Tiếng Việt
中文 (中国)
After suspending the validity of the Criminal Code 2015 for one year, the National Congress of Vietnam has just issued the law on amending and supplementing some articles of the criminal code on June 20th, 2017 in which the crimes related to the Intellectual Property Rights (IPRs) also have been significantly amended and will come into effect from January 01st, 2018.
In regards of the IPRs, in comparison with the Criminal Code 1999 (which has been amended and supplemented by the law on amending and supplementing some articles of the Criminal Code on June 19th, 2009), the Criminal Code 2015 deleted the crimes of breaching the regulations on the granting of industrial property protection deeds. This is the result of practical implementation of the Criminal Code 1999 in more than 15 years since the effective date of this code. The lawmakers realized that it is not necessary to punish the people who are competent to grant protection deeds to industrial property objects in Vietnam by the sentences of the criminal measures. Therefore, from the effective date of the Criminal Code 2015 (January 01st, 2018), breaching the regulations on the granting of industrial property protection deeds will not be considered as a crime.
The Criminal Code 2015 has 02 (two) Articles for 02 (two) crimes on intellectual property rights (IPRs) including the infringement of copyright and related rights and another one is infringement of industrial property rights with the same infringement activities, namely:
– In regard of copyright and related rights: the activities of i) reproducing works, phonograms or video recordings and ii) distributing to the public copies of works, phonograms or video recordings;
– In regard of industrial property rights: the activities of infringement against the trademark and geographical indication which are currently protected in Vietnam in the form of counterfeit trademark or counterfeit geographical indication only.
However, there are 02 (two) majority differences between the Criminal Code 1999 and the Criminal Code 2015 which shall be considered as the revolution in lawmaking until now:
a. The criminal responsibility of corporate legal entity.
From January 01st, 2018, the corporate legal entity shall bear the criminal responsibility for the crimes which are performed by a corporate with the conditions of i) the criminal offence is committed in the name of the corporate legal entity; or ii) the criminal offence is committed in the interests of the corporate legal entity; iii) the criminal offence is under instructions or approval of the corporate legal entity; iv) the time limit for criminal prosecution has not expired. The corporate legal entity shall bear the criminal responsibility for the infringement upon copyrights and/or related rights and the infringement upon trademark and geographical indication.
This is very important for fighting against the disease of IPR infringement because the practice of settling the infringement actions against the IPRs in 11 years since the effective date of Law on IPRs showed that almost infringement cases in this period have been performed by legal corporate entities even that such legal corporate entities have been established and operated for the purpose of infringing upon the IPRs protected in Vietnam. However, the punishment measures of Law on handling administrative violations are not strict enough for deterring the infringers. In many cases, the infringers are willing to pay the fine and then continuously perform the infringement against another IPRs. Under the new Criminal Code , a legal corporate entities could be applied many sentences such as the suspension of operation, permanent shutdown, prohibition from operating in certain fields, prohibition from raising capital which are strict enough for forcing the infringers to give up their infringements.
b. The signs of crimes relating to the IPRs are very clear.
Although, the Criminal Code 2015 used the sign of “on the commercial scale” which is the same with the Criminal Code 1999 and has not been guided clearly until now, the Criminal Code 2015 used another signs for settling the crimes on IPRs including (i) the illegal profit, (ii) the loss/damage of the holders/owners of copyrights, related rights and trademark, geographical indication or (iii) the amount of the violating goods. In addition, the history of crime or administrative violation of the infringers will be a legal basis for settling the violation. The quantities of these signs have been pointed out, therefore, it will be easy for the owners as well as the authority state bodies in settling the infringement actions against intellectual property.
However, there are some issues that need to perfect in order to ensure the implementation of the new code relating to the IPRs as below:
– Regarding to the sign “on the commercial scale”, this sign has been used for determining the crime on the IPRs in the Criminal Code 1999 which is amended and supplemented in 2009. This amendment has been made in order to accordance with the international treaties in which Vietnam is a member. However, there are no any regulations for detailed guidelines on this matter. It leads to the result that many IPRs infringement cases could not be handled and settled under the criminal procedure in many years.
According to the statistics of the Ministry of Science & Technology, the number of violating intellectual property right cases has complicatedly increased in Viet Nam. Vietnam Trademark and branding infringement of famous brands occur in various fields from clothing, cigarettes, food and beverage, etc. to all kinds of industrial machinery. Counterfeit products are publicly sold in the market at half or even 1/3 of authentic products’ prices. From 2012-2015, the authority state agencies received 18,329 cases with signs of intellectual property infringement, producing and trading counterfeit goods, with administrative penalty up to 73 billion Dong; prosecuted 120 cases of counterfeits and intellectual property infringement with 196 defendants. However, only 84 cases with 140 defendants have been indicted by the procuratorial authorities.
– In regards of “illegal profit”, currently there are no any regulations for determining what is the illegal profit in order to be legal basis for criminal procedure. Please note that “illegal profit” is absolutely different from “illegal gains” which is regulated at Article 37 of Law on handling the administrative violation and Circular No. 149/2014/TT-BTC.
– Relating to “the loss/damage of the holders/owners”, currently, this sign has been regulated in Decree No. 105/2006/NĐ-CP which has been amended and supplemented by Decree No. 119/2010/ND-CP. Therefore, we could determine the “the loss/damage of the holders/owners” of the IPRs based on this decree. The problem in this case is that in order to determine “the loss/damage”, it is required to be evaluated by an examiner of an examination organization. However, there is only Vietnam Intellectual Property Research Institute (VIPRI) that is the examination organization in the field of Industrial Property Rights while there is no examination organization in the field of Copyright and Related rights. Therefore, it is required to establish an examination organization for Copyright and Related rights as soon as possible as well as the examination organizations need to complete the procedure for examining “the loss/damage”;
In order to resolve the aforementioned issues, it is required to have the detailed guideline on this sign in the form of a joining circular among Ministry of Justice (MOJ), Ministry of Public Security (MPS), The Supreme People’s Court of Vietnam (SPC) and The Supreme People’s Procuracy of Vietnam (SPP) or only a resolution of Judge Council of SPC.
To sum up, it is believed that the Criminal Code 2015 will become effective legal foundations against the crimes including the crimes on the IPRs in Vietnam.
*Fully published on Vietnam Law Magazine by Lawyer Pham Duy Khuong, ASL LAW – Vietnam IP Firm
