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July 4, 2018

Vietnam: Is a VIPRI Opinion the Secret to Enforcement Success?

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Managing Intellectual Property

When pursuing an IP enforcement case in Vietnam, rightsholders will often be advised by counsel of the need to obtain a “VIPRI opinion” as a first step. VIPRI (Vietnam Intellectual Property Research Institute), a quasi-governmental organization, is the only agency in Vietnam authorized to provide expert opinions (statutorily known as “assessment conclusions”) on IP infringement.

A Useful Enforcement Aid

Rightsholders in an infringement action may petition VIPRI to issue an official but non-binding opinion on whether an IP right (patent, industrial design, or trademark) is infringed. A favorable VIPRI opinion, finding that a product or service infringes an IP right, can then be submitted to an enforcement agency, such as the Inspectorate of the Ministry of Science and Technology, the Market Surveillance Department, or customs. Then, based on the non-binding opinion, the enforcement agency can consider whether to proceed with enforcing the IP rights of the complainant, such as by proceeding with an administrative raid and issuance of sanctions. Courts can also rule on IP cases, and a VIPRI opinion can be very persuasive evidence for the court to rule in the rightsholder’s favor.

Enforcement agencies do not require a VIPRI opinion to take action, and in many cases have taken action against infringers without a VIPRI opinion in hand. However, for matters such as trademark infringement where the marks differ slightly, or patent infringement where technical claims must be analyzed, the existence of the VIPRI opinion will help the enforcement agency to feel more comfortable to proceed with the enforcement action, and generally will result in a faster action with more predictable results. VIPRI is recognized as having a strong stable of technical experts, and many of its leaders and examiners are former leaders of Vietnam’s National Office of Intellectual Property (NOIP).

Obtaining a VIPRI Opinion

To seek a VIPRI opinion, the rightsholder must fill in a standard form that requires basic information such as the trademark or patent registration number of the petitioner. Samples or pictures of the infringing product may be submitted with the form. Additionally, a mini-brief is often filed wherein the petitioner can explain any nuances of the case, or provide more detailed analysis, such as by submitting a claim chart and infringement analysis in a patent infringement case.

Information on the well-known character or wide use and recognition in Vietnam of a trademark or design can be presented to support a VIPRI petition and may be persuasive. However, VIPRI will not opine on the well-known status of a trademark and cannot declare a trademark to be well-known – only the NOIP and the enforcement bodies will issue opinions on well-known status.

Generally, VIPRI opinions are issued within two to four weeks after the petition is filed. The longer end of this range typically arises in complex patent petitions, where technical claims must be analyzed. For very straightforward trademark infringement cases, a VIPRI opinion can sometimes be obtained in only a week.

Tips and Best Practices

In some cases, both the rightsholder and the alleged infringer could petition VIPRI, one seeking to prove infringement, one seeking to prove non-infringement. If a second petition is filed for the same case, VIPRI will generally follow the opinion it issued in relation to the first petition. Thus, it is advantageous to arrive first at VIPRI.

If multiple rights are being infringed in a matter, for example, if a product infringes both a word mark and a logo that are separately registered, it is advisable to seek a separate VIPRI opinion on each IP right. This is to safeguard against the situation in which a favorable opinion and an unfavorable opinion are contained in the same document, and when disclosing the favorable opinion, the unfavorable one is also necessarily disclosed to the infringer and perhaps other parties. Generally, there is no duty to disclose a VIPRI opinion. Thus, any separate negative opinion can be filed in a drawer, and not disclosed. The practitioner may then just use the favorable decision when submitting the case to the enforcement authorities.

Naturally, care should be taken in this case, as if such undisclosed opinion is later revealed in the course of litigation, it may cause the practitioner to lose credibility with the arbiter. Such opinion could be discovered if the alleged infringer were to later file a petition for an opinion on non-infringement, as mentioned above, in which case VIPRI would note that it had already ruled on the matter.

Overcoming an Unfavorable VIPRI Opinion

Many rightsholders may tend to give up on an infringement action if they are dealt an unfavorable VIPRI opinion on infringement. However, victory can be seized from the jaws of defeat in this situation. The rightsholder still has several options to consider, including not disclosing the opinion to the enforcement agency, seeking a separate professional opinion from the NOIP, or petitioning VIPRI to reverse its opinion. Though reversals are very rare, they have been granted on a few occasions, based on the submission of more persuasive evidence and particularly well-crafted arguments.

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