Intellectual property rights ("IPRs") owners, with the help of Vietnam Customs, can take steps to prevent importation of counterfeit goods.
SUSPENSION OF A SPECIFIC SHIPMENT
For this measure to work, an IPRs owner must be pro-active. It will need to provide guidance to Vietnam Customs--giving product samples, trademarks, approximate dates of import, some suggestions of the import locations, importers if known, perhaps the sort of packaging, etc.
The trademark owners will require some knowledge of the counterfeiters, their activities, etc. This, of course, is not an easy task. For example, although the IPRs owner may know through which ports the suspected goods will be imported/exported, it may be difficult to know the name of the shipper, consignee, timing, etc and other detailed information surrounding the suspected goods.
Action required
When an IPRs owner suspects that a shipment of certain counterfeit goods is intended for export/import, it will file a suspension request with the Customs office. The request covers the suspected entry point through which it is thought the goods will pass. The request asks Customs to take action to seize and prevent the suspected products from entering Vietnam.
The request should be accompanied by (i) proof of ownership of the IPRs (ie, copy of the Certificate of Trademark Registration, etc) and (ii) as well as known, a description of the imported counterfeit goods, including information of importers, dates, shippers, destination, etc.
IPRs owners will pay a security deposit to the local Customs, equal to 20% of the value of the shipment that it requests to be suspended, or VND 20,000,000 (in case the value of the shipment is not known). The security deposit is intended to cover damages if the shipment does not actually contain counterfeit products.
After receipt of the request from the IPRs owner, Customs, upon examination, will consider whether to suspend the shipment. If it deems the shipment suspicious, it can suspend entry for 10 working days which can be extended for another 10 working days.
The Customs office will then inspect the suspected goods. The IPRs owner is required to confirm whether the suspected goods are counterfeit.
If Customs is persuaded that the suspected goods are counterfeit, they will apply sanctions on the importers (seize the goods, impose monetary fines, order payment of expenses incurred by Customs, etc).
If Customs concludes that the suspected goods are not counterfeit, they will resume the import process. In such case, the IPRs owner may have to compensate for damages caused to the imported goods owner (for example, breach of contract for late delivery of goods, etc), and pay the goods owner other legitimate expenses incurred due to Customs action.
If the IPRs owner and the importer do not agree with the Customs' decision or allocation of expenses, the dissenting party has the right to appeal to Customs or to bring the matter to Court.
LONG-TERM MONITOR
As the name implies, Customs can monitor imported goods with the help of information provided by the IPRs owner or through its own facilities. The monitoring is not based on a single shipment, but is ongoing.
The purpose of a long-term monitor program is to seize products imported by any importer which products bear the IPRs owner's trademark but which are counterfeit.
Action required
In this program, an IPRs owner will request the General Department of Vietnam Customs ("GD-VC"), to determine whether imported goods which bear the IPRs owner's trademark are counterfeit. The following information must accompany the request:
- proof of IPRs (eg, copies of the Certificates of Trademark Registration, etc);
- detailed description of infringing goods, including photos and characteristics to distinguish genuine goods from infringing goods;
- packaging;
- a list of importers/exporters who likely import/export infringing goods;
- suspected countries of origin of fake products;
- possible import points, if known.
A long-term monitor program can run for two years, and can be extended every two years.
During this period, if Customs detects suspected goods, it will inform the IPRs owner. The owner will decide whether the suspected goods are counterfeit. If the suspected goods are counterfeit, it can request Customs to apply sanctions on the importer (seize the counterfeit goods, impose monetary fines, order payment of expenses incurred by Customs, etc)
The success of a long-term monitor is larger than in the case of specific shipments, because, in theory, the IPRs owner is not required to provide information on a specific shipment, which, in several cases, could be difficult to provide. That is, in order to get Customs to stop a specific shipment, an IPRs owner must identify the products as they come in via a named port, which shipment, by which importer, etc, then alert Customs and request them to stop the shipment. The chance of success is larger as the information, theoretically relates to a specific shipment and Customs can be alert to it. But in a specific shipment, many things must fall into place before a customs officer will stop a shipment. In a monitoring system, Customs just needs to monitor products (imported at any entry point) which bear the IPRs owner's trademark and will pro-actively inform the IPRs owner when suspicious products arrive. Monitoring anticipates the counterfeiters will follow a predictable path--point of origin, packaging, destination, etc. To be effective, the brand owner must be vigilant to the counterfeiter's changing strategies and to keep Customs informed.
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.
