Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

Trademark litigation in Vietnam is governed by a combination of national laws and specific regulations. The key statutes include the following:

• the IP Law 2005 (amended in 2009, 2019 and 2022);
• the Civil Code 2015;
• the Civil Procedure Code 2015 (CPC);
• the Penal Code 2015 (amended 2017);
• the Criminal Procedure Code 2015; and
• relevant decrees, circulars and joint circulars providing detailed guidance and implementation regulations for the above laws. Notable examples include:
• • Decree 65/2023/ND-CP detailing and guiding the implementation of several articles of the IP Law;
  • Decree 99/2013/ND-CP on the sanctioning of administrative IP violations, revised under Decree 46/2024/NĐ-CP;
  • Circular 23/2023/TT-BKHCN providing detailed guidance on the IP Law and implementing measures from Decree 65/2023/ND-CP;
  • Circular 11/2015/TT-BKHCN providing detailed instructions on handling administrative violations related to IP rights in Vietnam from Decree 99/2013/ND-CP;
  • Joint Circular 01/2008/TTLT-TANDTC-VKSNDTC-BCA-BTP guiding the examination of penal liability for acts of IP infringement;
  • Joint Circular 02-2008-TTLT-TANDTC-VKSNDTC-BVHTTDL-BKHCN-BTP guiding the application of a number of legal provisions to the settlement of disputes over IP rights at the people's courts;
  • Joint Circular 05/2016/TTLT-BKHCN-BKHDT detailing and guiding measures against corporate names that infringe IP rights;
  • Joint Circular 14/2016/TTLT-BTTTT-BKHCN guiding the order and procedures for changing and revoking domain names infringing IP rights; and
  • Resolution 02/2020/NQ-HDTP of the Judicial Council of the Supreme People's Court guiding the application of some provisions stipulating provisional measures in the CPC.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

Vietnam is a party to several bilateral and multilateral agreements that influence trademark litigation, setting standards and procedures to strengthen trademark protection.

• Multilateral agreements:
• • Paris Convention (1883): This treaty establishes national treatment, ensuring equal protection for foreign and domestic owners, and allows priority claims across member countries.
  • Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) (1994): As part of the World Trade Organization framework, TRIPs sets minimum standards for IP protection, including trademarks, and outlines enforcement procedures influencing Vietnam's legal framework.
  • Association of South East Asian Nations Framework Agreement on IP Cooperation (1997). This agreement promotes cooperation among ASEAN members in the IP field.
  • Madrid Agreement (1891) and Madrid Protocol (1989): These provide a system for international trademark registration, simplifying protection in multiple countries, including Vietnam.
  • Comprehensive and Progressive Agreement for Trans-Pacific Partnership: This agreement includes IP provisions affecting Vietnam's trademark enforcement.
  • Regional Comprehensive Economic Partnership (2022): This agreement harmonised trademark systems across the Asia-Pacific region.
• Bilateral agreements:
• • EU-Vietnam Free Trade Agreement: This covers a broad range of trade-related issues, including IP rights and trademark protection.
  • US-Vietnam Trade Relations Agreement (2001): This includes a chapter on IP rights, including trademarks, and provides for cooperation and enforcement mechanisms.
  • Vietnam-Switzerland Agreement on IP Protection: This establishes IP cooperation, including trademarks, between Vietnam and Switzerland.
  • Vietnam-Japan Economic Partnership Agreement (2008): This covers IP rights and cooperation on trademarks.

These agreements have shaped Vietnam's trademark landscape, influencing:

• legal procedures;
• remedies; and
• the overall approach to trademark litigation.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

In Vietnam, the interpretation and enforcement of trademark laws are handled by both judicial and administrative bodies.

• Judicial bodies:
• • People's courts: These are the primary judicial bodies that handle trademark litigation, with jurisdiction determined by the location of the infringing act or the defendant's residence. Under Vietnamese law, the highest court in the country is the Supreme People's Court. Below the Supreme Court are three levels of courts, in descending order of hierarchy:
  • the high people's courts;
  • the provincial people's courts; and
  • the district people's courts.
• Administrative agencies:
• • Intellectual Property Office of Vietnam: Responsible for trademark registration, examination and the grant of protection.
  • Market Management Bureau:
  • • Conducts market surveillance;
    • Investigate complaints; and
    • Imposes administrative sanctions for trademark infringement.
  • Economic Police: Investigates IP crimes, including trademark counterfeiting, focusing on cases involving:
  • • large quantities;
    • organised networks; or
    • dangerous products.
  • Customs Department: Detains and seizes suspected counterfeit or infringing goods at border crossings.
  • Inspectorate of Science and Technology and Inspectorate of Information and Communications:
  • • Handle complaints;
    • Conduct investigations; and
    • Impose administrative sanctions for trademark violations.

The framework for interpreting and enforcing trademark laws in Vietnam is multifaceted:

• Civil action: Trademark owners can sue in the people's courts for:
• • injunctions;
  • damages; and
  • the destruction of infringing goods.
• Administrative action: Complaints filed with the enforcement authorities can lead to:
• • fines;
  • confiscations; and
  • corrective measures.
• Criminal prosecution: In serious cases of counterfeiting, the authorities can pursue criminal charges, leading to penalties such as fines and imprisonment.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

In Vietnam, trademark litigation is generally heard in the following forums:

• People's courts: Trademark disputes, including infringement cases, are typically first heard by the provincial or municipal people's courts, which handle civil, economic, and administrative matters. Dissatisfied parties may appeal to the high people's courts.

• Administrative enforcement agencies: Trademark owners can enforce their rights through agencies such as:
• • the Inspectorate of Science and Technology;
  • the Inspectorate of Information and Communications;
  • the Market Management Bureau;
  • police agencies; and
  • the customs authorities.

The court in Vietnam can rule on both invalidation and infringement matters in the same proceedings because they may "revoke particular decisions of agencies or organisations if they are unlawful and infringe upon the rights of involved parties in civil cases" (Article 34 of the Civil Procedure Code (CPC)). However, the court often defers to the IP Office of Vietnam (VNIPO) for invalidation matters. This is because the VNIPO is the authority with the technical expertise and jurisdiction over trademark registration and validity. During an infringement lawsuit, if the defendant challenges the validity of the trademark, the court may stay the proceedings and await the VNIPO's decision on the invalidation request. This means that while the court has jurisdiction to rule on both issues, it frequently relies on the VNIPO's expertise to resolve the invalidation matter before proceeding with the infringement decision.

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

In Vietnam, trademark disputes are primarily heard and decided by judges within the people's court system:

• At the first-instance hearing, the case is typically heard by a single judge along with a committee of two people's jurors.
• For appeal hearings, the case is decided by a panel of three judges.

People's jurors are elected by the people's committee at the same level as the people's court (district or provincial level) and play a role in the decision-making process alongside the judge(s).

While the VNIPO initially handles trademark validity disputes, these can be appealed to the people's courts, where they will also be heard and decided by judges, following the same structure as other trademark disputes. People's court judges have the final say in resolving trademark disputes in Vietnam, as there is no jury in the Vietnamese judicial system.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

‘Forum shopping' involves choosing a favourable jurisdiction for legal proceedings. There are limited opportunities for forum shopping in Vietnam, which primarily arise from procedural differences and the discretionary powers of judges:

• Choice of court: Non-commercial IP disputes are generally heard by the district-level civil courts, while commercial disputes fall under the jurisdiction of the provincial-level economic courts. Depending on the circumstances, the plaintiff can also choose to file the case in the court where:
• • the defendant resides or has offices or branches; or
  • the dispute arose.
• Also, the parties have the right to agree in writing that disputes be handled by the court at the place where the plaintiff resides or is domiciled (Article 39.1 of the CPC).
• Choice between administrative and civil proceedings: Plaintiffs have the option to:
• • pursue administrative proceedings through the relevant authorities; or
  • initiate a civil lawsuit in the people's courts.
• The choice between these two avenues may be influenced by factors such as:
• • the desired speed of resolution;
  • the severity of the infringement;
  • the type of remedies sought; and
  • the potential costs involved.
• Arbitration: For certain commercial disputes, including those with IP aspects, parties can opt for arbitration, providing flexibility and access to specialised forums.

However, the scope for forum shopping in Vietnam is generally limited. The jurisdiction of the people's courts is clearly defined and the legal framework for trademark disputes remains consistent across venues. The effectiveness of any attempt at forum shopping will depend on:

• the specific case; and
• the discretion of the courts and authorities.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

In Vietnam, the right to file a lawsuit for trademark infringement extends to several parties, each with specific requirements and restrictions:

• Parties with standing:
• • Trademark owners: The registered owner - including co-owners or those that have inherited or been transferred the rights - has the primary right to file a lawsuit for infringement.
  • Licensees: Exclusive licensees can sue for infringement, as long as the licence agreement does not restrict this right. Non-exclusive licensees require the trademark owner's consent or must join the owner in the lawsuit to proceed.
  • Harmed organisations or individuals: Affected consumers, competitors or other parties that have suffered damages may also have standing. These parties generally must be represented by:
  • • authorised state agencies;
    • social/professional organisations; or
    • other entities acting on their behalf or in the public interest.
• Requirements and restrictions:
• • Valid trademark registration: The plaintiff must have a valid and enforceable trademark registration in Vietnam.
  • Proof of infringement: The plaintiff must provide evidence demonstrating that the defendant's use of the mark is likely to cause consumer confusion.
  • Statute of limitations: The general statute of limitations for trademark infringement lawsuits is two years from the date on which the plaintiff knew or should have known about the infringement.
  • Exhaustion of remedies: If the trademark's validity is disputed, this will first be resolved through the Intellectual Property Office of Vietnam (VNIPO) before pursuing a lawsuit.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes, a trademark infringement suit in Vietnam can be brought against a defendant that is a foreign entity with a residence or place of business outside the jurisdiction.

Vietnamese law permits lawsuits against foreign entities for trademark infringement if the infringing activity has an impact within Vietnam, such as unauthorised use of a trademark within the country. The plaintiff can file the lawsuit in a Vietnamese court, provided that:

• the infringement relates to a trademark that is registered in Vietnam; and
• the infringing acts are connected to the Vietnamese market.

In detail, an act is considered an infringement if it takes place in Vietnam. Article 72.4 of Decree 65/2023/ND-CP clarifies that an act is also considered to take place in Vietnam if it:

• occurs on the Internet; and
• targets Vietnamese consumers or uses the Vietnamese language.

This implies that the focus is on the infringement's impact in Vietnam, rather than the infringer's physical location. Therefore, even if a foreign entity has no physical presence in Vietnam, its actions can still be subject to Vietnamese jurisdiction if the infringing activities affect the Vietnamese market or consumers.

However, serving legal documents and enforcing a judgment against a foreign entity can be more complex, often requiring cooperation through;

• treaties such as the Hague Service Convention; or
• bilateral agreements between Vietnam and the foreign entity's home country.

The Vietnamese courts will also need to ensure that the foreign defendant is properly notified and given the opportunity to defend itself.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes, a single trademark infringement action can be brought against multiple defendants in Vietnam. Per Article 188 of the Civil Procedure Code (CPC): "An agency, organisation or individual may initiate a lawsuit against another or many other agencies, organisations and/or individuals regarding one legal relation or many interrelated legal relations for settlement in the same case." This provision allows for a single lawsuit to be filed against multiple defendants when the legal relations are interconnected. In the context of trademark infringement, this will typically involve multiple parties engaging in infringing activities related to the same trademark.

• Requirements:
• • Same or related legal relationship: The infringing acts of the multiple defendants should stem from the same or interrelated legal relationships. For instance, companies engaged in the production, distribution or sale of counterfeit goods infringing a trademark can be co-defendants.
  • Common interests: The defendants must be linked by the same factual or legal issues, such as the unauthorised use of a trademark.
• Restrictions:
• • Jurisdiction: If the defendants are in different locations, determining jurisdiction can be complicated. The court must have authority over all defendants, typically based on where the infringement occurred or where one defendant resides.
  • Court's discretion: The court has the discretion to join or separate cases (Article 42 of the CPC). If the court believes that joining multiple defendants in one action would hinder the efficient resolution of the case or prejudice any party's rights, it may decide to separate the claims into multiple lawsuits.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Yes, a third party can seek cancellation of both national and international trademarks in Vietnam. The process involves:

• filing a request for cancellation with the VNIPO; and
• providing evidence to support its claim.

Vietnam's IP Law provides two separate mechanisms to nullify a trademark registration: cancellation and invalidation (Articles 95 and 96 of the IP Law).

The difference lies in the timing and nature of the issues that lead to nullification.

• Cancellation: Article 95 deals with issues that arise after the trademark has been granted. These often involve actions or inactions of the trademark owner, such as:
• • non-use (ie, not used for five consecutive years without justification);
  • failure to pay renewal fees;
  • misleading use (eg, the use of the mark causes confusion about the nature, quality or origin of the goods or services);
  • changes in circumstances that affect the mark's validity (eg, the mark has become a common name for the goods or services it represents);
  • failure to control collective or certification mark use; or
  • cessation of business activities by the owner without a legal heir.
• Invalidation: Article 96 addresses issues that existed at the time of registration. These are typically more fundamental problems, such as:
• • bad-faith applications (eg, the applicant registered the trademark with malicious intent);
  • lack of registrability (eg, the applicant did not have the right to register the mark);
  • non-compliance (eg, the mark does not meet the conditions for protection (eg, lack of distinctiveness, descriptiveness); or
  • failure to meet procedural requirements (eg, improper amendment).
• An invalidated mark is treated as if it was never valid in the first place.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

Yes, a third party can seek both a declaration of non-infringement and a declaration of invalidity in Vietnam.

Declaration of non-infringement: Although not explicitly codified, a third party can strategically seek a declaration of non-infringement. The primary route is to request confirmation from the trademark owner. If the trademark owner disagrees or does not respond, the third party may escalate the matter to the court or relevant administrative body, seeking a formal declaration of non-infringement. In practice, a third party may request an administrative enforcement authority (eg, the Market Management Bureau) to help seek expert opinions on IP infringement from the VNIPO or the Vietnam IP Research Institute (VIPRI). Expert opinions from these bodies are treated as a reliable source of evidence to confirm whether an IP infringement has occurred.

In addition, a party facing a threat of infringement action can potentially seek a declaration of non-infringement from the court. While this is not common practice, it is possible under the general principles of civil procedure, which allow parties to seek judicial protection of their rights and interests.

Declaration of invalidity: A third party may also challenge the validity of a registered IP right (eg, a trademark, patent or industrial design) by filing a request for invalidation with the VNIPO. The request must be based on grounds such as:

• lack of novelty;
• non-compliance with legal requirements; or
• prior use by the third party.

If the VNIPO finds the grounds to be valid, the IP right can be declared invalid, either partially or entirely.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

In Vietnam, trademark infringement occurs where:

• someone, without the permission of the trademark owner, uses a sign that is identical or similar to a protected trademark for goods or services that are identical, similar or related to those covered by the registered trademark; and
• this use is likely to cause confusion about the origin of the goods or services.

Additionally, using a sign that is identical or similar to a well-known mark - even for unrelated goods or services - constitutes infringement if it is likely to cause confusion or create a misleading impression about the relationship between the sign's user and the well-known mark's owner (Article 129 of the IP Law).

4.2 How is infringement determined?

To determine trademark infringement in Vietnam, the following must be considered:

• the scope of protection of the mark;
• the nature of the allegedly infringing sign and its use; and
• whether there is a likelihood of confusion among consumers.

Additionally, the act must be unauthorised and occur within the jurisdiction of Vietnam (Article 129 of the IP Law; Articles 72 and 77 of Decree 65/2023/ND-CP).

Trademark infringement is determined through a two-pronged approach, focusing on a comparison of the marks and associated goods/services and the likelihood of confusion among consumers:

• First, the allegedly infringing sign is assessed to determine its similarity to the registered trademark, considering visual, phonetic and conceptual aspects. Additionally, the goods or services linked to the allegedly infringing sign are compared to those covered by the registered trademark to determine their degree of similarity or relatedness.
• Second, the likelihood of confusion is evaluated. If the marks and goods/services are identical, confusion is often presumed. Otherwise, it is assessed based on various factors, including:
• • the distinctiveness and reputation of the registered mark;
  • the degree of similarity between the marks and goods/services;
  • consumer perceptions;
  • marketing channels; and
  • evidence of actual confusion.
• For well-known marks, even the use of a similar sign on unrelated goods/services can be considered infringement if it creates confusion or misleading impressions.

To prove infringement, the trademark owner must provide evidence demonstrating the likelihood of confusion or dilution, often relying on:

• market research;
• consumer surveys; or
• expert opinions from the Intellectual Property Office of Vietnam (VNIPO) and/or the Vietnam IP Research Institute.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

Yes, wilful trademark infringement is recognised in Vietnam. Intent is a statutory requirement for penalising cases under criminal proceedings. Article 226 of the Criminal Code states that a person who intentionally infringes industrial property rights, including trademarks, involving counterfeits for commercial purposes or illegal profits can face criminal penalties. The inclusion of the term ‘intentionally' indicates that the act of infringement must be deliberate, implying that accidental or unintentional infringement will not fall under this provision. This aligns with Article 85, which requires the establishment of "intentional or unintentional acts" when determining criminal liability.

The thresholds for determining the applicable penalties are as follows:

• illegal profits ranging from VND 100 million to more than VND 300 million;
• losses incurred by the trademark owner ranging from VND 200 million to more than VND 500 million; or
• infringing goods with a value ranging from VND 200 million to over VND 500 million.

In addition:

• the act must involve the infringement of a trademark that is protected in Vietnam; and
• the goods must be ‘counterfeits' as defined under Article 213.2 of the IP Law;

While the Law on Handling of Administrative Violations (15/2012/QH13, as amended in 2020) does not explicitly use the term ‘wilful infringement', it acknowledges the concept of intent through the concept of ‘aggravating circumstances'. Such circumstances - which include committing violations in an organised manner, repeatedly or by abusing one's position - can lead to increased fines, indicating that infringements committed deliberately are considered more severe and warrant harsher penalties.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

The IP Law provides a multi-faceted approach for trademark owners to actively defend their rights.

Trademark owners are provided with a range of options to enforce their rights, from technological measures and direct requests for infringement termination to seeking state intervention or pursuing legal action (ie, litigation or arbitration). They can also take enforcement actions under civil, administrative or criminal remedies and border control measures (Articles 198 and 199 of the IP Law):

• Civil actions: Trademark owners can initiate civil proceedings in court, seeking remedies such as:
• • injunctions to stop the infringing activities;
  • damages; and
  • other civil remedies.
• Criminal actions: In serious cases of trademark counterfeiting, trademark owners can file a complaint with the Economic Police (Article 153 of the Criminal Procedure Code). If convicted, infringers may face fines, imprisonment or both
• Administrative actions: Trademark owners can file a complaint with the Vietnamese administrative enforcement agencies, which can:
• • issue decisions to stop the infringing acts;
  • impose fines; and
  • order the destruction of infringing goods.
• Customs border measures: Customs authorities are entitled to detain suspected infringing goods at the border. The trademark owner can then take further actions, such as filing a lawsuit, to prevent the release of the goods.

Other measures:

• Conducting an IP assessment: This involves obtaining an assessment from the Vietnam IP Research Institute and/or the IP Office of Vietnam to provide expert opinions on trademark infringement.
• Arbitration: Arbitration is also available for trademark disputes involving commercial matters. However, in practice, arbitration is not widely used.
• Mediation: Parties can attempt to resolve the dispute through mediation with the assistance of a neutral third party.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

Administrative measures: To pursue administrative action, the trademark owner must request the relevant Vietnamese state agency to address the infringement within two years of the date on which the infringing act:

• ended, for completed infringements; or
• was discovered, for ongoing infringements.

Civil remedies: The statute of limitations for civil remedies varies, as follows:

• For lawsuits seeking compensation for damages under Article 588 of the Civil Code, the statute of limitations is three years from the date on which the trademark owner knew or should have known about the infringement.
• There is no statute of limitations for civil lawsuits concerning ‘non-proprietary moral rights' or actions seeking the protection of ‘ownership rights' under Article 155.2 of the Civil Code.

Criminal remedies: Under the Penal Code, the statute of limitations for prosecuting a person for trademark infringement is five years and begins to run from the date on which the crime is committed.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

The alleged infringer need not be notified in advance before a trademark infringement claim is brought in Vietnam. However, for trademark-based domain name disputes that fall under the unfair competition regime, prior notification to the alleged infringer is mandatory and evidence of this notice must be submitted along with the petition (Article 19 of Circular 11/2015/TT-BKHCN).

The decision to provide prior notice to an alleged infringer should be made strategically, considering:

• the specific circumstances of the case; and
• the potential benefits and risks involved.

In some cases, it might alert the infringer, prompting it to take evasive action or initiate counter-proceedings such as invalidation actions. In other situations, it can be an effective tool to achieve a quick and cost-efficient resolution.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

Procedural requirements: A trademark infringement claim in Vietnam can be pursued through administrative action, civil litigation or criminal prosecution, depending on the severity of the infringement:

• Administrative action: Faster and less expensive; ideal for smaller or straightforward cases, leading to remedies such as fines and orders to cease infringement.
• Civil litigation: Offers a wider range of remedies such as damages, injunctions and public apologies. Suitable for larger, complex cases involving significant damages.
• Criminal prosecution: Reserved for large-scale, highly profitable or repeat infringements. Initiated through a complaint to the Economic Police.

Adherence to the statute of limitations is critical, as follows:

• two years for administrative actions;
• three years for civil actions seeking damages; and
• five years for criminal actions.

A detailed written complaint or petition must be submitted, and the court may offer mediation before proceeding to a hearing and judgment. Appeals can be made within a specified timeframe.

Substantive requirements: The claimant must establish the following:

• Trademark ownership: The claimant must provide evidence of the existence of a registered trademark.
• Infringement: The claimant must demonstrate that the defendant's use of an identical or similar mark on identical, similar or related goods/services is likely to cause consumer confusion.
• Confusability: The court will assess the likelihood of confusion based on factors such as:
• • the similarity between the marks; and
  • consumer perceptions.
• Well-known trademarks: The claimant must provide evidence of the mark's well-known status, if applicable.

Content of complaint/petition: The complaint should be well organised and concise, detailing:

• the plaintiff's and defendant's information;
• the infringed trademark;
• the infringing acts;
• proposed remedies; and
• accompanying evidence.

Supporting documents - such as the trademark registration certificate, evidence of infringement and any expert opinions - should substantiate the claims.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Interim remedies - often referred to as ‘emergency measures' or ‘provisional urgent measures' under Vietnamese law - are available in trademark litigation to prevent further harm to the trademark owner during legal proceedings.

Obtaining interim remedies involves the following steps:

• Filing of a petition: The plaintiff submits a petition to the court or administrative authority (eg, the Market Management Bureau or the Economic Police) handling the infringement case. The petition must include details of:
• • the plaintiff;
  • the dispute;
  • the reasons for the remedies;
  • the specific remedies sought; and
  • supporting evidence.
• Conditions for grant: Remedies are granted if there is a risk of irreparable harm or potential destruction of evidence. The court will assess the case merits and urgency.
• Security bond: In civil litigation, the claimant must provide a security bond or bank guarantee (20% of the value of the goods or at least VND 20 million if the value is undetermined) to cover potential damages if the remedies are unjustified.
• Court decision: The court usually issues a decision within 48 hours.

The available interim remedies are as follows:

• Civil litigation:
• • Seizure or retention of infringing goods, materials and equipment;
  • Prohibition on altering or moving goods;
  • Sealing of premises or goods;
  • Freezing of bank accounts or other assets; and
  • Other necessary measures as determined by the court.
• Administrative action:
• • Temporary detention of individuals or goods;
  • Searches of premises or vehicles; and
  • Other preventive measures under the law on administrative violations.

While interim remedies are legally available, their enforcement can sometimes be challenging in practice.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

Under the Civil Procedure Code (CPC), the provision of security for costs and/or damages is primarily associated with the application for and grant of ‘interim remedies' (or ‘provisional emergency measures') (Chapter VIII of the CPC):

• Plaintiff's obligations: The plaintiff may be required to provide security when applying for provisional emergency measures that could potentially harm the defendant. This is to ensure that the defendant can be compensated if the measures are later found to be unwarranted. The forms of security can include:
• • guarantees;
  • cash deposits; or
  • other valuable assets as determined by the court (Article 136 of the CPC).
• In IP cases, the plaintiff must deposit a bond in the form of:
• • money (20% of the goods' value or at least VND 20 million if valuation is impossible); or
  • a bank/credit institution-issued guarantee (Article 208 of the IP Law).
• Defendant's obligations: Defendants are not generally required to provide security. However, when filing a counterclaim, they assume a procedural position similar to a plaintiff concerning that claim. This means that they may also be required to provide security if:
• • their counterclaim necessitates provisional emergency measures; or
  • other circumstances exist where a plaintiff would typically be required to provide security (Articles 72 and 146 of the CPC).

The security serves as a protective measure to compensate the opposing party for any potential damages incurred due to the interim remedies or counterclaims should they later be found to be unjustified, lifted or altered.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Disclosure and discovery: Vietnam's legal framework does not have a direct equivalent to the broad pre-trial discovery process common in many common law jurisdictions. The Civil Procedure Code (CPC) places the onus on the parties to gather evidence from third parties. However, the court can assist in evidence collection if a party has made reasonable efforts but failed to obtain necessary evidence. The requesting party must:

• specify the evidence sought; and
• explain why it could not obtain this evidence independently.

Disclosure between parties: The CPC mandates that parties must disclose relevant documents and evidence to the court within a specified timeframe upon request. If a party fails to comply or provides inadequate disclosure, the court's decision will be based on the available evidence. Documents submitted after the court's deadline are generally inadmissible, except for certain legally defined exceptions.

International cooperation: Vietnam has acceded to the Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, enabling cooperation with other contracting states in evidence collection. However, Vietnam has made a reservation regarding pre-trial discovery of documents as understood in common law jurisdictions, executing letters of request only under specific conditions.

Exceptions and limitations: The concept of privilege in common law does not directly apply in Vietnam. While the Law on Lawyers mandates confidentiality for attorney-client communications, this protection is not absolute. Courts and authorities can compel lawyers to produce client-provided documents or information if necessary for legal proceedings. The Penal Code further narrows this protection by requiring lawyers to report certain crimes, potentially impacting client confidentiality.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Unlike common law systems, Vietnam's CPC does not mandate broad pre-trial discovery or disclosure of evidence between parties. In common law systems, broad pre-trial discovery is a cornerstone of litigation, allowing parties to request and obtain a wide range of evidence from each other and third parties. In contrast, Vietnam's CPC places the onus on the involved parties to proactively gather their own evidence. The court's role is primarily to assist in evidence collection when parties have demonstrated genuine efforts but have been unsuccessful (Article 97 of the CPC). The courts play a limited role in assisting with evidence collection.

To request third-party disclosure, a party must submit a written request to the court:

• detailing:
• • the evidence sought; and
  • the reasons for the request; and
• identifying the third party.

If the court finds the request valid, it may issue an order requiring the third party to provide the specified information. Third parties have a duty to provide requested information/evidence. However, if they cannot comply due to objective reasons (eg, the evidence no longer exists or is unavailable), they must inform the court and explain why (Article 106 of the CPC). Non-compliance with this order can lead to sanctions, including fines or criminal charges in severe cases.

Exceptions: The CPC outlines exceptions to the general rule of disclosure. Article 109.2 states that courts shall not disclose material/evidence contents related to:

• state secrets;
• fine customs and practices of the nation;
• professional secrets; or
• business secrets

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

In Vietnam, the concept of legal privilege is not formally codified under the law, as in common law countries, but there are protections for confidentiality in legal contexts:

• Attorney-client confidentiality: Under Article 9 of the Law on Lawyers 2006 (as amended in 2012), lawyers must maintain the confidentiality of all information obtained while providing legal services, including both oral and written communications. This confidentiality covers:
• • all information relating to the client's case; and
  • matters learned during the course of professional practice.
• Protection of sensitive information: Confidentiality is also protected under other laws:
• • Article 109 of the CPC protects state secrets, business secrets and personal information revealed during court proceedings.
  • Article 128 of the IP Law safeguards sensitive business information, such as trade secrets, in IP disputes. Courts may apply confidentiality measures to protect this information.

Exceptions: Confidentiality is not absolute, as several exceptions apply:

• Client consent: Lawyers can disclose confidential information if they have explicit consent from their client.
• Court orders: Lawyers may be compelled to disclose information by a court order or legal obligation. This applies in civil and criminal cases, with no specific exemptions allowing refusal based on privilege.
• Criminal cases: The obligation of confidentiality is weaker in criminal cases. Article 19 of the Penal Code requires lawyers to report crimes against national security or other extremely serious crimes, even if this requires the disclosure of client information. Investigative bodies also have broad powers to compel lawyers to hand over information.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

The procedures for collecting and presenting evidence in Vietnam, while not specific to trademark infringement litigation, follow the general rules of evidence in civil proceedings. The primary sources for these rules are the Civil Procedure Code (CPC) and the IP Law:

• The burden of proof generally lies with the claimant, which must proactively gather and present evidence to support its claims (Article 91 of the CPC). Plaintiffs typically submit documents such as trademark registration certificates, sales records, advertising materials and infringing product samples to establish ownership and infringement.
• The court may request third parties, such as suppliers or distributors, to provide additional documents or evidence relevant to the case (Article 106 of the CPC).
• The court can issue orders to preserve evidence by seizing infringing goods or freezing assets to prevent destruction or concealment.
• The court may appoint experts to assess whether the defendant's goods or services infringe the plaintiff's trademark (Article 102 of the CPC). In Vietnam, judges rely heavily on the testimonies or opinions of expert witnesses due to their limited knowledge of and experience in IP matters. The Vietnam IP Research Institute (VIPRI) is the only agency officially authorised to issue expert opinions in IP cases. The IP Office of Vietnam (VNIPO) can also provide opinions that carry similar weight.

Presentation of evidence:

• Evidence must be submitted in its original form, unless an acceptable reason is provided for presenting copies (Articles 95, 96 and 97 of the CPC).
• Documents and evidence in a foreign language must be accompanied by a legally notarised and authorised translation into Vietnamese.
• All evidence must be presented clearly and organised, with opportunities to challenge and cross-examine the opposing side's evidence.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

The following types of evidence are generally permissible in Vietnam, including in trademark infringement suits:

• readable, audible and visible materials;
• exhibits;
• parties' testimonies;
• witness testimonies;
• expert conclusions;
• on-site appraisal results;
• common practices;
• property valuation and price appraisal results; and
• other sources prescribed by law.

Expert evidence: Expert evidence is accepted and is commonly used in trademark infringement suits in Vietnam. Due to the technical nature of IP cases and the perceived limited expertise of Vietnamese judges in this area, expert opinions are often highly influential, if not decisive to the outcome of a case. VIPRI is the primary authorised body for providing expert opinions on IP matters, including trademark infringement. The VNIPO can also issue opinions that carry similar weight.

Survey evidence: Survey evidence is permissible in Vietnam, although it is not explicitly mentioned in the legal texts provided. The law allows for "other sources prescribed by law" to be presented as evidence, which could potentially include survey results. However, survey evidence is not commonly used in practice. The cost of conducting a survey can be high, and its admissibility and weight may depend on factors such as:

• the methodology used; and
• the relevance of the survey to the case.

Survey evidence may also be less influential than expert opinions, which are highly valued in the Vietnamese legal system.

In conclusion, both expert evidence and survey evidence are permissible in trademark infringement suits in Vietnam. Expert evidence is widely accepted and frequently used; while survey evidence, although allowed, is less common.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

In Vietnam, evidence obtained in criminal proceedings is generally admissible in civil proceedings and vice versa. Vietnamese law does not prohibit the use of evidence collected in one type of proceeding in the other.

Evidence in civil cases can come from various sources, including "other sources prescribed by law" (Article 94 of the CPC). This broad language allows for the inclusion of evidence gathered during criminal investigations or trials, as long as it:

• has been collected legally; and
• is relevant to the civil case.

Therefore, evidence collected during criminal investigations can be utilised in civil proceedings, particularly where the criminal act directly impacts on civil rights or interests.

Similarly, evidence gathered during civil proceedings can be used in criminal proceedings if it meets the admissibility criteria under criminal law. If the civil evidence pertains to a criminal act, it can be presented to the criminal court during the investigation or trial phase. Article 104 of the Criminal Procedure Code stipulates that courts can consider other relevant evidence, including that obtained from civil proceedings, if it assists in determining the truth of a criminal matter.

Limitations and considerations: While evidence may be transferable between the two types of proceedings, the standards for admissibility differ. Criminal proceedings require a higher burden of proof due to the potential for criminal penalties, whereas civil cases are based on a prominence of evidence. Therefore, while it is possible to use evidence across both domains, parties must consider the context and legal standards applicable to each case.

7.4 What are the applicable standards of proof?

The CPC does not explicitly define the applicable standards of proof. However, it does provide some guiding principles and procedures related to evidence and proof, as follows:

• Burden of proof: The parties have the right and the obligation to "initiatively collect and supply evidence to Courts and prove that their petitions are well grounded and lawful". This suggests that the burden of proof generally lies with the party making a claim or assertion.
• Evaluation of evidence: The law states that "every material and evidence shall be reviewed sufficiently, obviously, comprehensively and publicly" during the adjudication process. This implies a standard where evidence must be thoroughly examined and evaluated.
• Types of evidence: The law:
• • lists various sources of evidence, including testimonies, expert conclusions, documents and objects; and
  • outlines specific requirements for each type of evidence to be considered valid.
• ‘Beyond a reasonable doubt' versus ‘preponderance of the evidence': The law does not explicitly distinguish between these two common standards of proof. However, the emphasis on thorough review and the burden of proof on the claimant might suggest a standard closer to ‘the preponderance of the evidence', where the evidence must show that it is more likely than not that the claim is true.

Generally, the concerned parties must provide sufficient evidence to support their claims (Article 91 of the CPC). Evidence must always possess three essential attributes:

• objectivity;
• relevance; and
• admissibility.

The evidence must be sufficient, clear and convincing to support the claims made.

7.5 On whom does the burden of proof rest?

In trademark litigation in Vietnam, the burden of proof in IP infringement lawsuits in Vietnam rests on both the plaintiff and the defendant, depending on the specific claims and circumstances. This aligns with Article 91 of the CPC:

• Plaintiff's evidentiary burden:
• • Ownership of IP rights: Evidence includes:
  • • registration certificates;
    • extracts from national registers; and
    • other proof of ownership.
  • Infringement: The defendant's use of a similar or identical mark on similar or identical goods or services is likely to cause confusion among consumers, as outlined in Article 129 of the IP Law. This involves providing evidence such as:
  • • expert opinions from VIPRI;
    • advertising materials; and
    • examples of actual confusion.
  • Actual loss and damage: If seeking compensation, the plaintiff must:
  • • prove actual loss and damage suffered due to the infringement; and
    • provide a basis for calculating the amount.
• Defendant's evidentiary burden: While the primary burden rests with the plaintiff, the defendant may have to prove certain defences or counterclaims:
• • Prior use: Evidence of using the mark before the plaintiff's registration.
  • Lack of confusion: Evidence demonstrating that there is no likelihood of confusion between the marks.
  • Invalidity of the plaintiff's trademark: Evidence challenging the validity of the plaintiff's trademark registration because the mark:
  • • is not distinctive; or
    • was registered in bad faith.

Access to evidence: If a party can demonstrate that crucial evidence is under the control of the opposing party and inaccessible, it can request the court to compel the other party to produce that evidence.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

In Vietnam, several defences can be raised against a trademark infringement claim, as follows.

Invalidity of the trademark: The defendant may argue that the plaintiff's trademark is invalid or should be revoked. This can be based on the mark failing to meet protection criteria, such as being non-distinctive, descriptive, deceptive or conflicting with prior rights (eg, a prior registered trademark, well-known mark, trade name, geographical indication, plant variety name or copyrighted work). Other grounds include:

• bad-faith registration;
• non-use;
• flaws in the registration process; or
• violations of public order or morality.

Non-infringement: The defendant may contend that its use of the mark does not create a likelihood of confusion among consumers regarding the origin of the goods or services. This defence often involves a comparison of:

• the marks;
• the goods or services; and
• the marketing channels used by both parties.

Other defences:

• Fair use: The defendant's use of the mark falls under fair use, such as use of a person's name or descriptive terms in an honest manner.
• Prior use: The defendant used the mark before the plaintiff's registration and holds a prior use right, possibly in the form of a trade name.
• Exhaustion of rights: The plaintiff's trademark rights have been exhausted, as the goods bearing the mark were marketed with the plaintiff's consent and can be freely circulated.
• Statute of limitations: The plaintiff's claim is time barred as it was filed outside the statutory limitation period.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

In Vietnam, defendants in trademark infringement lawsuits can counterclaim for trademark revocation or invalidation, as allowed under both civil procedure principles and the IP Law.

The grounds for such counterclaims are specified in Articles 95 and 96 of the IP Law. Article 95 allows for trademark termination due to reasons such as:

• non-payment of renewal fees;
• voluntary relinquishment;
• business cessation;
• non-use for five consecutive years; or
• the mark becoming deceptive or generic.

Article 96 permits invalidation based on factors such as:

• bad faith;
• lack of entitlement to registration;
• ineligibility for protection;
• prior conflicting rights;
• consumer confusion caused by use of the trademark;
• trademark genericness; or
• unauthorised application amendments.

The process for a counterclaim is as follows:

• The defendant can initiate the revocation or invalidation process by filing a request with the IP Office of Vietnam (VNIPO). The request must:
• • clearly state the grounds for invalidation; and
  • be accompanied by supporting evidence.
• The VNIPO will then:
• • examine the request;
  • examine the documents/evidence submitted by both parties; and
  • issue a decision to invalidate the trademark or reject the request.
• The defendant can file a counterclaim with the court hearing the infringement case, attaching the revocation or invalidation request filed with the VNIPO in the response to the infringement lawsuit. The court may suspend proceedings under Article 214.1(d) of the Civil Procedure Code (CPC) pending the VNIPO's decision or proceed with the case.
• The court will ultimately review all evidence and arguments presented by both parties, including the outcome of the VNIPO's invalidation proceeding, before ruling on both the infringement claim and the counterclaim.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

Even a valid trademark can be unenforceable against a defendant under certain circumstances in Vietnam:

• Lack of distinctiveness: A trademark that lacks the ability to distinguish goods or services may be unenforceable if it is too generic, descriptive or common in the relevant industry.
• Conflict with prior rights: A registered mark is unenforceable if it conflicts with prior rights, such as:
• • a widely recognised mark;
  • a trade name;
  • an industrial design; or
  • a copyright.
• Prior use: A defendant can argue unenforceability if it proves that it was using the mark in good faith before the plaintiff's registration or use.
• Bad faith: A trademark registered in bad faith may be unenforceable.
• Non-use: A trademark that has not been used for five consecutive years without a justifiable reason may have its registration terminated, making it unenforceable.
• Misleading use: If a trademark misleads consumers regarding the nature, quality or origin of goods or services, it may be deemed unenforceable.
• Genericness: If a trademark becomes the common name for the goods or services it represents, it may lose distinctiveness and become unenforceable.

The CPC also impacts on trademark enforceability through procedural mechanisms:

• Statute of limitations: A defendant can argue that the trademark owner's claim is unenforceable due to failure to act within the statute of limitations, causing prejudice to the defendant (Article 184).
• Unclean hands: If the trademark owner has engaged in misconduct, the principle of unclean hands may prevent it from enforcing its rights (general principles of the CPC).

The defendant bears the burden of proving the trademark's unenforceability; but the final decision rests with the court, which will consider all presented facts and arguments.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

In Vietnam, mediation and other forms of settlement discussions are encouraged and, in some cases, are required by law.

Civil suits: The courts are responsible for conducting mediation and creating favourable conditions for the parties to reach agreement with one another on the resolution of civil cases (Article 10 of the Civil Procedure Code (CPC)), except where:

• the case involves matters that cannot be mediated by law; or
• the parties have explicitly agreed to opt out of mediation (Articles 205, 206 and 207 of the CPC).

Mediation is a mandatory step in Vietnamese civil proceedings, including those involving IP disputes. Parties are often required to participate in mediation efforts as a first step to resolve disputes amicably. If mediation fails, the case can then proceed to litigation. If mediation leads to a settlement, the agreement is enforceable, which means that the court will recognise and formalise the agreement as a judgment or decision (Article 212 of the CPC).

Criminal proceedings: Mediation and settlement discussions are not applicable in criminal proceedings. The Criminal Procedure Code lacks provisions for mediation, as criminal cases are prosecuted by the state, focusing on public justice and punishment. However, Article 155 allows victims to withdraw their complaints in certain minor cases, leading to dismissal. This is not formal mediation, but it can result in the case being dropped if the victim chooses not to pursue prosecution. Overall, criminal law emphasises punishment over reconciliation or settlement between parties.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Proceedings of IP disputes or infringement, whether administrative or civil, can be stayed or discontinued in view of settlement discussions:

• Administrative procedure: If the parties involved in an IP dispute reach a mutually agreeable settlement and the proposed solution aligns with IP laws and does not harm any third-party interests (Article 27.2 of Decree 99/2013/ND-CP), the administrative enforcement authorities will acknowledge the settlement and end the proceedings.
• Civil procedure: The CPC provides mechanisms for pausing or ending legal proceedings through mediation or settlement:
• • Stay of proceedings (Article 214): If both parties agree to settlement discussions during litigation, they can request the court to temporarily suspend the proceedings to allow for negotiations.
  • Discontinuation of proceedings (Article 217(1)(c)): If a settlement is reached, the plaintiff can withdraw the lawsuit and the court will dismiss the case, making the settlement legally enforceable.
  • Court-facilitated mediation (Article 205): Courts must organise mediation sessions before or during litigation. If successful, the court will issue a decision based on the settlement, ending the proceedings.
  • Binding effect of settlement (Article 212): Settlements reached during litigation are legally binding and the court formally closes the case once the settlement is recognised.
• Criminal proceedings: In contrast, in criminal cases, settlement discussions generally do not apply, as criminal law focuses on punishing wrongdoing rather than resolving disputes between the parties. However, in minor criminal cases where the victim decides to withdraw its complaint (per Article 155 of the Criminal Procedure Code), the case may be discontinued, although this is not considered a settlement process.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

The results of settlement discussions, if successful, must be reported to the court or the administrative enforcement authorities.

Administrative enforcement: If the involved parties reach a settlement during the handling of the complaint, the administrative enforcement authorities must be informed. They will then acknowledge the settlement and terminate the administrative proceedings.

Civil litigation: If the parties reach agreement during the pre-trial mediation phase or during the court-connected mediation process, this agreement must be made in a written document:

• detailing the terms of the settlement;
• signed by both parties; and
• submitted to the court for approval.

If the agreement is found not to be contrary to the law or social ethics, the court will issue a decision to recognise the agreement.

The implications of reporting a successful settlement to the court are as follows:

• Termination of proceedings: The court and/or administrative enforcement authorities will officially acknowledge the settlement and end the ongoing proceedings, whether administrative or civil.
• Enforceability of the settlement: The court's recognition of the settlement gives it legal weight, making it enforceable like any other court judgment. If one party fails to comply with the terms of the settlement, the other party can seek enforcement through the court.
• Finality: In most cases, the court's decision to recognise a settlement is final and cannot be appealed, providing a sense of closure to the dispute.
• Potential cost savings: Reaching a settlement can save both parties the time and costs associated with protracted litigation.
• Preservation of relationships: Settlement can be a less adversarial way to resolve disputes, potentially preserving business relationships between the parties.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

In Vietnam, court proceedings are generally public, upholding the principle of transparency in the judicial process (Article 15 of the Civil Procedure Code (CPC)). However, the law provides for exceptions where the court may conduct closed-door trials to protect specific interests.

The grounds for conducting private proceedings include:

• the protection of state secrets;
• the preservation of the nation's cultural and moral values;
• the protection of the welfare of minors; and
• the maintenance of confidentiality over professional, business, personal or family secrets, particularly where requested by a party.

Options for confidentiality: Even in public trials, a party can request the court to keep specific materials or evidence confidential if disclosure could compromise:

• state secrets;
• cultural sensitivities;
• trade secrets;
• personal privacy; or
• family matters.

The court will assess the request, weighing the need for transparency against the potential harm of disclosure.

Judgments and decisions are typically published online, although those containing confidential information are exempt from publication (Article 109.2 of the CPC). Under Articles 269 and 315 of the CPC, effective first-instance and appellate judgments must be posted on the court's e-portal, except for those containing information that must be kept confidential as outlined in Article 109. The exemption is not automatic - it requires a legitimate request from a party to keep the information confidential. The court will then decide whether to grant the request based on:

• the merits of the case; and
• the nature of the confidential information.

Even in closed trials, the court will publicly pronounce at least:

• the commencement of the proceedings; and
• the final judgment (Article 267 of the CPC).

10.2 Can a trademark owner sue for infringement and passing off in the same action?

Yes, a trademark owner in Vietnam can pursue claims for both trademark infringement and passing off (unfair competition) in the same legal action. The legal framework in Vietnam allows for this, as the concepts of trademark infringement and passing off - while distinct - can often overlap in practice:

• Trademark infringement occurs when someone uses a trademark that is identical or confusingly similar to a registered trademark, without the owner's permission, in connection with goods or services that are identical or similar to those for which the trademark is registered
• Passing off is a common law concept that is not explicitly recognised in Vietnamese law. However, Article 130 of the IP Law prohibits acts of unfair competition, which could encompass some aspects of passing off. Passing off involves misrepresenting one's goods or services as those of another - typically through the use of similar branding or trade dress (even if the mark/trade dress is not registered) - leading to consumer confusion.

Trademark infringement and passing off can coexist and the Vietnamese legal system allows a trademark owner to address both in a single lawsuit. Article 188.1 of the CPC allows for claims to be joined in one lawsuit if they share a factual basis or are related. This provision enables a trademark owner to combine infringement and passing off (under the guise of unfair competition) claims in the same lawsuit, as long as they stem from the same or a connected set of facts.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

In Vietnam, trademark infringement can be addressed through administrative or judicial (civil or criminal) avenues, each with its own distinct procedural steps:

• Administrative enforcement:
• • Filing of the petition: The trademark owner submits a petition to the relevant authorities with evidence of ownership and infringement.
  • Verification: The authorities verify the alleged infringement through information requests, expert assessments and inspections.
  • Hearing or raid: The authorities may conduct a hearing or raid. If infringement is confirmed, they may issue a ‘conclusion on inspection' or a ‘sanctioning decision', which may involve:
  • • fines;
    • confiscation of goods; or
    • orders to cease the infringement.
  • Settlement option: The parties may reach an amicable settlement, recognised by the authorities.
• Judicial enforcement:
• • Filing of the lawsuit: The trademark owner files a lawsuit in court with evidence of ownership and infringement.
  • Preliminary injunctions: The trademark owner may request injunctions to prevent further infringement during litigation.
  • Court mediation: The court may offer mediation before trial.
  • Trial proceedings: If mediation fails, the case proceeds to trial, where the court issues a judgment.
  • Appeal: The parties can appeal the first-instance decision within 15 days if dissatisfied.
• Validity proceedings: Validity challenges are handled separately through an invalidation process:
• • Filing of an invalidation request: The challenger must file a request with the IP Office of Vietnam (VNIPO) within five years of registration. However, no statute of limitations applies where the applicant filed an application for registration in bad faith.
  • Examination: The VNIPO reviews the request, allowing both parties to submit evidence.
  • Decision: The VNIPO issues a decision, which can be:
  • • appealed to the Ministry of Science and Technology; or
    • challenged in court.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

The typical timeframe for trademark infringement proceedings in Vietnam varies depending on the chosen enforcement route:

• Administrative actions: These are generally faster than court proceedings, taking approximately two to four weeks for straightforward cases. However, complex cases or those involving multiple parties may take longer.
• Civil litigation: The civil procedure should take approximately six months to a year for a straightforward dispute. However, in practice, it can take longer (ie, one to three years), due to court delays and the defendant's actions.
• Criminal prosecution: The timeframe for criminal cases can range from less than one year for administrative sanctions to one to three years for criminal sanctions, depending on the complexity of the case.

Fast-track procedure: A fast-track procedure - referred to as a ‘simplified procedure' - is available for certain civil lawsuits that meet specific conditions, such as those involving:

• simple details;
• clear legal relationships; and
• sufficient evidence.

These simplified procedures can lead to a faster resolution, with the court required to hold a trial within 10 days of issuing the decision to bring the case to trial (Articles 316-321 and 322-324 of the CPC).

Typical timeframe for trademark validity proceedings: Trademark validity is handled separately from infringement proceedings. If a trademark's validity is challenged, the invalidation proceedings typically take two to three years, or even longer. The timeframe can vary depending on:

• the complexity of the case;
• the number of parties involved; and
• the level of evidence and arguments presented.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

Vietnamese law generally upholds the principle of territoriality, meaning that its courts primarily have jurisdiction over matters occurring within Vietnam's borders. In trademark infringement cases, the Vietnamese courts' primary focus is on:

• protecting trademarks registered in Vietnam; and
• addressing infringing activities occurring within Vietnam.

Although the Vietnamese courts primarily focus on territorial jurisdiction, they can exercise jurisdiction over trademark infringement cases where the infringing acts have a connection to the Vietnamese market, even if the infringer is not physically located in Vietnam. This is supported by Article 72.4 of Decree 65/2023/ND-CP, which clarifies that acts occurring online and targeting Vietnamese consumers or using the Vietnamese language are considered to take place in Vietnam.

Therefore, a Vietnamese court could potentially issue an injunction against a foreign entity in a trademark infringement case, even if it has no physical presence in Vietnam, provided that its actions impact on the Vietnamese market or consumers. This injunction will likely be aimed at stopping the infringing activities that affect Vietnam, thereby preventing harm to the Vietnamese market and consumers, rather than directly controlling the entity's actions outside of the Vietnamese territory.

However, the grant of cross-border or extraterritorial civil remedies is unprecedented. Enforcing such an injunction against a foreign entity can be complex and may require cooperation through international treaties or bilateral agreements. The Vietnamese court will also need to ensure proper notification and due process for the foreign defendant.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

The influence of decisions of national or foreign courts or bodies on Vietnamese court decision in IP enforcement cases depends on the type of ruling and the specific context of the case:

• Prior national court rulings: The Vietnamese legal system generally does not consider prior national court rulings as binding precedent, except for certain cases decided by the Supreme People's Court. In most instances, the courts primarily rely on the applicable laws rather than previous decisions.
• Foreign court rulings and opinions: While not bound by them, Vietnamese courts and administrative bodies are open to considering foreign court rulings and opinions for guidance. This is particularly true in areas of law that are less developed or where there is a lack of clear domestic precedent, such as unfair competition cases.
• Decisions of international bodies: Decisions of international bodies have limited influence. Although Vietnam is a member of various international treaties and IP-related agreements, these do not automatically become domestic law. The Vietnamese government must incorporate these agreements into national law or decide on their direct application.

In summary, while the Vietnamese courts are not obliged to follow the decisions of other courts or international bodies, they may consider them as reference materials or persuasive evidence, especially in cases involving complex legal issues or areas where domestic law is not well developed. The extent of this influence will depend on:

• the specific facts and circumstances of each case; and
• the discretion of the presiding judge.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

The remedies available to a trademark owner for infringement in Vietnam vary depending on the legal avenue pursued. The available remedies under the administrative, civil and criminal avenues are as follows:

• Administrative remedies: The authorities may order the forcible removal or destruction of infringing elements, including trademarks on products or packaging. The infringing goods and related materials may also be destroyed. Infringers can face:
• • business suspensions for up to three months;
  • fines of up to VND 500 million for organisations (VND 250 million for individuals); and
  • the remittance of illicit earnings.
• Additionally, infringers may be required to change infringing enterprise names or domain names.
• Civil remedies: Trademark owners can seek court-ordered injunctions to halt infringing activities. Courts may also mandate public apologies and corrections of misinformation. Damages may be awarded based on:
• • actual losses;
  • infringer's profits; or
  • a reasonable licensing fee.
• Damages are capped at VND 500 million if they cannot be precisely determined. The court may also order the destruction of infringing goods and materials or implement other remedies, such as asset seizure, to ensure payment.
• Criminal remedies: In cases of severe infringement, particularly involving large-scale counterfeiting or significant public harm, criminal charges may lead to imprisonment. Criminal fines may also be imposed, which will vary depending on the severity of the offence.

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Punitive damages are damages awarded in excess of actual losses, intended to punish the infringer and deter future misconduct. Punitive or enhanced damages, as understood in some Western legal systems, are not explicitly recognised or available under Vietnamese law. The general principle in Vietnam is that damages are meant to compensate the trademark owner for its actual losses, not to punish the infringer.

While punitive damages are not directly available, certain provisions in Vietnamese law can result in higher damages awards that may indirectly serve a somewhat punitive or deterrent function:

• Infringer's profits: Courts can award damages based on the profits gained by the infringer. This provision incentivises trademark owners to pursue cases where significant profits have been made from the infringement, indirectly serving a punitive function.
• Reasonable licensing fees: Where actual losses or infringer's profits are difficult to quantify, damages may be based on a reasonable licensing fee that the infringer would have paid for lawful trademark use.
• Statutory damages: Where the actual damages or infringer's profits are difficult to determine, the court can award statutory damages of up to VND 500 million. This provides a minimum level of compensation even where proving actual losses is challenging.
• Administrative fines: While the Law on Handling of Administrative Violations does not directly mention ‘wilful infringement', it accounts for intent through ‘aggravating circumstances', such as repeated or organised violations. Higher fines can be imposed in such cases, reflecting the seriousness of deliberate infringements and serving as a deterrent.

11.3 What factors will the courts consider when deciding on the quantum of damages?

IP infringements give rise to both material and moral damages. The quantum of damages in such cases is determined based on several key factors as outlined in Article 205 of the IP Law.

Material damages: These may be established through one of the following grounds under Article 205.1:

• Financial losses and infringer's profits: The court will assess the total financial losses incurred by the plaintiff, encompassing:
• • lost profits;
  • decreased income;
  • loss of business opportunities; and
  • reasonable expenses incurred to mitigate the damages.
• The burden of proving and quantifying these losses rests with the plaintiff. Additionally, the court will consider the profits unjustly gained by the defendant as a result of the infringement.
• Licensing fee: The court may use a hypothetical licensing fee that the infringer would have paid had it obtained a legitimate licence.
• Other material losses: The plaintiff may calculate and present evidence of other material losses incurred due to the infringement.
• Maximum statutory damages: If it is impossible to determine material losses using the above methods, the court has discretion to award damages up to a maximum of VND 500 million, based on the extent of the loss.

Moral damages: The court will assess the extent of moral damage suffered by the plaintiff and award damages ranging from VND 5 million to VND 50 million.

Legal costs: The plaintiff can request the court to order the infringer to pay reasonable attorneys' fees incurred in pursuing the case.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Yes, the decision of a first-instance court or body in Vietnam can generally be appealed, with the process varying depending on whether the proceedings are civil, administrative or criminal.

Civil proceedings:

• Grounds:
• • Unlawful judgment - the judgment violates the law, resulting in an incorrect, unfair or illegal trial); and/or
  • Procedural violations - the court seriously violated procedural rules, such as by:
  • • denying the parties' rights;
    • failing to gather sufficient evidence; or
    • not following proper procedure.
• Process (Articles 272 and 274 of the CPC): An appeal must be filed with the appellate court (provincial or superior people's court) within 15 days of the first-instance judgment.
• Further appeals: Appeals are possible to the Judges' Committee of the People's High Court or the Judges' Council of the Supreme People's Court, but only if there are significant errors or new crucial facts.

Criminal proceedings:

• Grounds:
• • Errors in proceedings;
  • Misinterpretations of the law; or
  • New evidence.
• Process (Articles 332 and 334 of the Criminal Procedure Code): Appeals must be filed within 15 days of the judgment. The appellate court reviews the case and can uphold, modify or overturn the decision.
• Further appeals: Limited further appeals to the Supreme People's Court are possible under supervisory and review procedures, similar to civil cases.

Administrative proceedings:

• Grounds: The decision is unlawful or infringes the rights of the appellant.
• Process (Articles 205 and 207 of Law on Administrative Procedure): The first appeal is made to the authority that issued the decision. If unresolved:
• • a second appeal can be filed with a superior authority; or
  • an administrative lawsuit can be initiated in court.
• Further appeals: If the second appeal fails, the complainant can file an administrative lawsuit in court.

12.2 What is the average time for each level of appeal in your jurisdiction?

The average time for the appeal process in Vietnam varies depending on:

• the nature of the proceeding; and
• the specific court handling the case.

The typical duration for each level of appeal is as follows:

• Civil proceedings: The appellate court typically takes five to 12 months to resolve an appeal.
• Criminal proceedings: The appeal process in criminal cases usually takes one to four months, depending on the complexity of the case.
• Administrative proceedings: The timeframe for resolving an administrative appeal can range from four to 15 months, depending on:
• • the complexity of the case; and
  • the specific administrative authority involved.

These are average timeframes and the actual duration of an appeal can be longer or shorter depending on the specific circumstances of the case. Factors such as the following can all impact on the length of the appeal process:

• the court's workload;
• the complexity of the legal issues; and
• the availability of evidence

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

Litigating in Vietnam incurs various types of costs and fees, which can include the following:

• Court fees: These are required at both the first-instance and appeal stages. The fees depend on the case type and the dispute value, with civil cases calculated as a percentage of the claim amount.
• Attorneys' fees: Legal costs vary based on:
• • the complexity of the case;
  • the law firm's reputation; and
  • the duration of the case.
• They include:
• • consultation;
  • document preparation; and
  • court representation.
• Expert witness fees: If expert testimony or assessments are needed, the hiring party bears these costs, especially in complex cases.
• Translation fees: Costs are incurred if documents or evidence must be translated into Vietnamese.
• Other related costs: These may include expenses for:
• • evidence collection;
  • travel; and
  • other administrative needs.

Cost recovery for the winning party: Under Vietnamese law, the winning party may be entitled to recover certain costs from the losing party. However, the recovery of costs is not automatic and is subject to the court's discretion. Generally, the following costs can be recovered:

• Court fees: The losing party is typically ordered to reimburse the winning party for the court fees paid.
• Attorneys' fees: The prevailing party is generally entitled to recover reasonable legal fees from the losing party. The court determines the reasonableness of these fees based on objective evidence such as contracts and invoices, without considering the parties' conduct or settlement offers.
• Other costs: The costs of expert witnesses, translation and other necessary expenses may be recoverable, again subject to the court's discretion and evidence that these costs were necessary and reasonable.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

In Vietnam, contingency fee arrangements and other alternative fee arrangements are generally permitted but must comply with specific legal and ethical guidelines. The Law on Lawyers and the Code of Ethics and Professional Conduct for Lawyers in Vietnam set out the framework for these arrangements, as follows:

Contingency fees: Contingency fees – where the lawyer's fee is contingent on the success of the case – are allowed in Vietnam, particularly in civil, administrative and commercial cases. Article 55.2 of the Law on Lawyers allows for flexible fee arrangements between lawyers and clients, including:

• hourly rates;
• fixed fees; or
• percentages of the claim value or project value.

Any fee agreement must be in writing and clearly outline the terms, including the specific percentage or amount of the contingency fee payable upon success.

While the Law on Lawyers does not set a specific cap on contingency fees, it emphasises that all legal fees must be reasonable and commensurate with the nature and complexity of the case. In practice, contingency fees typically range from 20%-30% of the amount recovered, but this can vary depending on the specifics of the case. It is crucial that the fee agreement clearly defines ‘success' and how the contingency fee will be calculated

Other alternative fee arrangements: Besides contingency fees, other alternative fee arrangements – such as fixed fees, hourly rates and blended fee structures – are also common and permissible. Lawyers and clients can freely negotiate these arrangements, provided that they are:

• fair;
• reasonable; and
• agreed upon in writing.

13.3 Is third-party litigation funding permitted in your jurisdiction?

Third-party litigation funding (TPLF) is not explicitly regulated in Vietnam and there is no specific legal framework that either permits or prohibits it. Without express prohibition, TPLF is likely permissible, provided that it:

• adheres to the general principles of Vietnamese civil law – particularly the principle of freedom of contract; and
• does not violate any existing regulations.

TPLF remains a relatively emerging practice in Vietnam. While not explicitly prohibited, the lack of a clear legal framework creates uncertainty and potential risks for both funders and litigants.

This absence of regulation raises concerns regarding the following:

• Enforceability of funding agreements: Without a legal framework, the enforceability of contracts between funders and litigants may be challenged.
• Legal risks for participants: Funders and litigants may face unforeseen legal challenges due to the lack of defined roles, responsibilities and limitations.
• Conflicts of interest: The involvement of a third-party funder could create potential conflicts of interest, particularly regarding litigation strategy and settlement decisions.
• Undue influence: Funders might exert undue influence on litigation strategy, potentially compromising the litigant's autonomy and objectives.
• Increased litigation volume: The availability of TPLF could potentially:
• • lead to an increase in frivolous lawsuits; or
  • incentivise prolonging litigation.

Funders are generally not considered parties to the litigation. Consequently, they are typically not directly liable for adverse costs awarded to the opposing party.

As TPLF continues to evolve in Vietnam, the development of a comprehensive regulatory framework will be crucial in order to:

• provide clarity;
• mitigate risks; and
• ensure the ethical and responsible use of this funding mechanism.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

In Vietnam, the trademark regime operates on a first-to-file basis. However, there are limited cases in which protection for unregistered trademarks is granted:

• Well-known marks: Unregistered marks that are recognised as well known in Vietnam can receive protection under the IP Law. A well-known mark is protected regardless of whether it is registered, provided that it meets the criteria for being well known, such as widespread recognition and use in commerce (Articles 4.20, 6.3(a) and 75 of the IP Law).
• Unfair competition: Unregistered marks may also be enforceable if they fall within the scope of ‘unfair competition' under Article 130 of the IP Law. If a competitor uses an unregistered mark in a manner that causes confusion or takes unfair advantage of the reputation of the original mark, the owner of the unregistered mark may have grounds to pursue legal action under Vietnam's laws against unfair competition.

However, the protection afforded to unregistered marks is narrower and more difficult to enforce than that afforded to registered marks. Therefore, it is generally advisable for businesses to register their trademarks to secure stronger legal protection in Vietnam.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

Foreign trademarks not registered in Vietnam may nevertheless be enforced under certain circumstances provided for by Vietnamese law and international agreements. The primary scenarios include the following.

Well-known marks: Even without local registration, Vietnam affords protection to foreign trademarks recognised as ‘well known'. Trademark owners must prove their mark's well-known status in Vietnam according to the criteria outlined in Article 75 of the IP Law.

Enforcement is available against the unauthorised use of identical or similar marks that cause consumer confusion or create a misleading impression of association with the well-known mark (Article 13.3 of Circular 11/2015/TT-BKHCN). This protection extends to dissimilar goods or services, preventing use that dilutes the distinctiveness or reputation of the well-known mark.

Unfair competition: Vietnamese law offers protection against acts of unfair competition involving foreign trademarks, even if unregistered. If a third party utilises a foreign mark in a manner that causes consumer confusion or unfairly exploits the mark's reputation, the trademark owner may have grounds for legal action based on unfair competition principles.

Copyright: Unregistered trademarks may find protection through copyright if they are part of a logo or artistic work. Under Article 14 of the IP Law, copyright protects original works of authorship, including logos and designs. If a logo containing an unregistered trademark is original, the owner can enforce its rights against unauthorised reproduction or use under copyright regulations. However, while copyright provides some level of protection, it does not confer exclusive rights to the trademark itself.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

The current trademark litigation landscape in Vietnam is characterised by a multifaceted approach to enforcement, with options for administrative, civil and criminal actions. The chosen route depends on factors such as:

• the severity of the infringement;
• the desired remedies; and
• evidence.

Administrative actions are common for their efficiency, especially in case of minor infringements. Civil litigation is increasingly used when seeking damages, injunctions or apologies – particularly in complex cases or those involving online infringement. Criminal prosecution is reserved for the most serious cases, typically involving large-scale counterfeiting or significant consumer harm.

Prevailing trends: The prevailing trends in Vietnam's trademark litigation landscape include:

• increased use of civil litigation for specific remedies and complex disputes;
• a growing reliance on expert opinions to support enforcement actions;
• a shift towards online enforcement due to the rise of e-commerce and social media platforms; and
• proactive efforts by authorities to combat online infringement through taskforces and collaboration with platforms.

Anticipated developments in the next 12 months: One significant anticipated development is the establishment of specialised IP Courts of first instance in key urban centres such as Hanoi, Da Nang and Ho Chi Minh City. This specialised court system addresses the growing complexity and volume of IP disputes in Vietnam. It is expected to:

• expedite the adjudication process; and
• improve the quality of decisions in IP-related cases.

The current system has faced criticism due to protracted proceedings and inconsistent rulings, and trademark owners thus view litigation as a last resort. Consequently, we can also anticipate legislative reforms necessitating amendments and supplements to existing regulations – particularly:

• the Civil Procedure Code; and
• the Law on Administrative Procedures.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Recommendations:

• Seek professional advice early: Engage experienced IP lawyers or agents familiar with Vietnamese law to guide you through the complexities and develop an effective litigation strategy.
• Investigate the infringer: Thoroughly investigate the alleged infringer to assess the validity of your claims and identify potential third-party rights.
• Gather strong evidence: Collect comprehensive evidence of:
• • trademark ownership;
  • infringement; and
  • damages incurred.
• Expert opinions from the Vietnam IP Research Institute and/or the Intellectual Property Office of Vietnam can be valuable, especially in complex cases.
• Consider alternative dispute resolution: Explore mediation and arbitration as alternatives to litigation – they can be faster and less expensive and can help to preserve business relationships.
• Be prepared for delays: Trademark litigation in Vietnam can be time-consuming. Stay informed and ensure that your case progresses efficiently by maintaining open communication with the court and your legal representatives.
• Understand the available remedies: Familiarise yourself with the civil, administrative and criminal remedies available for trademark infringement to set realistic expectations and pursue the most appropriate course of action.

Potential pitfalls:

• Limited IP expertise: Some enforcement authorities and judges may have limited experience with IP cases, which can pose challenges in proving your case. Expert opinions may be crucial in overcoming this hurdle.
• Enforcement challenges: Despite progress, it can still be difficult to enforce court orders and judgments in Vietnam. Be prepared for potential obstacles in obtaining and executing remedies.
• Counterclaims: The opposing party may challenge the validity of your trademark. Be ready to defend your rights and address counterclaims.
• Cost and time commitment: Litigation can be lengthy and expensive. Consider the potential costs and time involved before initiating legal action.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.