Opportunities from EVFTA commitments on The enforcement of intellectual property rights

The EVFTA includes many commitments to enforce IPR which give higher enforcement rights to right holders and enforcement agencies, and increase the level of responsibility and sanctions for those who infringe IPR. In particular, regarding the implementation of civil measures, compared with Vietnamese law, the EVFTA has some notable new commitments as follows:

  • Regarding Provisional Measures applied to prevent an infringement promptly: Right holders have the right to request the Court to apply provisional measures at any time, even in serious cases, such measures could be applied without notifying the party subject to the measures; The EVFTA also expands the circumstances/cases where provisional measures may be requested;

  • Regarding the obligation to provide evidence of infringement: the EVFTA specifically defines the cases where the Court is entitled to request the defendant to provide infringing evidences under its control; Even with infringements committed on a commercial scale, the Court may, at the request of one party, require the other party to provide banking, financial or commercial transaction documents under its control.

  • Regarding the right to request information: The Court has the right to ask the infringer, the alleged infringer or any other person, to provide information that they possess related to the infringer, the means of production and distribution of infringing goods and services;

  • Regarding the Court's rights to infringements after judicial decision: The Court is empowered to issue an injunction against the infringer and the infringer's service provider to prohibit the continuation of the infringement;

  • Regarding alternative measures: The EVFTA recommends that Vietnam should allow the application of pecuniary compensation to replace other sanctions, if the infringement is unintentional, negligent and the pecuniary compensation is reasonably satisfactory;

  • Regarding the determination of damage as a basis for compensation: The EVFTA encourages the distinction of the way of determining the amount of damages between the case where the infringer knows or has reasonable grounds to know that he is infringing and the case where the infringer does not know that he is infringing; may set the damages as a lump sum if appropriate;

  • Regarding the principle of presumption of authorship or ownership: The EVFTA sets forth rules on presumption of rights, according to which, unless there is evidence to the contrary, the person named on the work will be assumed to be the author.

  • Regarding the participation of customs authorities in the enforcement of IPR at the border: The EVFTA requires customs authorities to (i) actively participate in preventing IPR infringement, (ii) coordinate with rights holders to enforce IPR at the border.

Although the IPR protection standards in Vietnamese law in recent years have basically been consistent with the TRIPS Agreement of the WTO (and  therefore quite similar to the general level of IPR protection in the world), the enforcement of IPR in practice is still limited. This may be due to enforcement mechanisms which are not strong enough to prevent and detect violations, or compensation measures are not big enough, or the infringement management is not strict enough…These facts lead to the dissemination of IPR infringement, and the infringers pay little attention to the consequences of infringing acts. When the EVFTA came into effect, together with the CPTPP, Vietnam's IP enforcement legal system will be forced to change according to its commitments under these two FTAs, with many detailed and specific requirements in the implementation process.

With EVFTA commitments to increase the severity and effectiveness of these IPR enforcement measures, businesses that own IPR will be better protected. At the same time, enterprises carrying out import and export activities between Vietnam and Germany related to goods that are subject to IPR protection will have to pay attention to ensure the full compliance with relevant regulations.

EVFTA full text for more information: https://wtocenter.vn/chuyen-de/12778-eu-vietnam-trade-and-investment-agreements 

Source: "Business Handbook: Exploiting the EVFTA  to import and export goods between Vietnam and Germany" - Center for WTO and International Trade