Recently, the media in Vietnam has paid the special attention to a case of “Infringement of industrial property rights” brought to trial by the People’s Court of Ba Ria – Vung Tau province, which has been brought to trial twice before, against Saigon Beer Group Vietnam Joint Stock Company and Mr. Le Dinh Trung. This is the first case prosecuted and brought to trial related to the crime of “Infringement of industrial property rights” specified in Article 226 of the Penal Code. This is also the first time in the history of criminal proceedings of Vietnam, a legal entity is the defendant.
But so far, after two court openings, the case still has to stop and waiting for the further guidance from competent authorities. Surrounding this case, there are a lot of views and opinions, one of the main problems mentioned is the lack of specific regulations to define what is the so-called “confusing or potentially confusing similarity” between a protected trademark and the sign being considered or alleged to be infringing.
Acts of infringing upon trademark rights under the provisions of the Intellectual Property Law?
According to the provisions of Article 129 of the Intellectual Property Law, the following acts performed without the permission of the trademark owner are considered to infringe upon the rights to the mark:
a) Using a sign identical to a protected mark for goods or services identical with goods or services on the list of registered trademarks attached to that mark;
b) Using a sign identical to a protected mark for goods or services that are similar to or related to those on the list of registered trademarks attached to that mark, if the use is likely to cause confusion about the origin of goods and services;
c) Using a sign similar to a protected mark for goods or services that are identical with, similar to, or related to, goods or services on the list of registered trademarks attached to such mark, if the use is likely the possibility of causing confusion about the origin of goods or services;
From the above provisions, on the basis of determination and severity of violation, it can be classified into the following types of acts of trademark infringements:
1) Acts of infringing upon trademark rights when using signs/elements identical with the protected mark for goods or services that are identical with the protected goods or services. It can be said that this type of violation is of more serious as to the nature and the level, and so for this type of behavior, the law does not stipulate the condition of “likely to cause confusion” or not on the origin of goods and services.
2) Acts of infringing upon trademark rights when using a sign/element that is identical to a protected mark for goods or services similar to or related to goods or services in the list of registered trademarks.
3) Acts of infringing upon trademark rights when using the similar sign/element with the protection mark for goods or services that are identical, similar or related to the goods or services in the list of registered trademarks”.
For the types No. 2) and No. 3), due to the less serious level of violation, the law provides an additional condition that is “if, when used, there is a possibility of confusion about the origin of goods, services”, then it constitutes an act of trademark infringement.
What are counterfeit trademark goods according to the provisions of the Intellectual Property Law?
Article 213 of the Law on Intellectual Property stipulates: “Counterfeit trademark goods are goods or packages of goods bearing trademarks or signs identical to or difficult to distinguish from the protected mark used for the same goods without the permission of the trademark owner.”
Clause 5, Article 11 of Decree No. 105/2006/ND-CP dated September 22, 2006 detailing and guiding the implementation of a number of articles of the Intellectual Property Law on protection of intellectual property rights and property management. country on intellectual property, amended and supplemented in accordance with the provisions of Decree No. 119/2010/ND-CP dated December 30, 201 detailing and guiding on counterfeit trademark goods: “In case a product or service bears a sign that is identical or difficult to distinguish in terms of overall structure and presentation from a protected mark for products or services of the same type within the scope of protection, it shall be considered as goods or services counterfeiting trademarks according to the provisions of Article 213 of the Intellectual Property Law.”
Thus, the Decree has expanded the scope of application even more than Article 213 of the Intellectual Property Law to the following two aspects:
- Counterfeit trademark goods including with the service sector and
- Products/services only need to satisfy: “of the same type within the scope of protection” and not limited to “the same product itself”.
From the above provisions, based upon the criterion of the similarity/similarity between the protection mark and the suspected sign – the factor under consideration, it can be divided into two cases being considered as counterfeit goods as follows:
1) Suspicious sign – the element under consideration completely coincides with the protection mark in terms of content, meaning and form of expression (color, layout, etc.)
2) Suspicious sign – the element under consideration is difficult to distinguish in its overall structure and presentation from the protected mark.
In the first case, it is relatively easy to understand, to evaluate and to apply in practice when compared to the second one. The provision: “difficult to distinguish” in terms of overall structure and presentation… is quite qualitative which depending much on the knowledge and information individually acquired. As a result, in the same case, each person can feel, view and perceive differently. Unfortunately, this Decree also did not set forth enough detailed and clear guidance on what is considered “difficult to distinguish” between the sign/element under consideration and the protected mark?
From the above regulations and analysis, it can be considered that the act of producing and trading in counterfeit trademark goods is just one type, one kind of trademark infringements, but as such is at a more serious level. In other words, not all acts of infringing upon trademark rights can be handled by criminal measures, instead there are corresponding legal measures such as administrative and civil…
Comments and proposal
Going back to the above criminal case, under Point 53 of the 2017 Amendment and Supplement Law, amending and supplementing Clause 1, Article 226 of the Penal Code 2015 stipulates: “Whoever intentionally infringes upon industrial property rights to a mark or geographical indication are being protected in Vietnam but the subject matter is counterfeit trademark or geographical indication at commercial scale…”.
Assuming that all other criteria and factors are met to constitute a crime according to Clause 1, Article 226 of the Penal Code, then in terms of the degree of coincidence and similarity (between suspected signs – factors being considered compared to a protected mark) in which particular case? To what extent, to what extent can it be considered counterfeit trademark goods – and subject to criminal prosecution? In what cases, it will just be administratively handled?
By the above regulation, we are of the opinion that, the state’s criminal law views and policies on the field of industrial property should be understood as: criminal penalties shall only be applied for trademark infringement acts at a certain severity level. That is, only the subject of counterfeit trademark goods (or geographical indications) can be handled by criminal measures (**).
On the principle of application of the law as noted in Clause 2, Article 5 of the Intellectual Property Law: “In case of any difference between the provisions on intellectual property of this Law and the provisions of other laws, the provisions of law on intellectual property shall prevail provisions of this Law”, we believe that while waiting for official guidance documents from competent authorities (National Assembly Standing Committee, Judicial Council of the Supreme People’s Court, relevant Ministries), the relevant and relevant provisions in the detailed guiding documents of the Intellectual Property Law in the registration procedure to establish the right and in the procedure for administrative sanctioning of industrial property on terms and concepts. Concepts: trademark infringement, counterfeit trademark goods, potentially confusing, indistinguishable in general, well-known trademarks…also can and should be approved by industrial property rights enforcement agencies, including the Court, reference and reference when considering and settling the case in order to promptly protect the legitimate rights and interests of the trademark owner./.
(*)The case of infringement of industrial property rights of Saigon beer: Civil dispute or criminal handling? (lsvn.vn)(**)Changes in the criminal law on enforcement of intellectual property rights in Vietnam – Investip.vn
By Trinh Duong Van
Enforcement & Litigation Department
INVESTIP IP LAW FIRM