15

Selected Aspects of Enforcement of Intellectual
Property Rights in Japan and Vietnam‐A comparative study with respect to TRIPS standards of enforcement‐
Viet D. Phan(*)
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is not only the first one tocombine intellectual property with trade issues. With its more or less detailed enforcement provisions, TRIPS
also created a new level of international treaties concerning intellectual property. The presentation will focus on
the standards of enforcement of intellectual property rights as provided for by TRIPS (principles of enforcement,
civil and administrative procedures, preliminary injunctions, border measures and criminal sanctions),
including their current situation, problems and issues. As examples, the system of enforcement of intellectual
property rights in Japan and Vietnam will be analyzed with focus on their compliance with the TRIPS
provisions. As intellectual property right enforcement was one of the most debated issues between developed anddeveloping countries during the Uruguay Round negotiations, the impact of raising standards of enforcement ofintellectual property rights on development and welfare of developing countries, as in the case of Vietnam, will
also be discussed. The presentation will end with the conclusion that there is a substantial change in thesituation for developing countries in the post-TRIPS era. Today’s question for those countries is no longer
whether to enforce intellectual property rights or not, but to find out ways to apply the TRIPS standards that best
fits to their development needs.

Ⅰ Introduction
In order for intellectual property rights to have
any teeth, right holders must be able to act against
infringers rapidly, effectively and in a cost-effective
manner. Enforcement is however the weak point inmany countries which have adequate legislation
protecting intellectual property rights on paper, but
do not have the will, infrastructure or resources tohelp right holders enforce these rights effectively.
It was therefore important that the Agreement
on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) contains a relatively new elementof international treaties, i.e. the provisions on
enforcement of intellectual property rights, which
oblige signatory countries to provide for a minimum
level of enforcement procedures. These not only
set out the civil, criminal and administrative
procedures which states have to make available,
and the powers they must grant to their judicial andother enforcement authorities, but also definecertain general performance criteria that have to berespected, e.g. effectiveness of infringement
actions (article 41.1) or fairness and equitablenessof procedures (article 41.2).
TRIPS includes a broad range ofimprovements in substantial standards andprocedural enforcement of intellectual property
rights. These provisions present considerable
institutional challenges not only for developing
countries, but also for developed countries invarious aspects, including their legislation, their
judicial systems and their enforcement authorities.

In its report on implementation of TRIPS
enforcement provisions of 16 June 1997, theInternational Chamber of Commerce pointed out
several developed countries that are still not incompliance with the enforcement standards of
TRIPS even several years after they have to do soin 1994. Among these countries are also Germany,
Japan and even the USA. Especially developing
countries, as in the case of Vietnam, are facing
considerable difficulties even in enforcing thegeneral legal rights. The implementation of TRIPS
may cause for developing countries on the one hand
many problems for their system of law enforcementin general as well as their system of intellectual
propertyrightsenforcement,which
isunderstandably not always in compliance to suchstandards, and on the other hand also implications
for their further social and economic development.
This paper examines, under comparative
methods, the systems of enforcement of intellectual
property rights in Japan and Vietnam, including
administrative measures, civil remedies as well as
criminal sanctions, with respect to their complianceto the TRIPS standards for the purpose of findingout proposals and ways to adapt the national
enforcement system of Vietnam to TRIPS’
standards while keeping in mind its interests on
economic development.

(*) Attorney at Law, TRAN H. N. & ASSOCIATES, Hanoi, Doctoral Candidate Technology University of Dresden.

IIP Bulletin 2003

● 116 ●

Ⅱ The Provisions of TRIPS on
EnforcementofIntellectual
Property
1

Overview

As already mentioned, TRIPS contains newprovisions that oblige member countries to ensure
the enforceability of intellectual property rights intheir legal system respectively. These provisions
are laid down in Part III, which itself consists of fivesections extending over some 21 articles of theAgreement.
2

Civil and Administrative Procedure

Requirements to civil and administrative
procedures are laid down in Section 2 of Part III of
the TRIPS Agreement. The provisions of theSection elaborate in more detail basic features thathave to be provided for by such procedures.
a. Fairness and Equitability
Fairness and equitability being essential
principles of civil procedures are elaborated in
Article 42 and require timely written noticecontaining details of the claims to defendants, theright of the parties to be represented byindependent legal counsel, as well as avoidance ofoverly burdensome requirements concerning
personal appearances. Furthermore, the parties
shall be entitled to substantiate their claims and topresent all relevant evidence, whereas confidential
information must be identified and protected.
The prohibition of burdensome requirement
concerning personal appearances is insofar
necessary, as in certain jurisdictions only thepresident or chief executive may represent a legal
person. Neither should personal appearances benecessary repeatedly in a given procedure. Anotherimportant rule of Article 42 is the protection ofconfidential information. Unless it would becontrary to existing constitutional requirements,
the member countries shall define the term of“confidential information” by law and also provide
for its protection during procedures, e.g. through incamera proceedings.
b. Evidence
As providing evidence often causes invincible
obstacle for the right owner to enforce his rights incivil procedures, Article 43.1 provides a relief inthis respect. According to this provision, the court
may, presumed that the requesting party
sufficiently substantiated his claims and identified
evidence in the control of the opposing party, force
the opposing party to provide the relevant evidence.
This power of judicial authorities shall be provided
for by law of the member countries. However, thedecision is only limited to an imposition of the
opposing parties to provide evidence and could not
be extended to a pre-trial-discovery-order, as partly

provided for by Article 50. Although there would be
the possibility to systematically refuse to apply
such power by a member, such an implementation
would be considered nullification or impairment, ormore precisely a non-violation of benefits andhence could be invoked in accordance with Article
64.2 TRIPS.
c. Remedies
In its Articles 44 – 47, TRIPS sets out anumber of remedies to be provided for in nationallaws of the member countries, including injunctions,
damages, the right to require infringing goods oreven materials and equipment used in the creationof them be disposed of outside the channels ofcommerce or destroyed and the right of
information.
Damages are one of the most essential
questions in infringement procedures. TRIPS
provides for the common rule that an infringer
should pay damages to compensate the right holder
for injury suffered in Article 45.1. Knowledge,
either actual or constructive, by the infringer isrequired for damages. Damages need not to beprovided for in case of “innocent infringement”.
However, the term “adequate compensation” usedin this context is not clear enough and thus fully left
to national legislation. The calculation of damages
remains notoriously difficult in intellectual property
matters. Countries following the common law
tradition allow the awarding of punitive damages,
while civil law countries generally deny thenecessity of such remedy and only accept
compensatory damages. Although assessing
damages is eased by the fact that the parties mostly
settle their case after an infringement isestablished, calculating damages remains difficultand often time consuming. In most countries,
damages will therefore be calculated either on thebasis of the damages incurred, the infringer’s
profits or a reasonable royalty, or even determinedby an ordinary licensing fee.
The other remedies as mentioned in Art. 46
TRIPS most importantly constitute the destructionof infringing goods without compensation of any
sort. In that respect, Art. 46 clarifies that in case ofa trade mark infringement, simply removing theinfringing marks is not sufficient. Rather, such
goods should be destroyed in toto or at least
disposed of outside the channels of commerce. Not
infrequently, videos are shown where huge
steamrollers destroy infringing goods such as
watches or video tapes.
d. Indemnification of the defendant
Legal procedures, like any other right, may be
used in good faith and sometimes even abusively
against innocent defendants. In such cases,
particularly the latter, the defendant should beentitled to compensation of expenses and troublecaused by the plaintiff’s proceedings, notably
through provisional measures taken urgently on the● 117 ●IIP Bulletin 2003

basis of evidence analyzed only in part and without
counter-evidence. Such a right of the defendant isprovided for by Article 48 TRIPS.
“Abuse” in the meanings of Article 48 need notnecessarily imply demonstrable bad faith, but aserious departure from reasonable use of legal
proceedings. It obviously includes a malicious useof the courts, but should be viewed more generally
as a perversion of the judicial process for a purposethat does not correspond to its normal function.
e. Administrative procedure
Basically, enforcement of intellectual property
rights is considered as a matter of conflict between
private parties rather than as an object of publicconcern. That might be the reason for the TRIPS
Agreement attaching far more importance to civil
than to administrative measures, at least to theextent that they relate to infringement procedures.
Thus, it appears that administrative procedures asprovided for by Article 49 TRIPS are only additional
to the civil ones. Article 49 requires thatadministrative authorities conform to the substancejudicial procedures.
3

Provisional Measures

Article 50 empowers the judicial authorities toprovide provisional relief for the right holder inorder to take immediate actions against an alleged
infringement. Such provisional measures arenecessary to protect the interests of the rightholder, as the ordinary judicial procedure may takeor, to be more exactly, usually takes a long amountof time. Provisional measures have to be available
in two situations: to prevent an infringement fromoccurring and to preserve relevant evidence inregard to the alleged infringement.
The judicial authorities must have the power
to order the applicant for provisional measures toprovide a security or equivalent assurance
sufficient to protect the defendant and to prevent
abuse. Article 50 regulates the further proceduresof provisional measures, and it also sets out thatthese provisions also apply to administrative
procedures to the extent that any provisional
measure can be ordered as a result of suchprocedures.
4

Border Measures

A key feature of the TRIPS Agreement is theobligation of members to provide for bordermeasures to protect intellectual property rights,
this is of course not only due to the fact that TRIPS
has dedicated a whole section (IV) of part III to thispurpose, but mostly due to growing international
concerns about counterfeit goods. Thus, it is amatter of course that Article 51.1 TRIPS starts
with the obligation of members to “adopt
procedures to enable a right holder … to lodge an

IIP Bulletin 2003

application in writing with competent authorities …
for the suspension by the customs authorities of therelease into free circulation” of counterfeit
trademark or pirated copyright goods. There is no
obligation for the members to introduce suchprocedures for other intellectual property rights.
Although TRIPS defines the terms of“counterfeit trademark and pirated copyrightgoods” in the footnotes to Article 51, theimplementation would not be without implications,asthedefinitions
themselvesarenotcomprehensive enough and also do not coverparallel importation.
According to Article 60, members are notobliged to apply the border control mechanism to“small quantities of goods of a non-commercial
nature” (de minimis imports).
5

Criminal Procedure

According to Article 61, “members shallprovide for criminal procedures and sanctions to be
applied at least in cases of willful trademark
counterfeiting or copyright piracy on a commercial
scale.” In other cases, criminal sanctions may beprovided for.
One of the debatable issues of criminal
procedures may be the effectiveness of penal
sanctions as deterrents. But it should be certainthat the level of criminal penalties shall reflect theseriousness of the crime, in the light of penalties
other crimes may cause under the national law of
the member concerned, especially in proportion topenalties provided for in cases of other crimes
against property.

Ⅲ The
National
Enforcement in
Vietnam1a.

System
Japan

of
and

Litigation and Enforcement in General

Japan
Japan adopted a large portion of its current
legal system from Western legal systems,
especially the German and the American ones.
However, as the country is culturally a part ofEastern Asia, its legal implementation, hence legal
enforcement is strongly influenced by Asian
philosophy. It is for sure not strange for Asians tohear that “harmony shall be praised”, as declaredby the first Japanese constitution some 1,350 yearsago.
As provided for by the Constitution, thejudicial power in Japan is vested in the Supreme
Court and in subordinate courts.
The jurisdiction of the courts follows
provisions of the procedural laws and the Court
Organization Law. District Courts are usual courtsof original jurisdiction, as Summary Courts handle● 118 ●

only lesser civil and criminal matters. A case isusually handled in the first instance by a single
judge at a Summary Court or District Court.
Decisions of the court of first instance can beappealed by either party to the next superior court
by way of a koso appeal. While koso appeals against
decisions of Summary Courts go to District Courts,
those against District Court’s first instance decision
will be handled by High Courts. Case trial in koso
instance is considered to be continuation of that in
the first instance, i.e. both facts and legal
allegations are allowed.
Judgments of the koso instance may be
opposed by way of jokoku appeal to the next higher
courts, i.e. the High Courts in case of appeals
against District Court’s judgments, and theSupreme Court in case of appeals against High
Court’s judgments. A last chance for parties toappeal against jokoku judgments of High Courts
offers the Special jokoku appeal to the Supreme
Court, which is, however, only admitted in case of
violation of the Constitution by the judgment
concerned. There are no time limits for court
procedures of any instance provided for by the CCP.
Compulsory execution of judgments can beapplied for with the Marshall (Shikkokan), who isofficial of the District Court and has to act inaccordance with the Law of Civil Execution.
b. Vietnam
Like in China, the ancient Vietnamese society
was led by the spirit of Confucianism that did notconsider individuals, but only the emperor as
subject of rights. In today’s Vietnam, civil or evenprivate law in general seems to be very
underdeveloped with respect not only to theprovisions of laws, but also to the jurisprudence andconsequently to the judiciary, as only since thebeginning of social reforms (“Doi Moi”) in about
1986 private law is gaining a more and more visible
position within the Vietnamese legal system.
According to the Constitution, the Supreme
People’s Court and its subordinate provincial andlocal courts are the most important justiceadministering authorities in Vietnam. Although theConstitution also allows the National Assembly toestablish
specialcourtsinextraordinary
circumstances, this may result from the wartime
experience of the country’s modern history andthere is no precedence for such special courts since
the Constitution came into effect in 1992.
The jurisdiction of the courts follows
provisions of the procedural laws and the Law on
the Organization of the People’s Courts. According
to the Law on the Organization of the People’s
Courts, all three court levels will be competent for
first instance proceedings in criminal as well as civil
cases. Decisions of the Supreme People’s Court areeven in such cases final and executable uponannouncement without any opportunity to appeal
for the parties concerned.

As the principle of collective decision wasprevailing in Vietnam for a long period, decisions ofcourts will always be made by “judging collegiums”
which can be composed of judges and, as the casemay be, also of laymen. Judges are according to theConstitution free in their decision and even notbound to previous decisions of other or higher
courts. Thus, a system of precedence is still alien to
the Vietnamese judicial system.
Vietnam has currently a two instance trial
system with the only possibility for the parties toappeal against first instance judgments to a court of
the next higher level. The cassation is a special
procedure to revise an already enforceable
judgment (res judicata) that can only be initiated by
the president of the court or the procuracy of thenext higher level and carried out without
participation of the parties (or the accused incriminal cases), and thus cannot be considered as
an instance of trial.
A trial shall be held in sequential days without
intermission. The first hearing shall be summonedwithin 6 months from the receipt by the court of thecomplaint of the plaintiff, this period may,depending on the complexity of the case, be
extended up to 8 months. However, there is no
scarcity of procedures over 4 years or even longer.
A problematic issue of the enforcement of laws
in Vietnam is the execution of civil judgments.
Although legal provisions on enforcement of
judgments are mostly similar to those used in othercountries, the Execution Offices are in fact rather
reluctant to compulsorily enforce judgments. Thismay be due to two circumstances. Firstly, theenforcement of judgment falls under the rubric of
local governments and thus may be affected by local
political interests. On the other hand, the fact thatbailiffs, or “Execution Officers”, are stressed toseek voluntary fulfillment from the obligor rather
than to decide on compulsory execution can cause
unendurable delay for the execution procedure.
2

Civil Procedurea. Japan
Fairness and EquitablenessIn Japanese civil procedures, a suit shallalways be instituted by filing a written complaint
with the court. The complaint shall generally beserved to the defendant. Service of any change ofthe complaint to the defendant is also provided forby the CCP. The parties to a suit may be
represented by legal counsels and there is no
obligation of personal appearance, even in the caseof examination of the party.
The commencement of the suit is subject topayment by the plaintiff of a court fee. The court
fee shall be paid at the time the complaint is
submitted. The fee is based on the value of theclaim. Although the court fees of Japanese civil● 119 ●IIP Bulletin 2003

procedures have sometimes been considered ashigh, the total civil litigation costs in Japan are
rather in international average.
Keeping secrecy of confidential information
might be difficult in Japanese civil procedure, as
trials are public and trial’s records shall be
principally published and according to Article 82 of
the Constitution of Japan, in camera trials may only
be conducted in cases of imperilment to “publicorder or morals”.
In recent years the courts of Japan madeconsiderable progress with regard to the duration ofcivil proceedings. According to recent statistics of
the Supreme Courts, the average period of first
instance proceedings in intellectual property
infringement cases at District Courts decreased
from app. 31 months in 1991 to 15.6 months in
2002.
Determination of Infringement
Although following the principles of civil law
systems and also defining infringing acts as thoseinterfering with the exclusive right of the rightholder, Japanese laws also contain provisions
explicitly determining infringements. Article 101 of
the Patent Law, for example, determines as
infringement of a patent right “acts ofmanufacturing, assigning, leasing, importing oroffering for assignment or lease of, in the course of
trade, articles to be used exclusively” for the
manufacture of the patented product in the case of a
product patent, or for the working of the patented
process in the case of a process patent.
Evidence
The Japanese civil procedures are driven by
the firm principle of equality of the parties. Thus,
each party to a civil suit shall principally produce
evidence for its claims itself and cannot expect
support from the court. Court order to produce
evidence by the other party is only possible in caseof documents or oral evidence. The court can only
order evidence from the defendant or any otherparty if the plaintiff is able to specify indications,the gist and the holder of the document as well as
the fact to be proved. But especially in intellectual
property infringement cases, it is very difficult for
the right holder to provide such precise information.
Except for some relief to the burden of proof
concerning damages calculation as provided for by
specific laws, there is no special relief, especially oncollecting evidence for intellectual property
litigation.
Remedies
Possible remedies are at the first place
injunctive remedies and damages. Injunctive relief
is probably the most sought after remedy ininfringement cases. Provisions on injunctive relief
are included in all basic laws on intellectual
property, e.g. in the Patent Law, the Trademark
Law and the Copyright Law.
Besides of injunctions and damages, the courts

IIP Bulletin 2003

may also oblige the infringer to other remedies,such as destruction of products and materials,
removal of facilities or public apology from theinfringer.
Damages
Generally, a claim of damages of intellectual
property rights infringements is based on tort rightthat is provided for by the Civil Code. Thus,
damages are understood as monetary compensationand may in no case be punitive.
All intellectual property laws provide for apresumption of damages as the amount of the
profits gained by the infringer or the license fee theinfringer would have to pay for the non-exclusive
use of the right infringed. This partly helps to easethe plaintiff’s burden of proof regarding thedamages.
Attorney’s Fees
In Japan, recovery of attorneys’ fees of theplaintiff may be awarded as positive damages, while
it is much more difficult for the defendant torequest the same from the plaintiff, even if he wins
the case. However, attorney’s fees are only
accepted to a very limited extent that usually notexceeds 10% of the awarded amount of damages.
Indemnification of the defendant
Indemnification of the defendant in cases ofabuse by the right holder follows the rules of tortlaw (Article 709 Civil Code). Thus, the right holder
shall be held liable for damages of the defendant
only if his action was carried out under fault(willfully or negligently). State or public liability isprovided for by the State Redress Law.
Decisions
Decisions of the courts on the merits of thecases will be made in accordance to the more orless precise provisions of the Code of Civil
Procedures and shall also be served to the parties.
b. Vietnam
Fairness and Equitableness
In Vietnam, a civil suit in those matters shallbe brought to the locally competent People’s Courtof the Province. A provincial People’s Court
includes five divisions, i.e. the criminal, civil,
economic, labor and administrative court. There isno special court for intellectual property matters,
thus intellectual property disputes will be handled
by the civil or economic courts.
A lawsuit shall always be instituted by filing awritten complaint with the competent court. The
commencement of the suit is generally subject topayment by the plaintiff of a provisional court fee.
The court fee is calculated in proportion to thevalue of the claim and can be as high as 5% of theclaim value.
The defendant will be notified about thecomplaint. However, due to lacks of relevant
provisions, the complaint will not be served to thedefendant. The defendant can only obtain details of
the complaint by engaging an attorney at law, as● 120 ●

only those are allowed to examine the court’s file.
The parties are not obliged by law to be
represented by attorneys, and there is no obligationof personal appearance. However, legal persons
may encounter difficulties, as they could only be
represented by their director and judges often
requires meticulous appointment of representativeand substitution or otherwise refuse to accept
representative substitute.
According to current procedural provisions,closed trials are possible in Vietnam. Although incamera hearings are not provided for in civil
procedures, the protection of confidential
information should not be a matter of concern, as
those matters will usually be part of a dispute
between companies (legal persons) and thus
handled by the economic courts, which can decideto hold in camera hearings.
Determination of Infringement
According to the general principle ofownership, any use of intellectual property object
without consent of the right holder will be deemed
as infringement of intellectual property rights. With
regard to industrial property, acts of infringement
are also specifically defined in the Civil Code(Article 805).
Evidence
The Vietnamese judicial system is led by theprinciple of objective truth, according to which it
will be mainly in the responsibility of the parties toprovide evidence to support their claims andallegations, but also the courts shall be responsible
to collect further evidence to clarify details of thecase. The collection and examination of evidence by
the court may be carried out through examinationof witnesses, request of information fromadministrative authorities, on spot examination,
request of expert advises or even examination of aparty. Thus, the court may, upon request of one
party, order the other party to produce evidence
which is in its possession.
As a general rule of tort law, it is always presumed
that an action involving infringement of other’s
right was carried out under fault. Thus, the burdenof proof is shifted to the defendant who insists on
his innocence.
Remedies
Possible remedies are injunctive remedies anddamages. In case of copyright infringement, thecourts may also oblige the infringer to otherremedies for recovering reputation and honor, suchas public apology and monetary recovery.
Damages
Generally, a claim of damages of intellectual
property rights infringements is based on tort rightthat is provided for by the Civil Code. Material
damages are generally understood as “liability tocompensate actual material losses, caused by the
infringing party, which can be calculated inpecuniary terms and include loss of property,

expenses to prevent or mitigate damage and actual
loss or reduction of income”. Thus, only actual
damages will be recovered, punitive damages arealien to the Vietnamese system.
In determining the amount of damages, judges
have to rely only on the general rules of the Civil
Code, as no specific regulations for intellectual
property infringements exist. However judges arestill inexperienced in implementation generalregulations, especially due to the closer relation ofsuch a provision to tangible property. In most cases,
the courts failed to make any consideration of theinfringers’ profits as “interests associated with theuse or exploitation” of the plaintiff’s intellectual
property.
Attorney’s Fees
In Vietnam, there is a difference between civiland economic courts in handling the question of
attorney’s fees. Although the Civil Code provide forthe compensation of reasonable expenses toremedy the damage, the civil courts in Vietnam arerather reluctant to accept recovery of attorney’s
fees. In the above mentioned case, the People’s
Court of Hanoi refused the request of the plaintiff
merely with a simple explanation that it lacks legal
basis. In contrary to the above, economic courts
generally grant recovery of the attorney’s fees asnecessary expenses to remedy damages.
Indemnification of the DefendantIn cases of abuse by the right holder, thedefendant may require indemnification inaccordance with the general rules of tort law(Article 609 ff. of the Civil Code). Thus, the rightholder will be liable for damages of the defendant if
his action was taken under intentional (willful) or
unintentional (negligent) fault. Liability of publicauthorities, including the judiciary, may beconstrued in accordance to Articles 623 and 624 of
the Civil Code.
Decisions
According to provisions of the various
procedural laws, decisions of the courts shall bemade in writing and served, in case of judgments,
or at least notified, in case of interim or decisions,to the parties in dispute.
3

Provisional Measures

a.

Japan
Judicial provisional measures provided for in
the Code of Civil Preservative Procedures include
both provisional injunctive relief as well as
provisional preservation of evidence.
The legal basis of provisional injunctions isseen in the exclusive right of the right holder and in
the right to require third parties to desist or refrainfrom infringement. The procedure for provisional
measures comes closer to an expedited trial on the
merit, as regarding its institution by request of theright holder, the hearings of the parties and● 121 ●IIP Bulletin 2003

decision on the provisional order, which shall beserved to the defendant. Objection against theprovisional order is open for the defendant.
Upon request by the defendant, the court will
fix a reasonable period for the right holder to filethe case on the merits or to provide evidence on
the pending status of the main suit, after which theprovisional order may be annulled upon request by
the defendant, if the right holder fails to meet suchrequirements.
In principle, the provisional order on tentative
status requires an ex parte hearing with the debtor,
nonetheless, under certain special circumstances it
can also be issued without a hearing.
A system of preservation of evidence exists inaccordance with Articles 234-242 of the Code ofCivil Procedure. However the preservation ofevidence under the Code of Civil Procedure, or“beforehand examination of evidence”, cannot be
carried out as a pre-trial procedure, but only upon
filing the case on the merits.
b. Vietnam
A system of provisional exigent measures isalso included in the existing procedural laws in
Vietnam. In the course of resolving a civil dispute, acourt may apply certain measures to temporarily
satisfy exigent needs of a party or to preserve
evidence. However, as a right holder can only
require judicial support to protect his right in caseof actual infringement, an application for preventive
injunctions will not be accepted by courts, even if
infringement is obviously likely to occur. A decisionon the application of provisional exigent measures
shall generally be issued without hearing the party
to be the obligor of such decision.
However, provisional exigent measures may
be applied for only during an ordinary procedure. In
other words, application for provisional measures
will not be accepted before commencement of themain suit.
4

Administrative Procedure

a.

Japan
With a civil legal system, there is in Japan nosystem of administrative measures against
infringements of intellectual property rights, except
for the border measures, which will be discussed at
a later point below.
b. Vietnam
In Vietnam, there are numbers of legal
provisions on administrative measures against
infringement of intellectual property rights.
Competent authorities for administrative measuresagainst infringement of intellectual property rights
may be the People’s Committee, the Police, theMarket Management Office, the Frontier Force, theCustoms and the Special Inspection of Industrial
Property or the Special Inspection of Culture andInformation.

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The application of administrative procedures
follows the rules of the Ordinance on
Administrative Sanctions. On principle, an act ofadministrative violation is only subject to one
penalty, which can include one or moreadministrative measures.
As a matter of principle, an administrative
procedure shall be initiated ex officio by theauthority upon detection of an infringement act.
The main administrative measures are warnings
and monetary fines, which can be ordered together
with additional measures, such as revocation of alicense, confiscation of proofs and materials used
for the infringing act, or compensation of damages.
Destruction of infringing goods and materials shallbe available only in case such goods and materials
are dangerous for human health or “poisonous
culture products”.
The obligor of the administrative measure may
appeal against the administrative sanction to thenext higher administrative authority and then to theadministrative court, if necessary.
5a.

Border Measures

Japan
According to the Customs Tariff Law,
importation of goods involving infringements ofintellectual property rights into Japan is prohibited.
Right owner of trademark rights, copyrights orneighbouring rights are entitled to lodge application
with customs authorities for the suspension of
release into free circulation of such goods by thecustoms authorities, while such a possibility does
not exist for other intellectual property right owner.
The applicant for a suspension of customs
clearance for infringing goods shall provide thecustoms authorities with information about his
right, the goods considered to be infringing, reasonsof infringement as well as evidence to support theallegation of infringement. Prima facie evidence will
be accepted. Notification should be made to boththe applicant/right holder and the importer, if adecision is met. In case the goods are considered as
infringing, the parties will obtain the opportunity tohave the goods identified and provide evidence
within an identification procedure, which shall becompleted within one month. The applicant will be
required to deposit an application bond, if there arecontradictory opinions between applicant andimporter as to the infringement.
As the described border procedures apply only
to goods imported on a commercial scale, small
quantities of goods of non-commercial nature
carried by passengers or sent in small consignment
for personal use (de minimis import) will not beaffected.
Goods found infringing intellectual property
rights shall be confiscated and destroyed. The
customs authorities may also order reshipment of● 122 ●

such goods, if they do not involve trademark
infringement.
The customs authorities shall take ex officio
action, if there are reasons for the assumption of
infringement of intellectual property rights by thegoods to be imported.
b. Vietnam
Protection of intellectual property rights at theborder of Vietnam is determined mainly by the
Customs Law and relating regulations. Right ownerof all kinds of intellectual property are entitled tolodge application with customs authorities for thesuspension of customs procedures for goods
involving infringements of their rights by thecustoms authorities. Thus, both importation andexportation of infringing goods may be suspended
upon request of the right owner.
The applicant for a suspension of customs
procedure for infringing goods shall provide thecustoms authorities with documents proving his
right, information about the goods and theinfringement as well as evidence to support theallegation of infringement. Prima facie evidence
shall be considered appropriate. In case a decisionof suspension is met, copies of it shall be served toboth the applicant and the importer. The decision
shall include the reasons and the term ofsuspension. The importer is entitled to inspect the
goods before declaration and to be at place, while
the goods are inspected by the customs, as well as
to have the goods re-inspected by the customs
authorities. The applicant will always be required todeposit a security or to provide a bank guarantee
worth 20% of the value of the goods to besuspended.
The above mentioned procedures do not apply
to small quantities of goods of non-commercial
nature carried by passengers or sent in small
consignment for personal use (de minimis import).
Goods found infringing intellectual property
rights shall be subject to measures determined bygeneral administrative procedure law, thus
including confiscation and destruction of the same.
Reshipment may also be ordered by the customs
authority, if the infringing goods are non-standard
equipment or harmful to human health or to theenvironment.
According to the general rules ofadministrative procedures, the customs authorities
may also take ex officio action.
6a.

Criminal ProcedureJapan
All Japanese basic laws regulating intellectual
property rights contain provisions on criminal
punishment of infringement thereof, thus not only
for cases of willful trademark counterfeiting or
copyright piracy, as provided for by TRIPS Article
61. Both imprisonment and monetary fine are as

penal sanctions available. Additional measures,such as seizure or destruction of the infringing
goods and of any materials and implements used forthe purpose of production of such goods, are alsoavailable.
However, criminal procedures are usually not
used to enforce intellectual property rights in Japan,
as this will not directly benefit the right holder, andsentences tend to be rather mild, as the courts
usually do not decide on imprisonment, andmonetary fines thus levied also remain at a
relatively low level.
b. Vietnam
The new Criminal Code of Vietnam’s sanctions
against infringements of copyright as well as
industrial property rights include now 5 articles,
while criminal protection against such infringement
was provided by only two articles in the old
Criminal Code. A common condition of criminal
punishment is either serious damages caused by
the infringing conduct or that the offender has
already been punished by administrative measures.
Punishments include imprisonment up to 5
years or monetary fines between VND 20 and 200
millions (app. US$ 1,300 - 13,300). Especially in thecase of counterfeiting, the punishment may be
imprisonment up to 15 years, if the counterfeit
goods involve cattle food, fertilizer or the like, andup to life or death penalty, if the counterfeit goods
involve human food or medicines.
The right owner may require compensation ofdamages within a criminal procedure. The court
may also order the confiscation of infringing goods
and materials used for infringing act as additional
measures.

Ⅳ Conclusions
Except for some differences in the court
organization and appeal system, the judicial
systems of Japan and Vietnam have many
similarities and should both theoretically be able toeffectively implement laws in each country
respectively. However, there is obviously
backwardness in the Vietnamese enforcement
system that cannot be explained by legal reasons
only, but in a broader sense also in the traditional
understandings of society and order and in thepolitical system as well.
With regard to civil procedures, the example ofJapan, as well as of other civil law countries in
Europe, shows that it is necessary to have a systemof precedence to fill up lacks of the written laws andrules as well as to ensure a common and equal
practice of courts in a country. Vietnam currently
has no precedence system, so that difficulties still
exist for the courts to find a uniform
implementation of laws. There are also numbers of
issues that remain open for Vietnam to adapt to the
TRIPS enforcement standards, to mention but a few● 123 ●IIP Bulletin 2003

of them: lack of additional remedies in decision ofcivil courts, underdevelopment of damages
calculation system and no provisional measures
before the main procedure.
The administrative procedures as provided forby Vietnamese laws seem to be non-compatible tocivil procedures, but they come rather closer to thecriminal procedures with a minimal right for theright holder to request for compensation ofdamages. Thus, an open question is whether suchprocedures are effective means to protect
intellectual property rights.
With respect to the adaptation of higher
standards of intellectual property rights andenforcement, the system of Japan provides valuable
examples for Vietnam, as there are similar culturaland traditional circumstances in both countries andthe starting point of Japan was similar to Vietnam’s
position today with regard to the relation totechnology providers. The most valuable lesson
from the Japanese experience for Vietnam as adeveloping country might be that the adaptation ofhigher standards or protection should be carried out
carefully step by step under the priority of thedevelopment of the country’s own economy.

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