a division independent from the Trademark Examination Center that rejected the trade mark, within a period of 90 days (cannot be extended) or initiate an administrative lawsuit at the administrative court under the law on administrative proceedings.

Vietnam is a member of the Madrid system comprising the Madrid Agreement (MA) and the Madrid Protocol (MP). Therefore, applicants who bear nationality of the country of origin which is a member of only MP can still use the Madrid system to register their trade marks in Vietnam. There are some practical requirements that applicants should know, as follows.

• The fee for international registration of a trade mark designating Vietnam is significantly different from the fee for national registration in Vietnam (see 4.5 Application Requirements), ie, only a complementary fee of CHF100 for up to three classes is payable for Vietnam if the applicant bears the nationality of a country of origin that is member of both MA and MP. Where the applicant bears the nationality of a country of origin that is member of MP only, an individual fee of CHF142 for each class of goods/services is payable for Vietnam.
• Using a letter of consent to overcome the VNIPO’s refusal for likelihood of confusion has become much more difficult than before.
• Vietnam accepts both certification trade marks and collective trade marks but the regulations governing the use of such trade marks in Vietnamese must be received by the VNIPO either after it has received the notification of designation in the international registration, or before a provisional refusal has been issued, or after a provisional refusal has been issued.
• The holder or third party must respond to the VNIPO’s provisional refusal through a licensed local representative.

Any third party can file an opposition within five months (non-extendable) against a trade mark application. Besides, any third party can submit a TPO from the date of application publication until prior to the date of the VNIPO’s issuance of the grant decision. No cooling-off period is permitted. However, during the opposition, the applicant and the opponent can proactively settle the dispute in an amicable manner by the opponent’s opposition withdrawal. See detail at 4.8 Consideration of Third-Party Rights in Registration.

With respect to the legal grounds for filing an opposition to a trade mark application, please refer to 4.8 Consideration of Third-Party Rights in Registration and 4.12 Refusal of Registration.

No dilution concept is included in the 2022 IP Law. However, an opponent may use prior rights (eg, famous recognised trade mark) as legal ground for opposition or civil lawsuit commencement because, upon the prior right as well-known trade mark being recognised, the opposition or lawsuit can defeat the opposed trade mark even though it is designated or used for dissimilar goods/services.

As mentioned at 5.1 Timeframes for Filing an Opposition, any third party can file an opposition. However, an opponent who is a foreign person or foreign entity without commercial presence in Vietnam needs to appoint and be represented by local attorneys who are licensed to practise before the VNIPO. The attorney’s fee will vary depending on the difficulty, amount of relevant evidence and attorney’s time involved but on average it may cost from USD250 to USD1,000D, or higher.

Neither discovery nor hearing is held by the VNIPO in order to decide an opposition. In settlement of an opposition, the VNIPO will issue a notice of handling of opposition along with the result of substantive examination of the opposed trade mark. See detail at 4.8 Consideration of Third-Party Rights in Registration.

An applicant or third party with rights and interests directly related to the VNIPO’s decisions or notices with respect to all industrial property procedures (eg application for establishment of trade mark right, amendments, renewals, validity termination, validity cancellation, etc) has the right to choose either to file a complaint to VNIPO or its superior agency or to initiate an administrative lawsuit before an administrative court under the Provincial People’s Court within the period of one year.

Where an applicant chooses to bring a lawsuit, the applicant must include in the pleadings an undertaking not to simultaneously complain to the VNIPO to resolve the same case. Where the plaintiff does not have a place of residence or head office in Vietnam, the jurisdiction to resolve the case at the first-instance court belongs to the administrative court under the Hanoi People’s Court. Where the plaintiff has a place of residence or head office in Vietnam (eg, Ho Chi Minh city), the court with jurisdiction would be the administrative court under the Ho Chi Minh City’s People’s Court.

Along with the petition or during the process of resolving the lawsuit, litigants may request that the court apply provisional emergency measures (injunction relief), eg, a request for suspension of the implementation of the administrative decision if there are grounds to believe that the implementation of that decision will lead to serious irreparable consequences.

In general, key issues (eg, first instance and appeal trials, trials having people’s jurors at first instance, rights to change or supplement the contents of the lawsuit, claim for compensation for damage caused by the administrative decision, etc) in administrative proceedings are basically the same as those in civil proceedings.

The statute of limitations for filing a cancellation proceeding before the VNIPO is five years, calculated from the date of grant of protection of a trade mark. However, no statute of limitations is applied where the applicant filed an application for registration in bad faith.

No provision on the statute of limitations is available in the 2022 IP Law for a request for revocation of a certificate of copyright registration or certificate of related rights registration.

For a registered trade mark, legal grounds for its valid cancellation include the following.

• The applicant filed an application for registration in bad faith.
• The applicant does not have the right to register and has not been assigned the entitlement to register such trade mark by the person who has the right to register.
• An applied-for trade mark does not meet the protection conditions (eg, it is descriptive, deceptive or conflicts with prior rights including prior registered trade mark, well-known trade mark, widely used and recognised unregistered trade mark, industrial design, trade name, copyright).

For a work granted a certificate of copyright registration, the COV shall issue a decision on cancellation of certificate of copyright registration or certificate of related right registration if it receives one of two documents:

• the court’s effective judgment or decision, or decision of other state agency in charge of IP enforcement, on revocation of the certificate of copyright registration or certificate of related right registration; or
• a request for expungement submitted by the registrant demanding cancellation of the certificate of copyright registration or certificate of related right registration.

In general, any third party can commence cancellation proceedings against a registered trade mark by invoking prior rights, namely prior registered trade mark, well-known trade mark, widely used and recognised unregistered trade mark, industrial design, trade name, and copyright. However, for a petition for revocation of a registered trade mark that was obtained in bad faith, the 2022 IP seemingly implies that the cancelling party shall satisfy the standing requirement, ie, must be a person having concerned interest (eg, through contractual relationship, agent relation or other evidence proving that the applicant knew and should have been known to the cancelling party).

Only a registrant who is granted a certificate of copyright registration or certificate of related rights registration has standing to request the COV to expunge (cancel) a certificate accorded to the registrant. In other circumstances, any third party shall commence a legal proceeding at the court or at IP enforcement agencies (eg, market management forces, customs authorities, specialised inspectorates), asking one of these bodies to cancel the certificate of copyright registration or certificate of related rights registration. As mentioned at 6.4 Revocation/Cancellation Procedure, the COV shall cancel these granted certificates solely based on the court’s judgment or IP enforcement agencies’ decision on cancellation of these certificates.

A request for cancellation of a registered trade mark can be brought before the administrative court (not civil courts), ie, the subject matter of the administrative lawsuit shall be the VNIPO’s decision on the grant of protection of the registered trade mark, within a period of one year from the date of decision.

A certificate of copyright registration or a certificate of related rights registration may be cancelled by the COV within 15 working days from the date of the COV’s receipt of one of two documents: (i) the court’s effective judgment or a decision issued by one of the IP enforcement bodies (market management forces, specialised inspectorates, border customs authorities, etc) demanding its revocation; or (ii) a request for its revocation submitted by the registrant.

A request for partial cancellation is accepted if a part of the title of protection did not meet the statutory provisions on the right to register, protection conditions, first-to-file rule.

In general, it is possible to amend an as-filed cancellation action if there is incorrect information, or explanation/argument is not consistent with the evidence.

Vietnam legislation and the 2022 IP Law do not accept that revocation action and infringement claim be combined and heard/settled together.

There is no special procedure to revoke or cancel registration of copyrights filed fraudulently. For trade mark registration, the VNIPO may itself revoke or withdraw its notice or decision as described at 4.11 Incorrect Information in an Application.

Involved parties can assign a part or whole ownership over copyright or related rights in the form of an assignment contract in writing and the contract will be effective as agreed among the parties without the requirement of registration with the COV.

The assignment contract must include key terms and conditions:

• full name and address of transferor and transferee;
• basis for transfer;
• price and mode of payment;
• rights and obligations of each party; and
• liability for breach of contract.

However, the author or joint author can not assign three types of moral rights, except for the publication right (see more at 3.5 Term of Protection and Termination), performer’s moral rights (to be introduced by name when performance, releasing audio or video recordings or broadcasting the performance; right of integrity) are inalienable.

The 2022 IP law does not recognise any assignee as new owner of an assigned trade mark as long as the trade mark assignment contract signed by the assignor and assignee has not yet been recorded by the VNIPO. Therefore, recordal of the trade mark assignment contract is a required procedure.

A trade mark assignment agreement must be made in writing, including four main items of content:

• full names and addresses of the assignor and assignee;
• grounds for assignment (number of protection titles, date of issue, class, and term of protection);
• transfer price (specific amount in VND required, or free of charge); and
• rights and obligations of the assignor and assignee.

The following documents are required:

• an original copy of registration of trade mark to be assigned;
• an original copy or a certified copy of trade mark assignment contract signed by the assignor and assignee (the parties’ signature must be shown on each page thereof), along with a Vietnamese translation thereof;
• a simple signed power of attorney, in favour of a licensed trade mark agent on behalf of the parties, to proceed with recordal of change in ownership; and
• official fee of USD27 per first registration of trade mark and USD22 per each further registration from the second one.

For a procedure for recordal of change in ownership, upon the examination of the dossier for recordal of change in ownership within two months, if no irregularities are found, the VNIPO shall issue a decision on recordation of change in ownership and endorse the assignee as new owner on the certificate of trade mark registration.

Assignment of trade mark may be restricted, ie a trade mark assignment agreement may be rejected by the VNIPO, if there is ground to believe that such assignment can cause confusion about the characteristics, origin of goods, or services bearing the assigned trade mark. Circumstances of rejection are as follows:

• the assigned trade mark is regarded to be identical with or confusingly similar to the assignor’s other trade mark;
• a part of the list of goods/services bearing the assignor’s assigned trade mark is similar to the remaining list of goods/services bearing the assignor’s non-assigned trade mark and this can cause confusion in terms of origin of commerce; or
• the assigned trade mark contains elements that are marks that confuse or mislead consumers about the origin, quality or value of goods or services with the assignment scope.

A copyrighted work and a registered trade mark can be transmissible upon death (for person) or dissolution (for entity) in accordance with the laws on inheritance.

All trade mark licence agreements must be made in writing and their validity is established based on the agreements between the parties without having to register with the VNIPO. Similarily, copyright licence contracts shall be entered into in writing and there is no need to register with the COV.

A copyright licence contract must include key terms and conditions:

• full name and address of licensor and licensee;
• basis for licence grant;
• price and mode of payment;
• rights and obligations of each party; and
• liability for breach of contract.

To be recognised as a trade mark licence agreement, the basic terms and conditions are as follows:

• full name and address of licensor and licensee, or sub-licensor and sub-licensee;
• basis for licence (trade mark registration number) including sub-licence (if any);
• scope of licence, including the limitations on the right to use and territory limitations;
• form of licence agreement, eg, exclusive licence, non-exclusive licence; sub-licence;
• term of contract (not exceeding term of protection of licensed trade mark);
• price of licence;
• mode of payment; and
• rights and obligations of the parties.

Copyright licence agreements and trade mark licence agreements cannot be perpetual. Their validity shall automatically terminate before a ten-year term of protection of a registered trade mark ends or prior to the expiry of the author’s lifetime plus 50 years following the year of the author’s death (for almost any work). There is no statutory provision on the archival right attaching to a copyright licence.

It is possible to assign an application for a trade mark to another, but such assignment of a pending trade mark application needs to be recorded by the VNIPO to be effective.

Copyright licence contract can be freely established without registration, so the parties can assign a signed licence contract to a third party provided that such assignment does not violate the licensor’s right and/or the copyright owner’s right.

See 7.1 Assignment Requirements and Restrictions and 7.2 Licensing Requirements or Restrictions.

In theory, authors or their heirs can recapture transferred rights for copyrighted works by initiating an inheritance lawsuit according to the legislation on inheritance since copyright is regarded as an asset existing in the form of an inheritable property right. However, no specific provisions on this issue are included in the 2022 IP Law and the 2015 Civil Code.

No security interest is available under the 2022 IP Law and relevant legislation.

Where a request is made for the application of administrative measures against trade mark or copyright infringement, the statute of limitations applicable would be two years calculated from the date on which the administrative violation ended (or the point of time at which the violation is discovered, where the violation is being committed).

For commencement of a civil lawsuit in relation to a damages claim or contractual dispute, the applicable statute of limitations would be three years from the date the person with the right to make a claim knows or should have known that their legitimate rights and interests are being violated. However, the statute of limitations would not apply to filing a lawsuit if the subject of the claim is moral rights not attached to property. Moreover, the court only applies the statute of limitations following a party’s or parties’ request to apply the statute of limitations, and this request must be made before the court of first instance issues a judgment or decision resolving the case.

Legal claims for trade mark or copyright are not the same, although stakeholders can include both in the same petition. However, there cannot be a claim for an unregistered trade mark because it requires valid registration of a trade mark but there is no need for a copyright claim. Direct infringement is actionable in most cases, while it seems that no case has been decided by the court regarding contributory infringement because contributory infringement (secondary liability for intermediaries) was first incorporated in the 2022 IP Law.

Regarding determination of a trade mark or copyright infringement (eg, infringement act and infringement element), see further 8.3 Factors in Determining Infringement and 10.4 Intermediaries.

No dilution by blurring, dilution by tarnishment or cybersquatting concepts are included in the 2022 IP Law. However, a person can claim their trade mark is a well-known trade mark as a precondition to asserting their famous trade mark in a trade mark infringement lawsuit at court. See further 8.3 Factors in Determining Infringement and 2.1 Types of Trade Marks.

Intentionally deleting, removing or changing rights management information without the permission of the author or copyright owner are illegal acts amongst 16 suspected acts by virtue of Article 66 Decree 17/2023, which are regarded as copyright or related rights infringement acts, and subject to administrative sanction or civil liability. See further 6. Trade Mark and Copyright Revocation/Cancellation Procedure and 8.3 Factors in Determining Infringement.

For trade mark, a suspected act is considered to be a trade mark infringement act if (i) unauthorised use of a registered trade mark is determined as an infringement act; and (ii) an infringement element is found in that infringement act.

For copyright, a suspected act is considered to be a copyright infringement act if (i) it falls into one of 16 suspected acts by virtue of Article 66 Decree 17/2023, ie, copying, publishing, distorting, quoting, communicating, or performing a copyrighted work to the public without the author or stakeholder’s consent; and (ii) an infringement element is found in any of these acts.

An infringement act against a trade mark or copyright shall meet all four constitutive conditions:

• the suspected subject is within the scope of a trade mark or copyright protection;
• the infringement element against a trade mark or copyright is found in the suspected subject;
• persons committing the suspected act are not those enjoying exceptions to trade mark or copyright infringement (no fair use); and
• the suspected acts occur in Vietnam, including those on the internet and telecommunications networks in which Vietnamese consumers use digital content in Vietnam.

A trade mark infringement element is found only when (i) a suspected mark is identical with or confusingly similar to a protected trade mark; and (ii) goods/services bearing the suspected mark and protected trade mark are identical or similar. However, even though goods/services are dissimilar, there is a trade mark infringement element in existence, if such protected trade mark is recognised as a well-known trade mark.

For the purpose of determining a copyright infringement element, it is necessary to identify the scope of protection of a copyrighted work based on the form of expression of the original work, as well as reliance upon the character, image, and the form of expression of the character’s personality. In determining an infringing element of a derivative work, it is necessary to consider and compare the images, details of the original work and the derivative work. For a suspected copy, comparison between the suspected copy and original copy of a copyrighted work, and originality of the work, expression of the idea, time of completion of the work and likely access to the original work, etc, must be taken into account.

The following persons or entities can bring a copyright or trade mark infringement to the court:

• right-holder (copyright owners, authors/co-authors);
• trade mark owners;
• trade mark licensees (including non-exclusive licence);
• inheritors; or
• third parties damaged by a copyright or trade mark infringement.

Given that no registration of copyright or related is required as a condition for initiating a lawsuit, it is possible to take legal action to stop copyright infringement. But for an unregistered trade mark, legal action cannot be taken against the infringer, except where a party’s trade mark is in wide use with goodwill or repute or becomes famous.

Third parties may join a copyright or trade mark infringement lawsuit as a person with related interests and obligations if they themselves assert their right to participate in the proceedings or their participation is requested by the litigants and this is granted by the court.

Fundamentally, the Vietnam legal system does not permit representative or collective actions (such as class actions) for trade mark or copyright proceedings. However, under Section 42 of the 2015 CPC, the court may decide to merge different lawsuits initiated by multiple plaintiffs if the claims raised by these plaintiffs are the same and together they are litigating against the same individual defendant or organisational defendant.

The three prerequisites to bringing a trade mark or copyright lawsuit against a trade mark or copyright infringer are as follows:

• standing to sue;
• evidence of infringing act; and
• infringement element.

Formal demands, warning letters, or cease-and-desist letters are not regarded by law as preconditions before commencing legal action. The defendant cannot restrict or hinder the plaintiff’s right to use by merely stating that the plaintiff’s claims are groundless threats or IP misuse.

As a defence action, the defendant can make a counterclaim against the plaintiff’s claims, accusing the plaintiff of IP abuse before the time the court opens a meeting session for checking the handover, access and disclosure of evidence and mediation. In addition, it is worth noting that, according to the 2020 Law on mediation and dialogue at the court, within two working days from the date of receipt of the lawsuit, the court shall notify the plaintiff of the right to choose mediation, dialogue and mediator before it accepts the lawsuit, except where the litigants do not request mediation or dialogue, or one litigant asks for the application of provisional emergency measures. Therefore, pre-litigation mediation (other than litigation mediation) is a required procedure conducted by the court before its acceptance of the lawsuit.

Regardless of a trade mark or copyright infringement, or a trade mark or copyright dispute, it is necessary to determine exactly which court has jurisdiction to accept and hear the case. Foreign trade mark or copyright owners can bring infringement claims before Vietnamese courts. For a copyright lawsuit, there is no need to show certificates of copyright registration granted in any countries, including Vietnam. For a trade mark infringement lawsuit, one cannot sue an infringer for infringement of a trade mark that is not yet registered in Vietnam (except where such trade mark is a well-known trade mark).

The territorial jurisdiction and court-level jurisdiction must be specified. Supposing that an infringer, a company headquartered in Ho Chi Minh City, is infringing a foreign company’s registered trade mark, the first-instance court with jurisdiction to accept and hear the case would be the court where the defendant is headquartered (ie, a court in Ho Chi Minh City), and since such dispute has a foreign element, so the correct first-instance court would be the provincial-level people’s court (ie, only one Ho Chi Minh City’s people’s court). If the first-instance judgment is appealed by litigants, it will undergo second-instance trials by the Ho Chi Minh-based high court (appellate court).

Before filing a trade mark or copyright lawsuit, typical costs would include those for collecting and verifying relevant evidence of infringement acts (eg, making bailiff certificates), sending a warning letter (if chosen), translation and notarisation. Parties can litigate by themselves or through their authorised representatives, or authorised representatives being local lawyers, with/without appointed lawyers of litigants’ legitimate rights and interests. Please note that lawyers of litigants’ legitimate rights and interests differ from lawyers appointed as the litigants’ authorised representatives. IP litigation is usually considered as complex, so local qualified IP lawyers should be appointed.

To be accepted by the court, a pleading (petition) must meet some standards, including provision of the following:

• full name and address of plaintiff and defendant;
• name of competent court;
• specific claims requiring the court to award against defendant; and
• evidence and documents proving plaintiff’s legal rights and interests are infringed.

(See further three prerequisites for bringing a trade mark or copyright lawsuit against a trade mark or copyright infringer at 8.6 Prerequisites and Restrictions to Filing a Lawsuit).

In general, the legal rules applicable for non-intellectual property lawsuits are the same as those applicable for IP lawsuits. Litigants have the right to supplement or change their claims with additional arguments. However, the court or trial panel may reject the changes or revisions if these exceed the scope of initially filed claims, counterclaims or pleadings.

There are no declaratory judgment proceedings under Vietnam laws. Hence, a potential defendant cannot file protective briefs, require a bond to be posted by the trade mark or copyright owner, or start declaratory relief or other proceedings in another court.

To resolve small trade mark or copyright claims, the parties involved may use alternative avenues. For example, they may ask the court to hear the case under simplified procedure conducted by one judge, or the right-holder can request IP enforcement agencies (market management force, specialised inspectorates, border customs authorities, etc) to apply administrative measures against the infringer along with administrative fines and remedial measures. However, use of the simplified procedure requires that three conditions be met:

• the case is simple, with clear legal relation, sufficient evidence and legal grounds;
• identities of litigants, including their headquarters and residence, are clearly identified; and
• no litigant resides abroad, and no disputed property is located abroad.

Decisions or notices issued by the VNIPO are administrative decisions in nature. They may significantly impact on the copyright or trade mark lawsuit accepted and heard by the court. For instance, after a lawsuit is accepted and is being resolved by the court, the trade mark right that is the subject of such lawsuit is cancelled by the VNIPO’s decision in settlement of a trade mark cancellation procedure filed earlier by the defendant or third party. In this case, the court must terminate the lawsuit because the plaintiff no longer satisfies the conditions for legal action commencement. However, a certificate of copyright registration is not an administrative decision.

There are two types of counterfeiting in Vietnam, both of which may bring criminal liability. First, fake commodities are those that have no use value, or their basic quality indicator reached only 70% or less compared with the regulatory standard. Secondly, counterfeit trade mark goods (meaning goods or their packaging on which attached marks, stamps identical with or unlikely to be distinguishable from the protected trade mark are used for the same commodity without the trade mark owner’s consent), and pirated goods, also known as bootleg goods (meaning that copies are produced without the permission of the copyright owner or related rights-holder).

Where a wilful trade mark infringement on a commercial scale is determined as a counterfeit trade mark, or a reproduction right or distribution right (of copyrightable works, phonogram or video recordings) is intentionally infringed on a commercial scale, both individual offender and corporate offender may be criminally prosecuted, ie, sentenced to imprisonment for up to three years, fined up to VND5 billion, and suspended from business operation for between six months and two years. See further 9.6 Infringement as an Administrative or Criminal Offence.

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Vietnam has no special procedural provisions for trade mark or copyright lawsuits. To date, no specialised intellectual property court has been established. (A specialised IP court in the Draft revision to the law on organisation of the people’s courts of 2014 proposed by the Supreme People’s Court of Vietnam (SPC) has not yet been enacted by the National Assembly.)

Vietnam has no jury system, and it has no technical judges in charge of technology or IP-related disputes. Except for the lawsuit applied by simplified procedure (see detail at 8.10 Small Claims), a copyright or trade mark case shall be determined by the trial panel comprising one judge and two people’s jurors (only applicable at first-instance court). These people’s jurors and judge have equal rights when deliberating and resolving the case by majority vote.

A trade mark registration is required for initiating a trade mark infringement lawsuit, whereas a copyright registration, although not required by law, can help the plaintiff to be presumed as legitimate copyright owner and push the contrary burden of proof on to the defendant.

The court is responsible for assisting litigants to collect evidence in some limited cases, eg, request for the court to verify and collect evidence that cannot be done on their own, or request the court to force other litigants to present documents and evidence they are holding.

No “expert witnesses” concept is available in the 2015 CPC. In absence of technical judges or judges knowledgeable about IP matters, in practice, courts are much influenced by the expert opinions of those who are hired by litigants or invited by the trial panel to determine the copyright/trade mark infringement or non-infringement elements. It is believed that obtaining a favourable expert opinion is the key to success in litigation.

Expert opinions (statutorily known as “assessment conclusion”) are mainly delivered by the VIPRI (Vietnam Intellectual Property Research Institute, a quasi-governmental organisation under the Ministry of Science and Technology), and rarely delivered by one of the very few accredited IP judicial assessors. Survey (eg, a likelihood of confusion survey) is also not an admissible source of evidence under the 2015 CPC but, in practice, litigation experience has shown that some courts accept it as “reasonable testimony or arguments”.

It is difficult to anticipate how much it will cost to bring a trade mark or copyright infringement action at the court until receipt of the first instance decision since it depends on the degree of complexity, volume of evidence or lawyers’ fees involved. In general, it may cost from USD10,000 to USD50,000 or higher. See further 11.3 Attorneys’ Fees and Costs.

In general, all trade mark or copyright infringement acts can constitute an administrative sanction (administrative measure). Under serious circumstances, one of those acts may be criminally prosecuted under Section 226 or Section 225 of the 2015 Criminal Code as revised. The threshold for criminal liability is meeting all three elements:

• offender intentionally committed infringement;
• IP rights infringed are trade mark (in a counterfeit manner) or reproduction right or distribution right (of copyrightable works, phonograms or video recordings); and
• infringement is conducted on a commercial scale (eg, infringing goods have a minimum value of VND100 million for copyright or VND200 million for trade mark).

Where an administrative measure is applied, the organisational infringer may be fined up to a maximum VND500 million, apart from the supplementary penalties (eg, confiscation of counterfeit trade mark goods, suspension of business operations) and remedial measures (eg, forcing removal of infringing elements, forcing destruction of counterfeit trade mark goods).

Regardless of whether a trade mark or copyright infringement has been handled or is being handled by administrative measures or criminal proceedings, the rights-holder can still sue, requesting the court to force the infringer to compensate them for damages because civil remedies are independent measures for rights-holders for the purpose of securing their IP rights as civil rights. See 11.2 Monetary Remedies, explaining how to claim for damages.

The following defences against trade mark infringement are recognised by statute:

• validity cancellation (based on bad faith or wrongly granted);
• non-use invalidation;
• licence (implicitly consented);
• no act of infringement;
• no infringement element (eg, no likelihood of confusion);
• functionality; and
• expiry of statute of limitations.

If one of these defences is accepted by the court, the defendant or respondent may not only avoid total liability claimed by the plaintiff or claimant but also may force the plaintiff, as a consequence of being the losing party, to pay back their reasonable costs in hiring a lawyer and other expenses.

More importantly, in IP infringement lawsuits, where the court concludes that the defendants did not commit the infringement, they have the right to demand that the court force the plaintiff to pay them reasonable costs for hiring lawyers and other expenses, as mentioned at 11.3 Attorneys’ Fees and Costs.

Fair use exceptions are available for the use of trade mark or copyrighted work without the owner’s consent. For trade mark, please see 10.1 Defences to Trade Mark Infringement. For copyright, the following acts are copyright non-infringement, provided that the three-step test is complied with and information about the author’s name and the origin of the work are credited:

• private copying (see 10.3 Private Copying);
• reasonable use of a copyrighted work for the purpose of illustrating (eg, lectures, publications, performances, etc);
• reasonable use of a copyrighted work in public service activities by state agencies;
• using a copyrighted work in a library (see 10.6 Library and Archive Rights);
• reasonable quotation of a work without misrepresenting the authors, for comments, introduction or illustration in one’s work;
• performing theatrical, music, dance works in cultural activities for a non-commercial purpose;
• taking photos or broadcasting works of fine art, architecture, etc, displayed in public places, for the purpose of introduction of that image, not for commercial purpose;
• importing copies of other’s work for private use, not for commercial purpose;
• taking photos, recording audio, video recordings or broadcasting an event for the purpose of news reporting; and
• people with visual impairments or disabled people have the right to copy, perform or communicate the work in an accessible copy of the work (including organisations meeting conditions prescribed by the government, which have the right to reproduce, distribute, perform and communicate works in an accessible copy format).

However, the above-mentioned acts of copying shall not be applicable in relation to architectural works, works of fine art, computer programs and making anthologies.

Copying of a copyrighted work is an exception to infringement if such copying is (i) self-copying, (ii) only one copy, and (iii) for the purpose of personal research or study and not for commercial purpose. Another form of reproduction that is also considered as an exception is the reasonable reproduction of part of a copyrighted work using copying equipment on the condition that the purpose of such reproduction is personal research or study and not for commercial purpose. In addition, importing copies of other’s work for private use (not for commercial purpose) is also a fair use.

Online service providers (OSPs) can be conditionally immune from legal liability for a copyright infringement occurring on their platforms under Article 198b of the 2022 IP Law (not applicable for trade mark), in the following circumstances:

• only performing the function of transmitting information of users in the telecommunications network (“mere conduit”).
• transmission in the telecommunications network of users’ information which is automatically, intermediately and temporarily stored and for the purpose of making the transmission of information more efficient to other users (“caching”); or
• storing digital information content of service users at the request of service users (“hosting”), provided that:
1. OSPs do not know that such digital content violates copyright, related right; and
2. OSPs take prompt action to remove or prevent access to such digital content upon learning that such digital content infringes upon copyright or related rights.

Vietnam follows the exhaustion doctrine regarding both trade mark right and copyright. For trade mark right, either circulating, importing or exploiting utilities of products bearing a registered trade mark which were lawfully put on all the markets without the trade mark owner’s consent is not trade mark infringement. For copyright, subsequent distributions or imports for the distribution of originals or copies of a copyrighted work that has been distributed or authorised by the copyright holder are not copyright infringement.

Using a copyrighted work in a library is deemed as fair use if such use is not for commercial purpose:

• copying a work stored in the library for preservation provided that this copy must be marked as an archive and there is limited access to it;
• reasonable copy of part of a copyrighted work using reproduction equipment for others to serve their research and study; and
• copying or transmitting works stored for inter-library use via computer networks provided that the number of readers at the same time does not exceed the number of copies of the work stored by those libraries.

A petition for the application of a provisional emergency measure (injunctive relief) can be accepted by the court on or after the time of filing a lawsuit if it satisfies two conditions: (i) there is a risk of irreparable damage to a trade mark or copyright owner; and (ii) allegedly infringing goods or evidence of trade mark or copyright infringement are at risk of being dispersed or destroyed if not secured promptly.

According to the 2022 IP Law, acceptable injunctive reliefs include:

• seizure;
• distraint;
• sealing;
• prohibiting changes in the status quo;
• forbidding to move.

In addition, according to the 2015 Civil Code, the freezing of a bank account is prescribed as an injunctive relief. However, in practice, the freezing of the bank account of a suspected infringer has not been utilised by the court to date.

It is not possible to request destruction of the suspected goods as an injunctive relief. Forced destruction of infringing goods, as a civil remedy requested by the trade mark or copyright owner, may be decided, and implemented only after an effective judgment held by the court.

Posting a bond (security deposit) of 20% of the value of the suspected goods or at least VND20 million or providing a guaranty from a bank to obtain an injunction is required.

In addition to the fact that the right-holder can choose administrative measures, or even petition for prosecuting criminal cases against the act of forging trade marks and copyright piracy on a commercial scale, an IP holder may initiate a civil lawsuit against a tortfeasor to protect their civil rights as IP rights along with a claim for damages in money. Fundamentally, elements such as wilful infringement and enhanced damages (for use of a counterfeit mark) are not prescribed as legal remedies for aggravating the infringer’s damage liability, but only actual damage, which must be proved by the IP holder, and is the ground on which the court can award the amount of damages.

Damage caused by a trade mark or copyright infringement must be proven to have occurred in accordance with one of four statutory calculation methods.

• Total physical damage in money plus the profits that the defendant has earned.
• The price for transferring the licence to use the trade mark or copyright assumes that the defendant receives the licence from the plaintiff according to the trade mark or copyright licence contract.
• Other calculation methods proposed by the right-holder in accordance with the law.
• The court at its discretion may decide the amount of compensation but not more than VND500 million for material damage and only when the damage cannot be determined according to the above three methods.

Costs for litigation typically include court’s fees, attorney’s fee, and other civil proceeding expenses. In principle, if all the plaintiff’s claims are accepted by the first-instance court, the defendant shall bear all the court’s fees; and, vice versa, the plaintiff must bear all the court’s fees if all claims are not accepted by the court. The plaintiff must pay the court fee corresponding to the portion of claims unacceptable to the court. Where the defendant’s counterclaims or a part of the counterclaims are not accepted, the court fees applicable to those unaccepted portions shall be borne by the defendant. In practice, attorney’s fee claimed by the winning party is rarely accepted in full by the court. In some cases, attorney’s fee of USD10,000 has been awarded by Ho Chi Minh City’s court.

More importantly, if concluded by the court that they did not commit the alleged infringement, defendants in IP infringement lawsuits have the right to demand that the court force the plaintiff to pay them reasonable costs for hiring lawyers and for other expenses.

No ex parte relief is available in Vietnam.

Customs authorities are responsible for proactively seizing counterfeits (likely including parallel imports), even without the IP right-holder’s request, if, during their process of inspection, supervision and control, there are clear grounds to suspect that exported or imported goods are counterfeit IP goods. A trade mark or copyright owner can either file a request for customs clearance suspension for goods suspected of IP infringement, or file a request for inspection and supervision for the purpose of discovering goods suspected of IP right infringement.

The courts have responsibility to conduct mediation as well as create favourable conditions for litigants to reach agreement during the resolution of a case. In addition, the parties involved should note that a pre-litigation mediation (other than litigation mediation) prior to the court’s acceptance of the lawsuit is a required procedure, as explained at 8.6 Prerequisites and Restrictions to Filing a Lawsuit.

Alternative dispute resolution to a trade mark or copyright infringement action may be accepted by parties or the IP enforcement agencies if the suspected goods are not counterfeits or counterfeit IP goods. Alternative resolutions may be an arbitration procedure if chosen by both parties, or settlement by mediation prior to litigation or within litigation at court.

The court that accepted and is resolving a trade mark or copyright lawsuit may issue a decision on suspension pending the result of resolution of other related cases prescribed by law that must be resolved first by other state agencies. For instance, the trade mark or copyright subject to the current lawsuit was accepted in a validity cancellation action which is pending resolution by the VNIPO, COV or other courts.

A trade mark or copyright judgment of first instance can be appealed by one of the litigants. An application for appeal shall specify whether part of or the whole of the judgment is appealed, and shall explain the reason for appeal. Subject to whether the first-instance judgment was pronounced by the district court or provincial court, the court of appeal may be one of three High Courts based in Hanoi, Da Nang or Ho Chi Minh City, or a Provincial People’s Court.

Within 15 days from the date of verdict of first instance or seven days from the date of suspension decision or termination decision issued by the court of first instance, either the plaintiff, defendant or persons with related interest and obligation have the right to appeal the trial court decision. However, the time limit for appealing the court of first instance’s judgment or decision held under the simplified procedure is seven days. The statutory time limit for the court of appeal to issue a decision on bringing the case to the appeal trial is two months from the date of acceptance of the appeal application, and the appeal hearing must be opened.

There are no special provisions governing the appellate procedure for trade mark or copyright proceedings in the 2015 CPC.

The court of appeal shall review only the part of the first-instance judgment/decision that is appealed or protested or related to the review of the content of the appeal or protest. Therefore, the court of appeal does not differentiate between the facts or legal issues of the case under review.

No rights of publicity and personality are incorporated in the 2022 IP Law. Rights of publicity and personality are faintly provided for in the 2015 Civil Code. To date, there is neither guidance nor precedent related to Article 32 governing the right to an individual’s image or Article 26 governing the individual’s right to surname and name, so it is difficult to enforce trade mark or copyright disputes involving the name, image or likeness of celebrities.

No unfair competition regime is applicable for copyright. For trade mark, Article 130 of the 2022 IP Law identifies only four types of unfair competition acts that may be subject to a civil lawsuit before the court or an administrative violation sanction:

• using commercial indications that cause confusion in terms of business entities;
• using commercial indications that cause confusion in terms of the origin, method of production or quality of goods/services;
• using a registered trade mark in a foreign country that is a member of IP treaties that prohibits the representative or agent of the trade mark owner from using that trade mark; and
• possessing or using a domain name identical or confusingly similar to another person’s protected trade mark, trade name or geographical indication.

Artificial intelligence is an emerging issue but copyright or trade mark infringement cases in relation to generative AI outputs have not yet appeared nor been heard or settled by the court or other state authorities.

It is advisable to keep up to date with new rules regarding copyright enforcement on the internet, as mentioned at 10.4 Intermediaries.

Vietnam has no special rules or norms regarding trade marks or copyrights as used in business.