According to current regulations (i.e. Article 199 of Law on Intellectual Property), there are 03 following modes of remedies to enforce intellectual property rights in Vietnam:
– Civil remedies; and
– Administrative remedies; or
– Criminal remedies
Accordingly, depending on the nature and extent of acts of infringement, organizations and individuals committing acts of infringement may be handled by civil, administrative or criminal remedies. Criminal remedies are specified in Criminal Code and guiding documents. Within the scope of this article, the author focuses primarily on important changes in the provisions of Criminal Code 1999 to current Criminal Code 2015 amended and supplemented in 2017, which took effect as from January 01, 2018.
I. Regarding objects of Intellectual Property rights
According to Article 131 regarding infringement upon copyright and Article 171 regarding infringement upon industrial property rights of Criminal Code 1999:
With regard to copyright, there was a certain restriction on the scope of regulations on copyright and related rights as afore-said article only named a number of objects under copyright and related rights that might be subject to crimes, for example: “Appropriating the copyright of literary, art, scientific, journalistic works, audio tapes or disc, video tapes or disc; b) Wrongfully assuming authors’ names on literary, art, scientific or journalistic works, audio tapes or dics, video tapes or disc…”.
With regard to industrial property rights, afore-said article stipulated a broad scope of objects of industrial property rights, particularly: “Those who, for business purposes, appropriate and/or illegally use patent, utility solutions, industrial designs, trademarks, goods origin or other industrial property objects, which are protected in Vietnam…”
The Law amending and supplementing a number of articles of Criminal Code in 2009, Article 170a on infringement of copyright and related rights stipulated that any person who without permission of holders of copyright or related rights commited either of the following acts: “Reproducing works, phonograms or video recordings; Distributing to the public copies of works, phonograms or video recordings…” Thus, formally speaking, the name of Article had changed in a broader respective than Criminal Code 1999; and in term of content, objects of copyright and related rights were also broader.
Article 171 on infringement upon industrial property rights stipulated: “Those who intentionally infringe upon industrial property rights to trademarks or geographical indications currently under protection in Vietnam on a commercial scale…” Compared with Criminal Code 1999, the amended 2009 had narrowed the scope of objects of industrial property rights that may be subject to criminal offenses; only two objects: trademarks and geographical indications that were recognized and protected by criminal remedies.
Criminal Code 2015 as amended in 2017, copyright and related rights are still preserved by asserting that objects of copyright and related rights protected under criminal remedies, including: “works, video recordings, audio recordings” (Point 52 Law on amending and supplementing in 2017, as amended and supplemented Article 225 of Criminal Code 2015).
Point 53 Law on amending and supplementing in 2017, as amended and supplemented Clause 1 Article 226 of Criminal Code 2015 stipulates: “Those who intentionally infringe upon industrial property rights to trademarks or geographical indications currently under protection in Vietnam, of which objects are counterfeit trademark goods or geographical indications on a commercial scale…” It could be seen that the scope of objects of industrial property rights protected under criminal remedies are restricted compared to previous regulations.
According to afore-mentioned current criminal law, only goods bearing counterfeit trademarks or geographical indications, not all objects infringing upon rights to trademarks or geographical indications can be sanctioned by criminal remedies. It should be noted that counterfeit goods are goods (products or services) bearing IDENTICAL or INDISTINCTIVE signs to distinguish the overall composition and presentation compared to protected trademarks or geographical indications; it means that it is required a higher level of similarity between the infringed sign and trademark/geographical indication than that in the case of other infringments (confusing similarity).
II. Regarding basic constituents of crimes
Considering the objective behavior of crimes under Criminal Code 1999, according to Article 131, the law listed four types of acts: Appropriating copyright and related rights; wrongfully assuming authors’ names, the related right holder; illegally amending the content of the works or related rights; and illegally announcing or disseminating works, related rights. However, practice had shown that the acts described by the law were not popular (the act of appropriating) and mainly protected moral rights (wrongfully assuming authors’ names, illegally amending the content of works, etc.); and therefore, they were not the main contents, which were important to the right holder and the society in the institution of copyright and related rights protection.
According to Article 131 Criminal Code 1999: “Those who commit one of the following acts thus causing serious consequences or who have been administratively sanctioned for one of the acts stipulated in this Article or have been sentenced for such crime, not yet entitled to criminal record remission but repeat their violations…”
Thus, consequence of the act of infringement was a compulsory element must be taken into consideration to assert that an offense had committed a crime, i.e. the consequence must be SERIOUS.
Article 171 Criminal Code 1999 on infringing upon industrial property rights: “Those who, for business purposes, appropriate and/or illegally use patents, utility solutions, industrial designs, trademarks, good origins or other industrial property objects, which are protected in Vietnam, thus causing serious consequences or who have already been sentenced for such offenses, not yet entitled to criminal record remission but repeat their violations…”
Similar to copyright infringement, the law had also recognized that the compulsory element of objectivity of the crime was: “causing serious consequences”. In addition, the subjective “purpose” of crime had been defined as a compulsory element in the basic constituents.
In practice, Criminal Code 1999 had revealed inadequacies and created a huge obstacle for the competent authorities in conducting legal proceedings, which was to determine how serious the consequences were? How had it been used for business purposes?
The Law on amending and supplementing some articles of Criminal Code 2009 had changed the term “causing serious consequences” into a new one “on a commercial scale”, particularly: “Those who, without permission of holders of copyright or related rights, commit either of the following acts of infringing upon copyright or related rights currently protected in Vietnam on a commercial scale, shall be imposed a monetary fine of between VND 50,000,000 to VND 500,000,000 or subject to non-custodial reform up to two years…” (Article 170a on infringing upon copyright and related rights).
According to Article 171 on infringing upon industrial property rights: “Those who intentionally infringe upon industrial property rights to marks or geographical indications currently under protection in Vietnam on a commercial scale, shall be imposed a fine of between VND 50,000,000 and VND 500,000,000 or subject to non-custodial reform for up to two years”.
With this change, there were a lot of difficulties for law enforcement agencies in practicing because no official explanation or guidance on how it was considered “on a commercial scale”? Almost all prosecuted cases of intellectual property infringements had been getting troubles with such general qualitative regulation.
Criminal Code 2015, as amended in 2017, has overcome the limitation of the Law amending and supplementing some articles of Criminal Code in 2009 with a new quantitative regulation which is clearer as follows:
Clause 1 Article 225 on infringement upon copyright and related rights: “A person who, without the consent of the holders of copyrights and relevant rights, deliberately commits any of the following acts which infringe upon copyrights and relevant rights protected in Vietnam and earns an illegal profit of from VND 50,000,000 to under VND 300,000,000 or causes a loss of from VND 100,000,000 to under VND 500,000,000 to the holders of such copyrights and relevant rights, or with the violating goods assessed at from VND 100,000,000 to under VND 500,000,000 shall be liable to a fine of from VND 50,000,000 to VND 300,000,000 or subject to non-custodial reform for up to 03 years”.
Clause 1 Article 226 on infringement of industrial property rights: “Those who intentionally infringe upon industrial property rights to trademarks or geographical indications currently under protection in Vietnam, of which objects are counterfeit trademark goods or geographical indications on a commercial scale or earns an illegal profit from VND 100,000,000 to under VND 300,000,000 or causes a loss of from VND 200,000,000 to under VND 500,000,000 to the holders of trademarks or geographical indications or infringing goods assessed at from VND 200,000,000 to VND 500,000,000 shall be liable to a monetary fine from VND 50,000,000 to VND 500,000,000 or subject to non-custodial reform for up to 03 years”.
It can be seen that, despite significant changes from the qualitative regulations by specific quantitative regulations, under current regulations, Criminal Code 2015 as amended and supplemented in 2017 still recognizes the factor of “on a commercial scale” as a basic comstituent of crimes in conformity with international commitments.
III. Regarding the subjects of crime
According to Article 170 of Criminal Code 1999 on breaching regulations on the granting of industrial property protection deeds: “Those who are competent to grant protection deeds and breach the law provisions on the granting of industrial property protection deeds, have already been disciplined or administrative sanctioned for such act but still commit it, causing serious consequences, shall be subject to non-custodial reform for up to three years or to a prison term of between six months and three years…”
With this provision, the subjects of the offense relating to industrial property rights established through the registration procedures such as patents, trademarks, industrial designs, etc., were likely to be officials and employees of the National Office of Industrial Property who had committed violations in the appraisal to grant/refuse to grant protection titles. Practices had proved that this provision was inappropriate and unfeasible so practically no cases of criminal prosecution occurred.
The Law amending and supplementing a number of articles of Criminal Code 2009 had removed the provisions of Article 170 of Criminal Code 1999.
According to Article 225 regarding crimes on copyright and related rights and Article 226 regarding crimes on industrial property rights of Criminal Code 2015 as amended and supplemented in 2017, it is the first time that CORPORATE ENTITIES have become a subject of crime under Vietnamese Criminal laws.
Pursuant to Clause 4 Article 225 Criminal Code 2015 as amended and supplemented in 2017: “a) Any corporate entity that commits an offence specified in Clause 1 of this Article despite the fact that it previously incurred a civil penalty or has a previous conviction for the same offence which has not been expunged shall be liable to a fine of from VND 300,000,000 to VND 1,000,000,000; b) A corporate entity that commits this offence in the case specified in Clause 2 of this Article shall be liable to a fine of from VND 1,000,000,000 to VND 3,000,000,000 or has its operation suspended for 06 – 24 months; c) The violating corporate entity might also be liable to a fine of from VND 100,000,000 to VND 300,000,000 is prohibited from operating in certain fields or raising capital for 01 – 03 years.”
Pursuant to Clause 4 Article 226 Criminal Code 2015 as amended and supplemented in 2017: “a) Any corporate entity that commits an offence specified in Clause 1 of this Article despite the fact that it previously incurred a civil penalty or has a previous conviction for the same offence which has not been expunged shall be liable to a fine of from VND 500,000,000 to VND 2,000,000,000; b) A corporate entity that commits this offence in the case specified in Clause 2 of this Article shall be liable to a fine of from VND 2,000,000,000 to VND 5,000,000,000 or has its operation suspended for 06 – 24 months;c) The violating corporate entity might also be liable to a fine of from VND 100,000,000 to VND 500,000,000, be prohibited from operating in certain fields or raising capital for 01 – 03 years.”
The issue of reviewing criminal liability for corporate entities has long been applied in many countries around the world (e.g. the UK since 1915, the USA since 1983), however, in Vietnam, in conformity to the level of Socio-economic development and the demand of practical fighting against infringements by corporate entities recently in respect of heated debate sectors, such as environment, social security, intellectual property rights …, until Criminal Code 2015 as amended and supplemented in 2017, the state has officially recognized criminal liability for corporate entities in the field of intellectual property rights./.
