As part of Vietnam's continuing effort to fine tune its legal framework since the country acceded to TRIPs in 2007, on 1 April 2011, the Ministry of Finance issued Circular No. 44/2011/TT-BTC Providing Guidelines for Combating Counterfeit Goods and Protecting Intellectual Property Rights in Customs Field (Circular 44) which took effect on 1 May 2011. Owners of registered trademarks in Vietnam who have also registered their trademarks with Vietnam customs should be aware of the new rules, including the time frames within which certain action must be taken.
Circular 44 applies not only to counterfeiting, but to other conduct aimed at deceiving consumers, namely:
- importing goods which are not in accordance with their purported origin, nature, name and utility (as indicated, for example, on their labels);
- using deceptive indications, including deceptive labeling, decals, warranty cards, or shrink wrap packaging that provide false names and addresses or which falsify the place the goods were manufactured, assembled, or packaged;
- importing (1) counterfeit goods, including goods with trademarks that are identical to or which infringe a protected trademark without the trademark owner's consent, or which use a protected geographical indication without permission from the relevant certifying agency and (2) copies of works that are the subject of copyright or related rights.
Contents of Circular 44 consists of five parts, but is divided into two main parts. The first part relates to inspections, supervision and control by Vietnam customs of deceptive goods and goods which infringe the intellectual property rights of others. The second part relates to the procedures by which an intellectual property rights owner may request either (1) inspection of suspected infringing goods in a particular case, or request long term monitoring of imported and exported goods that infringe the applicant's intellectual property rights and (2) suspension of customs procedures in respect of suspected infringing goods.
A request for inspection and monitoring of suspected infringing goods must be submitted using a standard form to the Anti-Smuggling and Investigation Department of the General Department of Customs together with certain documents, including evidence to prove the intellectual property rights of the applicant, a list of exporters and importers of genuine goods, the method by which genuine goods are imported and/or exported, photographs, displays, or other materials to enable Vietnam customs to distinguish genuine goods from infringing goods, and documents to show the origin of genuine goods. The request for long term monitoring of goods at customs is valid for one year and may be extended for consecutive one year terms. Similarly, a request for suspension of customs procedures must be made using the standard form attached to Circular 44. This form must be filed within three working days from the date the rights holder receives notice from Vietnam customs of suspected infringing goods and is subject to the applicant posting security in the amount of 20% of the value of the suspected infringing goods or at least Dong twenty million (20,000,000) where it is impossible to assign a value to the suspected goods.
Circular 44/2011/TT-BTC is very similar to Decree 154/2005/ND-CP issued by the Government and Decision 916/QD-TCHQ issued by General Department of Customs, except that:
- the time period for customs to examine requests for inspection and monitoring of imports and exports at customs and requests for suspension of customs procedures has been shortened from 30 days and 24 working hours to 20 days and 16 working hours, respectively;
- procedures have been simplified in that an "assessment" from a Vietnamese intellectual property rights assessment organization is no longer required at the initial stage (though such an assessment may be required at a later stage); copies of required documents can be certified as true by the applicant, subject to submission of the originals if necessary; and written request and documents can be submitted in paper or digital electronic form.
By providing clearer, simpler, and more expeditious procedures, Circular 44, if implemented as contemplated, is a positive step in Vietnam's fight against infringing goods and deceptive trading practices which have been growing in scale, sophistication and seriousness in recent years.