In January 2016, after an in-depth investigation with the assistance of Invenco, the legal representative of the trademark owner, Orion Corporation, the Customs officers took enforcement action on January 13, 2016. In particular, the Customs of Sai Gon Port coordinated with the Anti-Smuggling Investigation Department (General Department of Customs) to physically inspect the export shipment of Pham Nguyen Company, and found the suspected infringing goods (1,200 boxes) bearing the “Choco Pie” trademark.

Upon the assessment conclusion from the Vietnam Intellectual Property Research Institute, the suspected goods are infringement. The Customs issued decision No. 150 to temporarily suspend clearance on the Pham Nguyen’s goods.

As the Customs have no rights to impose an administrative sanction on exported infringing goods, they transferred the case to the other competent authorities, i.e. The Inspectorate of Department of Science and Technology. On December 4, 2017, the HCMC People's Committee issued an administrative sanctioning decision against Pham Nguyen Company, with a fine of VND 246 million for the act of producing the counterfeit goods.

On November 16, 2016, Pham Nguyen filed the Petition to the Court to sue against the Customs’ Decision No. 150, to claim that the Customs’ temporarily suspending clearance on the Pham Nguyen’s goods is illegal, and caused their serious damages.

The first instance had prolonged from November 16, 2016 to the March 2020 after a number of meetings and oral hearings. On March 16, 2020, the Court dismissed all the Pham Nguyen’s petition in the first instance. The losing party bears the Court’s fees of VND 47,563,600, which is equivalent to US$ 2,100.

IP Lessons:

In this case, Vietnam Customs made first-ever detection of counterfeit goods exporting to abroad. The IP Law provides that the Customs have rights to inspect the suspected goods, but no rights to impose an administrative sanction on the act of exporting the infringing goods.

The fact that, the competent authorities was quite awkward and reluctant to handle this case. In some moments, there was a conflicting professional opinion from a competent authority that: “if a manufacturer produces infringing goods for export purpose, other than the domestic market, then it does not apply the administrative measure”.

The Vietnam IP law provides that in case that there is an appeal arising with regard to the infringement case, the authority needs to suspend the case, and awaits the final outcome of the appeal. Taking advantage of this provision, the infringer filed cancellation requests to the IP Office to raise the case as “being disputed”, then requested the Customs to allow clearance of the infringing goods.