Circular No. 12/2008/TT-BCT guides the procedures and formalities for receiving, handling, and resolving complaints requesting administrative violations related to intellectual property rights by Market Management agencies.

CIRCULAR

Guidelines for the procedures and formalities for receiving, accepting, and resolvingrequests to handle administrative violations related to intellectual property rights

concerningof market management agencies

__________________

Pursuant to Decree No. 7861/2007/ND-CP dated December 27, 2007 of the Government stipulating the functions, tasks, powers, and organizational structure of the Ministry of Industry and Trade;

Pursuant to the Intellectual Property Law on November 29, 2005, and Decrees No. 100/2006/NĐ-CP dated September 21, 2006, of the Government detailing and guiding the implementation of certain provisions of the Civil Code and the Intellectual Property Law regarding copyright and related rights; Decree No. 103/2006/NĐ-CP dated September 22, 2006, of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law regarding industrial property; Decree No. 105/2006/NĐ-CP dated September 22, 2006, of the Government detailing and guiding the implementation of certain provisions of the Intellectual Property Law regarding the protection of intellectual property rights and state management of intellectual property; Decree No. 106/2006/NĐ-CP dated September 22, 2006, of the Government stipulating administrative penalties for violations concerning industrial property; Decree No. 56/2006/NĐ-CP dated June 6, 2006, of the Government on administrative penalties for violations in the field of culture and information;

Pursuant to the Administrative Violation Handling Ordinance 2002 and the Ordinance Amending and Supplementing Certain Provisions of the Administrative Violation Handling Ordinance dated April 2, 2008.

The Ministry of Industry and Trade guides the procedures and formalities for receiving, accepting, and resolving administrative violation cases related to intellectual property rights of market management agencies as follows:

I. GENERAL PROVISIONS

1. Scope and Objectives

a) Scope of application:

This Circular provides guidance on the formalities and procedures for receiving, accepting, and handling requests to address infringements and administrative violations concerning intellectual property rights, counterfeit goods bearing trademarks, counterfeit goods bearing geographical indications, and unauthorized reproductions in the domestic market by market management forces as stipulated in Article 27 of Decree No. 105/2008/NĐ-CP detailing and guiding the implementation of certain provisions of the Intellectual Property Law on the protection of intellectual property rights and state management of intellectual property; Articles 20, 21, 22, and 23 of Decree No. 106/2006/NĐ-CP stipulating administrative penalties for violations in the field of industrial property.

b) Applicability:

Market management agencies at all levels, officers, and civil servants under the market management force shall carry out inspection, supervision, and administrative violation handling activities concerning intellectual property rights, and other relevant agencies, organizations, and individuals.

2. Principles for inspection and handling of administrative violations concerning intellectual property rights

a) Regarding infringement cases:

Infringement acts of intellectual property rights will only be handled in the following cases:

- The right holder or their legitimate representative (hereinafter referred to as the right holder) requests handling according to Clause c, Paragraph 1, Article 7863 of the Intellectual Property Law and Paragraph 4, Article 21 of Decree No. 105/2006/NĐ-CP;

- Organizations or individuals who have suffered losses, or those who discover infringement acts of intellectual property rights causing damage to consumers or society request handling according to Clause a, Paragraph 1, Article 7875 of the Intellectual Property Law for groups of goods such as foodstuffs, medicines, feed, fertilizers, veterinary drugs, plant protection products, crop and livestock seeds.

b) Regarding counterfeit goods:

Acts of trading in counterfeit goods bearing trademarks, geographical indications, and unauthorized reproductions of cultural-information products (hereinafter referred to as counterfeit goods) will be handled in the following cases:

- Complaint letters from the right holder reporting acts of producing and selling counterfeit goods and requesting handling according to Paragraph 1, Article 7863 of the Intellectual Property Law;

- Complaint letters from organizations or individuals who have suffered losses, or those who discover acts of producing and selling counterfeit goods causing damage to consumers or society reporting according to Paragraph 2, Article 7863 and Clause c, d, Paragraph 1, Article 7875 of the Intellectual Property Law;

- Market management agencies may proactively inspect and handle acts of trading in counterfeit intellectual property goods without necessarily having a request from the right holder or individuals or organizations with related rights or interests according to Article 24 of Decree No. 106/2006/NĐ-CP.

3. Responsibilities for directing and decision-making authority for inspection and handling of infringements:

a) The Market Management Agency has the responsibility to guide business operations, direct inspection and handling activities of infringement acts and trading in counterfeit goods concerning intellectual property rights for Provincial Market Management Agencies.

The Director of the Market Management Agency decides to inspect and handle infringement acts and trading in counterfeit goods concerning intellectual property rights within their jurisdiction nationwide.

b) Provincial Market Management Agencies have the responsibility to direct inspection activities, guide inspection business operations of infringement acts and trading in counterfeit goods concerning intellectual property rights for subordinate Market Management Teams;

The Director of the Provincial Market Management Agency decides to inspect and handle infringement acts and trading in counterfeit goods concerning intellectual property rights within their jurisdiction.

c) The Team Leader of the Market Management Team decides to inspect and handle administrative violations according to the authority stipulated in Clause b, Paragraph 2, Section I; Article 24 of Decree No. 106/2006/NĐ-CP; Paragraph 3, Section II for acts causing damage to consumers or society and Clause a, Paragraph 4, Section II;

The Team Leader of the Market Management Team is responsible for implementing the Inspection Decision of the Provincial Market Management Agency and imposing administrative penalties according to their authority.

d) The Chairman of the People's Committee of the province, the Chairman of the People's Committee of the district has the authority to impose administrative penalties in the field of industrial property in their locality according to Article 19 of Decree No. 106/2006/NĐ-CP.

4. Cases not accepted for handling:

Market management agencies at all levels will not accept, process, or resolve requests to handle infringement acts and trading in counterfeit goods concerning intellectual property rights in the following cases:

a) The case is currently being processed by competent authorities using administrative, criminal, or civil measures, except when the right holder is currently or has initiated a lawsuit with the Civil Court solely seeking compensation for damages;

b) There is a dispute or complaint about the identity of the right holder, the possibility of protecting, and the scope of protection of intellectual property rights.

c) In case there are signs of criminal offenses, the Market Management Authority shall transfer the case file to the competent authority for investigation and prosecution.

d) The violation infringing rights has exceeded the administrative penalty statute of limitations (two years from the date of occurrence of the act).

đ) Not within the jurisdiction to accept and resolve.

e) Within thirty days from the date of receiving the Notice from the Market Management Authority requesting additional documentation and evidence, if the person requesting the handling of the violation does not supplement the missing documentation and evidence to prove the subject's status, the requestor's status, and the infringement act as stipulated in Article 21 of Decree No. 106/2006/NĐ-CP.

5. Time limit for accepting and resolving violation cases:

The time limit for accepting and resolving violation cases shall be in accordance with Articles 66, 67, and 71 of the Law on Petitions and Complaints.

6. Reporting responsibility:

Within two working days, decisions on administrative penalties for first-time intellectual property violations must be copied to the higher-level Market Management Authority for monitoring, supervision, and business guidance. For remote areas, this period is five working days.

II. PROCEDURE AND FORMALITIES FOR RECEIVING AND HANDLING CASES

1. Requirements for initial files

a) The initial file requested by the right holder includes the following documents:

- A petition for handling containing all contents prescribed in Article 22 of Decree No. 105/2006/NĐ-CP;

- Business registration certificate (if the petitioner registers business in Vietnam);

- Relevant documents and evidence suitable for the organization or individual requesting handling and the content of the request as prescribed in Articles 23, 24, and 25 of Decree No. 105/2006/NĐ-CP;

- Expert conclusions (if available);

- In case the matter has been resolved by the Criminal Court or another competent authority and is now repeated, a certified copy of the decision or judgment of the court or the penalty decision of the competent authority must be attached.

b) The initial file reported by the organization or individual who suffered damage or discovered the infringement act includes the following documents:

- A complaint or petition containing all contents prescribed in Article 22 of Decree No. 105/2006/NĐ-CP;

- Business registration certificate (if the petitioner registers business in Vietnam);

- Evidence of damage as prescribed in point d, Clause 1, Article 23 of Decree No. 105/2006/NĐ-CP;

- Expert conclusion on damage (if available).

c) The initial file reporting the production and sale of counterfeit goods includes the following documents:

- A complaint or petition containing all contents prescribed in Article 22 of Decree No. 105/2006/NĐ-CP;

- Evidence and physical items that are counterfeit goods as prescribed in point đ, Clause 1, Article 23 of Decree No. 105/2006/NĐ-CP.

d) The initial file prepared by the Market Management Authority for the production and sale of counterfeit goods includes the following documents:

- An application form including information discovered and evidence proving the acts of producing and selling counterfeit goods;

- Results of verification, investigation, and provision of evidence by the Police Authority (if available);

- Expert conclusions and results of discussions with the State management agency on intellectual property (if available);

đ) Initial files transferred up from lower levels:

Initial files transferred from lower-level Market Management Authorities to higher-level Market Management Authorities for handling requests must comply with the requirements specified in points a, b, c, and d of Clause 1, Section II, as guided in the document transferring the file and the proposal of the lower-level Market Management Authority.

e) In case the Market Management Authority discovers an infringement act:

- If the Market Management Authority discovers an infringement act of intellectual property rights, it has the responsibility to notify the right holder and guide the right holder to follow the procedures as prescribed. If the right holder requests handling, it shall be handled according to point a, Clause 1, Section II;

- If the Market Management Authority discovers an infringement act of intellectual property rights causing damage to society or consumers as prescribed in point a, Clause 1, Article 7875 of the Intellectual Property Law, which falls under the category of goods prescribed in point d, Clause 1, Article 23 of Decree No. 105/2006/NĐ-CP, it has the responsibility to collect evidence, prove the damage, and prepare the initial file as prescribed in point b, Clause 1, Section II (excluding the complaint or petition and business registration certificate).

2. Procedure for receiving, processing files, and issuing inspection decisions:

a) Responsibility for receiving files requesting handling of violations:

All levels of Market Management Authorities, including the Market Management Bureau (Ministry of Industry and Trade), District Market Management Sub-bureau (Department of Industry and Trade), and Market Management Teams have the responsibility to receive files for handling infringement acts and counterfeit goods according to the following procedure:

- For first-time infringement acts:

A first-time infringement act is an infringement act against a specific product requested for handling by the right holder for the first time.

When the right holder submits a file and requests the Market Management Team to handle the first-time infringement act, they should guide the right holder to submit the handling request file at the District Market Management Sub-bureau, or directly receive the file and transfer it to the District Market Management Sub-bureau.

If the Market Management Team receives the file, they must transfer the entire file to the District Market Management Sub-bureau within a maximum of two working days, and simultaneously inform the right holder who submitted the file. For remote Market Management Teams, this period is five working days.

- For counterfeit goods: The Market Management Team is responsible for receiving the file and handling it according to Article 24 of Decree No. 106/2006/NĐ-CP.

For violations that have already been handled and infringement acts causing damage to consumers or society: The Market Management Team will receive and handle them according to Clause 4, Section II, and point a, Clause 5, Section II.

- The Market Management Bureau and District Market Management Sub-bureaus are responsible for receiving and handling all initial files requesting handling of infringement acts and counterfeit goods.

b) Examination of files:

When receiving the file, the Market Management Authority must examine and review the file in accordance with Clause 1 of Article 20 of Decree No. 106/2006/NĐ-CP. Within ten days from the date of receipt of the file, the Market Management Authority shall examine:

- If the initial file submitted by the right holder requests handling of acts infringing rights and counterfeit goods but does not fall within the jurisdiction of the Market Management Authority, the Market Management Authority shall guide the person submitting the application to submit the application to the competent authority or transfer the application to the competent authority for resolution;

In case of transferring to another competent authority, notify the right holder thereof;

- If the initial file submitted by the right holder is not valid in accordance with Clause 1, Part II of this Circular, issue a written notice requesting to supplement missing documents and evidence;

In case the right holder supplements the file according to the request, check and record the list of documents and evidence in accordance with the procedures prescribed by the Market Management Authority;

- If the initial file submitted by the right holder contains documents and evidence indicating disputes between the right holder and the organization or individual subject to handling or disputes between the right holder and a third party regarding the right holder's status, protection capability, and scope of intellectual property rights protection, without a final conclusion from the competent authority, refuse to accept the file and guide the right holder to another competent authority for resolution;

- If the initial file is transferred up by a subordinate Market Management Authority and does not yet meet the professional conditions to be completed, check and record the list of documents and evidence in accordance with the procedures prescribed by the Market Management Authority;

- For files transferred from another competent authority to the Market Management Authority: After examination, if it falls within the jurisdiction, check and record the list of documents and evidence in accordance with the procedures prescribed by the Market Management Authority;

- For cases specified in point b, c, d, đ of Clause 1, Part II, immediately upon receipt of the file, the Market Management Authority shall notify the right holder to request handling of violations and provide additional evidence to supplement the file;

c) Handling valid files at the Market Management Branch and the Market Management Team:

Based on valid files requesting handling of acts infringing rights and counterfeit goods, the Branch and the Team shall proceed with the following steps in accordance with the prescribed procedure:

- In case of handling at the Market Management Branch: On the basis of receiving the file, the Branch shall examine, supplement evidence or require the person submitting the file to supplement evidence; request forensic examination (if necessary); exchange professional opinions with relevant agencies or state management agencies on intellectual property (if necessary), complete the file, issue a decision to inspect and organize its implementation or assign the Market Management Team to organize its implementation;

- In case of handling at the Market Management Team: On the basis of receiving the file, the Team shall examine, supplement evidence or require the person submitting the file to supplement evidence; request forensic examination (if necessary); exchange professional opinions with relevant agencies or state management agencies on intellectual property (if necessary), complete the file, issue a decision to inspect and organize its implementation;

- Inspection at the place of violation: The Branch and the Team shall conduct inspections in accordance with the procedures and formalities prescribed in the Administrative Violation Handling Law, Decree No. 134/2003/NĐ-CP, Decree No. 105/2006/NĐ-CP, Decree No. 106/2006/NĐ-CP, and the business procedures of the Market Management Authority;

In case the act of infringing rights and counterfeit goods occurs in another locality and has been received and handled in their own area, the Market Management Branch must send a copy of the completed file to other provincial Market Management Branches for coordination in inspection and handling;

In case the penalty exceeds the jurisdiction, the Branch shall transfer the file to the People's Committee of the province or centrally-administered city or the National Market Management Department to carry out the penalty;

- Cases where copies of the case files are transferred to the superior Market Management Authority:

+ For first-time violations handled by the Market Management Team, within five working days from the date of issuing the inspection decision, the Market Management Team is responsible for sending a certified copy of the inspection decision and the case file to the Market Management Branch (the Market Management Team uses the stamp of the Team to certify the file);

Within twenty working days, depending on specific circumstances, the Market Management Branch is responsible for issuing a notification and directing inspections throughout the province or city or in areas where violations have occurred, and if deemed necessary, notifying other enforcement agencies to coordinate in implementation;

+ For first-time violations handled by the Market Management Branch or transferred up by the Market Management Team, within ten working days from the date of issuing the inspection decision, the Market Management Branch is responsible for sending a certified copy of the inspection decision and the case file to the National Market Management Department (the Market Management Branch uses the stamp of the Branch to certify the file);

Within thirty working days, depending on specific circumstances stipulated in point d of Clause 2, Part II (cases where acts of infringing rights and counterfeit goods occur across multiple provinces or cities), the National Market Management Department is responsible for issuing an inspection decision or a notification, directive for inspections nationwide or in areas where violations have occurred, and if deemed necessary, notifying other enforcement agencies to coordinate in implementation;

- Cases where the Market Management Branch transfers the entire case file to the National Market Management Department for handling:

+ Complex cases of infringement of rights and counterfeit goods;

+ Multiple viewpoints on a single case;

+ Involving multiple agencies; occurring across multiple provinces or cities;

+ The case lacks sufficient elements to determine a violation, after guiding the parties involved to resolve the matter in court, but the right holder still appeals and requests a penalty decision.

The file includes the assessment and proposal document of the Market Management Branch Director along with copies of related documents.

d) Processing valid files at the Market Management Department:

- Inspection decision: Based on directly received files or those transferred from Market Management Branches, the Market Management Department examines, supplements evidence or requests the file submitter to supplement evidence; requests expert appraisal (if necessary); exchanges professional opinions with relevant authorities or state management agencies on intellectual property rights (if necessary), completes the file, and issues an inspection decision;

- Conducting inspections: The Market Management Department assigns Market Management Branches to implement the inspection decision of the Department Head in provinces and cities where the violating entity operates;

- The Market Management Department issues an inspection directive or an inspection decision covering multiple provinces and cities or nationwide in cases where infringement acts or counterfeit goods occur across multiple provinces and cities, and assigns Market Management Branches to implement them;

- For cases requiring infringement handling that have been concluded by the Market Management Authority as not involving infringement, not being counterfeit goods, and lacking grounds for administrative penalty but still have complaints or demands for penalties, the relevant parties are guided to resolve the matter through the court.

3. Violation Cases causing damage to consumers or society:

In cases where the Market Management Authority discovers violations causing damage to consumers or society as stipulated in point a, Clause 1, Article 7875 of the Intellectual Property Law 2005 (the infringing goods are foodstuffs, medicines, veterinary drugs, plant protection products, livestock feed, fertilizers, harmful plant and animal species, affecting human health, animals, and the environment), the Market Management Authority handles administrative infringements according to current regulations. For infringement acts, the Market Management Authority checks and penalizes violations without prior notice to the right holder. If information and evidence need to be collected, the Market Management Authority may request the right holder or relevant agencies to provide such information and evidence.

4. Cases for Temporary Suspension:

During the process of handling valid files, issuing inspection decisions, conducting inspections, and preparing to issue administrative penalty decisions regarding intellectual property, the Market Management Authority temporarily suspends the handling in the following cases:

a) When the right holder and others submit valid applications for handling, now there is a notification withdrawing the application for handling or a notification that all parties have agreed to resolve the infringement case through other means (except in cases of producing and trading counterfeit goods bearing geographical indications, causing damage to consumers and society);

b) Disputes arise with contents specified in point a and b, Clause 4, Section I of this Circular.

In cases where the decision to temporarily suspend the inspection is made as specified in point a and b, Clause 4, Section I of this Circular: The Market Management Authority records the status of the seized items in the case file as a basis for subsequent handling based on the final decision of the competent authority.

Handling of temporarily seized items when the decision to temporarily suspend the inspection is resolved as follows:

If the Market Management Authority decides to temporarily seize the items, they return the items to the party whose items were seized after completing the tasks specified herein.

If the Market Management Authority decides to temporarily seize the items upon the request of the party submitting the application for handling, they continue to temporarily seize the items if the requesting party provides a continued request and commits to bear the material consequences. If the requesting party does not provide a continued request, the items are returned to the party whose items were seized after completing the tasks specified herein;

c) Expiration of the two-year time limit;

d) The inspection results show no infringement acts as described in the application for handling the violation;

đ) A document from the competent authority concluding insufficient grounds for handling.

5. Procedures for Handling Infringement and Counterfeiting Violations That Have Been Handled:

a) For cases that have been handled:

A handled violation is a specific act of infringement or counterfeiting intellectual property rights for a particular type of goods that has been initially handled by the Market Management Authority; a court ruling; and a violation that has been handled by another enforcement agency.

For infringement cases that have been handled, if the Market Management Authority at various levels discovers ongoing violations in the market, they have the right to inspect and apply current administrative penalty measures.

For cases where the handled violation involves trading counterfeit goods, the Market Management Authority applies the provisions of Article 24 of Decree No. 106/2006/NĐ-CP to handle the situation.

b) If it is discovered that there are acts of trading counterfeit trademarks, geographical indications, or illegal reproductions that meet the conditions specified in Joint Circular No. 01/2008/TTLT-TANDTC-VKSNDTC-BCA-BTP dated February 29, 2008, issued by the Supreme People's Court, the Supreme People's Procuracy, the Ministry of Public Security, and the Ministry of Justice guiding the prosecution of criminal responsibility for intellectual property rights infringements, the Market Management Authority transfers the file to the investigation agency.

6. Handling of Production Units Producing Violating Goods:

a) In cases where the Market Management Authority accepts and resolves cases at the stage of goods circulation and has grounds to believe that the production unit has put violating goods into circulation and consumption, they proceed to accept and resolve the case within their jurisdiction.

If this production unit is currently being accepted and resolved by another competent authority for the act of producing violating goods, then:

- The Market Management Authority applies the case of not accepting and resolving the act of producing violating goods as guided in Clause 4, Section I.

- Transfers the file and coordinates with the competent authority.

b) In cases where there are insufficient grounds to determine the act of circulating infringing goods, transfer the file or coordinate with competent authorities to handle and resolve the matter.

III. IMPLEMENTATION

1. This Circular shall take effect fifteen days from the date of publication in the Official Gazette.

2. Market Management agencies at all levels shall be responsible for ensuring full implementation of the provisions in Section II regarding procedures and formalities for receiving, handling, and resolving administrative violation complaints concerning counterfeit intellectual property rights and acts of infringement as stipulated in this Circular.

3. The Director of the Market Management Agency shall organize, direct the implementation, and supervise compliance with the provisions of this Circular to ensure uniform implementation throughout the sector in accordance with the law.

4. The immediate head of the authority having the power to handle violations shall be responsible for organizing inspections of subordinate administrative violation handling activities.

The Market Management Office and Market Management Teams shall be responsible for monitoring, guiding, and inspecting the implementation of procedures for receiving, handling, and resolving administrative violation complaints related to intellectual property rights by local market management forces.

5. Post-administrative violation handling activities:

- After concluding the case, the Team Leader and Office Director must instruct the market management officials directly handling the case to file the administrative violation resolution records according to the law;

- Destruction of expired documents can only be carried out upon a written decision by the authorized person.

6. If any difficulties arise during implementation, organizations and individuals concerned shall report to the Ministry of Industry and Trade for timely research, consideration, and adjustment.