Customs supervision of goods infringing intellectual property rights

(Applicable to exported and imported goods)

Currently, e-commerce is increasingly growing along with the need to expand business as well as supply goods from foreign markets into Vietnam. To prevent the risk of counterfeit and poor-quality goods entering the domestic market, organizations and individuals with protected trademarks in Vietnam need to carry out customs supervision for verification by customs authorities. and protect intellectual property rights. In this article, Viet An Law will advise on drafting documents and procedures for requesting customs supervision.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022;
• Law on Customs 2014, as amended and supplemented 2018, 2020, 2022;
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and housing management water on intellectual property;
• Circular 13/2015/TT-BTC regulates inspection, supervision, and temporary suspension of customs procedures for exported and imported goods that require protection of intellectual property rights; Control of counterfeit goods and goods that infringe intellectual property rights, amended and supplemented by Circular 13/2020/TT-BTC.
• Circular 14/2021/TT-BTC regulates the rates, collection, payment, management, and use of customs fees and fees for goods and means of transport in transit.

Customs supervision of intellectual property rights infringement

Customs authorities have the authority to handle acts of intellectual property rights infringement on imported and exported goods according to the provisions of Article 200 of the Intellectual Property Law:

• Administrative measures and preventive measures can be applied in necessary cases to ensure sanctions according to regulations, such as: temporarily detaining people, goods, exhibits, and means of violation; examination of persons, means of transport, objects, places where goods, exhibits and means of intellectual property infringement are hidden.
• Measures to control import and export goods related to intellectual property according to the provisions of Article 216 of the Intellectual Property Law, including (1) Suspension of goods suspected of infringement; (2) Inspection and supervision to detect goods showing signs of infringement. During the implementation of these two regulatory measures, if intellectual property counterfeit goods are detected, the customs authority has the right and responsibility to apply administrative measures to handle.

Cases where two measures to control import and export goods are applied are specified in the Intellectual Property Law as follows:

Obligations of intellectual property rights holders

According to Article 3.8 of Circular 13/2015/TT-BTC, intellectual property rights holders have the right to request are intellectual property rights holders (including intellectual property rights holders and organizations, individual to whom the intellectual property right owner is transferred) or a person legally authorized by the intellectual property right holder.

Obligations to prove rights

To ensure that the application of measures to control the export and import of goods related to intellectual property is well-founded, the requesting entity has the following obligations:

• Have proof of legal ownership of intellectual property rights;
• There is evidence of intellectual property rights infringement: Provide sufficient information to identify goods suspected of infringing intellectual property rights or to detect goods showing signs of intellectual property rights infringement wisdom;
• Apply to the customs authority and pay fees according to the provisions of law;
• Compensate for damages and pay costs incurred by the person subject to control measures in cases where the controlled goods do not infringe intellectual property rights.

When the requesting entity fully meets the above obligations, the customs authority will receive it and have grounds to apply relevant customs control measures.

Financial security obligations

To ensure the performance of the obligations, the person requesting the application of temporary suspension of customs procedures must submit a security deposit in one of the following forms:

• An amount equal to 20% of the value of the shipment requiring temporary suspension of customs procedures or at least twenty (20) million VND if the value of the shipment cannot be determined;
• Guarantee documents from banks or other credit institutions.

Request of customs supervision

Normally, the rights holder requests customs supervision to have the coordination of the customs authority in detecting the shipment before having a basis to request the suspension of customs procedures for one or more shipments is suspected of infringing on its intellectual property rights in the next steps. Competent customs authorities receive applications for inspection, supervision, or requests for temporary suspension of customs procedures according to the provisions of Clause 1, Article 75 of the Customs Law.

Application submission form

Intellectual property rights holders, directly or through a legally authorized person, apply to the General Department of Customs (Department of Customs Management Supervision and Control) for customs supervision of exported and imported goods. signs of intellectual property rights infringement through the Electronic Customs Data Processing System or sent directly/by post to the one-stop department of the General Department of Customs.

Proposal profile

The intellectual property rights holder or legally authorized person needs to provide the customs authority with all of the following documents:

• Application for inspection and supervision of exported and imported goods requiring intellectual property rights protection according to Form Appendix No. 01-DDN/SHTT/2020 issued with Circular 13/2015/TT-BTC;
• Protection titles of industrial property rights or other documents proving that industrial property rights are being protected in Vietnam or Certificate of contract registration for transfer of rights to use industrial property objects; Certificate of registration of copyright, rights related to copyright, rights to plant varieties or other documents proving copyright, rights related to copyright, rights to plant varieties;
• Detailed description of goods infringing intellectual property rights, photos, and characteristics that distinguish real goods from goods infringing intellectual property rights;
• List of legal exporters and importers of goods requiring supervision; list of people capable of exporting and importing goods that infringe intellectual property rights;
• Authorization document (in case of application authorization).
• Customs fee payment documents as prescribed in Circular No. 14/2021/TT-BTC, i.e. 200,000 VND/ 01 application.

Dossier requesting a temporary suspension of customs procedures

The applicant requests to submit a dossier requesting a temporary suspension of customs procedures for exported and imported goods requiring intellectual property rights protection to the Customs Sub-Department through the same form as the application. Customs supervision proposal, including the following documents:

• A dossier requesting inspection and supervision of exported and imported goods requiring protection of intellectual property rights has been presented above;
• Application for temporary suspension of customs procedures according to form No. 02-DTD/SHTT/2020 Appendix issued with Circular 13/2015/TT-BTC;
• Guarantee documents from credit institutions or guaranteed money according to regulations;
• Documents for payment of customs fees according to the temporary suspension of customs procedures as prescribed in Circular No. 14/2021/TT-BTC.

Procedures for applying customs control measures

Apply inspection and supervision measures

• The customs authority must immediately notify the applicant that the shipment is found to have signs of copyright infringement.
• Within three (03) working days from the date of notification, if the applicant does not request to temporarily suspend customs procedures for the detected shipment and the customs authority does not decide to consider applying administrative measures, the customs authority is responsible for continuing to carry out customs procedures for the shipment.
• The time limit for applying customs inspection and supervision measures for goods requiring intellectual property rights protection is 02 years from the date the customs authority accepts the request of the intellectual property rights holder. This term can be extended for another 02 years but must not exceed the term of protection of the relevant intellectual property rights subject under the provisions of the Intellectual Property Law.

Apply temporary suspension measures

• Within 2 hours of receiving the complete required documents, the customs authority will issue a notice of acceptance or refusal with reasons to the applicant.
• In case of acceptance, the General Department of Customs will notify through the data system about the acceptance of the application to the designated provincial and city Customs Departments for implementation.
• In case the goods are detected with signs of infringement, the Customs Sub-Department shall provide the intellectual property rights holder with information about the shipment, if known, within thirty (30) days from the date of the Decision to apply temporary measures.
• The period of temporary suspension of customs procedures is a maximum of 10 working days from the date the Customs Sub-Department notifies the right holder. The period can be extended but the total temporary suspension period must not exceed 20 working days if the requester has a legitimate reason and has paid an additional security amount according to regulations.
• During the temporary suspension, the Customs Sub-Department shall request to provide documents related to the shipment, take samples or allow relevant persons to take samples for assessment, and discuss with the Intellectual Property Department for resolving arising disputes, report to the Department and the General Department of Customs to resolve complicated cases.

At the end of the suspension period, possible legal consequences include:

• The person requesting a civil lawsuit;
• The customs authority decided to handle the case according to procedures for handling administrative violations.
• The customs authority transfers it to the investigation agency, other agencies, or competent courts to resolve if it is not within its jurisdiction;
• Sub-Department continues to carry out customs procedures for shipments whose customs procedures are temporarily suspended in the following cases:
  • The decision to temporarily suspend customs procedures is suspended or revoked according to the decision to resolve complaints and denunciations;
  • The applicant requested to temporarily suspend customs procedures and withdraw the application.
  • No violations were detected and/or no further remedial measures were explored. In this case, the requester must compensate the owner of the shipment for damages and costs incurred and return the remaining security amount after fulfilling the compensation obligation and costs incurred by the customs authority.

Form of request for handling of administrative violations

Requests to handle infringements are made by rights holders when:

• There is clear evidence and grounds for the infringement assessed and identified during the process of suspending customs procedures above; and
• The customs authority has not yet issued a decision to accept the case according to procedures for handling administrative violations.

The dossier requesting administrative measures submitted to the customs authority includes the request for handling infringements and accompanying documents and evidence that must comply with the form specified in Articles 89 and 90 of Decree 65/2023/ND-CP, accordingly, the application has the following main contents:

• Date, month, year of request;
• Name and address of the person requesting infringement handling; full name of the representative, if the request is made through a representative;
• Name of the agency receiving the request;
• Name and address of the infringer; name and address of the person suspected of being an infringer in case of a request to temporarily suspend customs procedures for exported or imported goods suspected of being infringed;
• Name and address of organization or individual with related rights and interests (if any);
• Name and address of the witness (if any);
• Summary information about industrial property rights and plant variety rights that are infringed: types of rights, grounds for arising rights, summary of rights objects;
• Summary information about the infringing act: date, month, year, and place where the infringement occurred, brief description of the infringing product, infringing act, and other information (if any);
• Content of request for application of infringement handling measures;
• List of documents and evidence attached to the application;
• Signature of applicant and stamp (if any).

Documents and evidence accompanying the application include:

• Evidence proving the right holder if the requester is the owner or the transferee, inheritor, or successor of industrial property rights or rights to plant varieties;
• Evidence proving that an infringement has occurred; Evidence of suspicion that exported or imported goods infringe upon industrial property rights or plant variety rights for applications for temporary suspension of customs procedures;
• Authorization document for representative notarized or certified;
• Other documents and evidence to prove your claim.

Service on customs supervision of goods infringing intellectual property rights of Viet An Law Firm

• Consulting on drafting documents to request Customs supervision;
• Consulting on drafting documents requesting a temporary suspension of Customs;
• Objective representative works with relevant agencies related to procedures for temporary suspension, inspection, and customs supervision of goods infringing intellectual property rights.

Above are some consulting contents of Viet An Law related to customs supervision of goods infringing intellectual property rights. Please contact us to receive the best support regarding related content.