Do you have a Litigation & Enforcement Question?
Acts of infringing upon intellectual property rights are detailed in Articles 28, 35, 126, 127, 129 and 188 of the Vietnam Intellectual Property Law. Accordingly, in order to determine whether an act is considered an infringement of intellectual property rights under the above provisions, we must consider whether the act meets the grounds specified in Article 5 Decree No. 105/2006/ND-CP. Details are as follows:
- The examined subject matter is a protected one.
- The examined subject matter contains an infringing element.
- The person that takes the examined act is neither the intellectual property right holder nor any person permitted by law or a competent agency under Articles 25, 26, 32, 33, Clauses 2 and 3 of Article 125, Article 133, Article 134, Clause 2 of Article 137, Articles 145, 190 and 195 of the Law on Intellectual Property.
- The examined act takes place in Vietnam. The examined act is also considered to have taken place in Vietnam if it occurs on the internet but is aimed at consumers or private users in Vietnam.
Protection of industrial property rights is to protect the Law, to ensure the observance of laws, ordinances and legal documents in the field of industrial property. These acts of protection aim to ensure that the provisions of the law governing industrial property are properly implemented and take effect, and to protect the legitimate rights and interests of the State and of the society as well as the rights holder.
Industrial property objects being protected are assets of enterprises and individuals recognized by law.
Protect industrial property rights to fulfill international rights and obligations. Vietnam has ratified numerous trade agreements as well as numerous international treaties on intellectual property. Vietnam is already a member of the World Trade Organization (WTO). The content of these documents, especially the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), all stipulate the responsibilities of the parties to the implementation of the committed provisions, which ensures the protection of industrial property rights of organizations and individuals who are the rights holders in Vietnam.
Answer: The right to self-protection is the right of industrial property rights holders to apply various measures to protect their industrial property rights, including:
Apply technological measures to prevent acts of infringing industrial property rights:
- Displaying indicative information on the origin of emergence, protection title, owner, scope and period of protection and other information on intellectual property rights on products, means of services, the originals and copies of works, fixations of performances, phonograms, video recordings or broadcasts (collectively referred to as products in this Article) in order to inform that the products are protected intellectual property right subject matters and warn that they should not be infringed upon; Using technical means or measures to mark, identify, distinguish and protect the protected products.
- Intellectual property right holders shall request termination of acts of infringement by sending written notices to the infringes.
- Requests for competent state agencies to handle acts of infringement.
- Initiate lawsuits at court or arbitration to protect their legitimate rights and interests (Article 198.1.a Intellectual Property Law, Article 21 of Decree 105/2006/ND-CP).
When the violating party commits an intentional or unintentional fault, but not to the extent that it is considered dangerous or not to the extent that it is determined as a crime, and these acts are specified in the related administrative handling documents on property rights such as: Law on handling of administrative violations, Decree 99/2013/ND-CP Regulations on handling of administrative violations in the field of industrial property...
Acts of infringing upon intellectual property rights:
Infringement of intellectual property rights causes damage to: Authors, owners, consumers or society.
Producing, importing, transporting, trading: Goods that are forged in terms of intellectual property or assigned to others to perform this act.
Producing, importing, transporting, trading, possessing: Stamps, labels, other items bearing fake trademarks or geographical indications or handing them over to others to perform this act.
When detecting acts of infringing upon intellectual property rights, organizations, individuals and rights holders request specialized inspectorate or authorities such as market management, district-level People's Committees or higher to be processed.
The infringed party must determine the actual damage, the element of fault, the causal relationship between the acts of the infringing party and the damage suffered by the infringed party. Civil measures can be paralleled with administrative and criminal measures.
When a dispute over intellectual property arises, the intellectual property right holder has the right to initiate a civil lawsuit to request the people's court of the province or city to settle. The court has the authority to force the infringing party to:
Compulsory termination of the infringing acts.
Compulsory public apology and rectification.
Compulsory performance of civil obligations.
Compulsory payment of damages for loss.
Compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of goods which infringed intellectual property rights, provided that such destruction, distribution or use will not affect the exploitation of rights by intellectual property right holders.
Applies to those who intentionally commit acts of infringing upon copyright, related rights, infringing upon industrial property rights with respect to trademarks and geographical indications being protected in Vietnam with a large commercial scale, the infringing party is at fault which is considered dangerous to society, the acts and extent of infringement are specified in the Criminal Code.
When detecting signs of a crime infringing upon intellectual property rights, the right holder may file a request to the competent authorities conducting the proceedings.
Acts of infringing upon intellectual property rights are considered crimes when there are sufficient elements to constitute one of the crimes specified in the following Criminal Code:
- Manufacturing and trading of counterfeit goods
- Manufacturing and trading of counterfeit food or food additives
- Manufacturing and trading of counterfeit medicines for treatment or prevention of diseases
- Deceiving customers
The holder of intellectual property rights that has been protected in accordance with the law has the right to request the customs authority to apply measures to inspect, supervise or suspend customs procedures for exported or imported goods showing signs of infringing upon intellectual property rights.
Customs authorities may decide to postpone customs formalities for imported or exported goods when intellectual property rights holders or legally authorized persons make written requests and show evidence of their lawful holding of intellectual property rights and evidence of infringements thereupon and have paid a deposit or produced documents on guarantee by credit institutions as security for payment of damage compensation and expenses as prescribed which may arise due to wrong requests for postponement of customs formalities.
Provisions on postponement of customs formalities for imported and exported goods showing signs of intellectual property right infringement as prescribed in this Law are not applicable to humanitarian aid goods, personal belongings, goods eligible for privileges and immunities, baggage, donations and gifts within the duty-free quota and transited goods.The provisions on temporary suspension of customs procedures for exported and imported goods showing signs of infringing upon intellectual property rights specified in this Law do not apply to humanitarian aid goods and property. movement, goods entitled to privileges and immunities, baggage, gifts, gifts in the duty-free standard and goods in transit.
- In case the infringing party is being handled by administrative or criminal measures, the right holder or the damaged organization or individual may initiate a lawsuit against the infringer at the Court to request damages.
- When applying measures to control import and export goods related to IPR, if the customs authority detects that there are goods infringing upon IPR, the customs authority shall notify the holder to exercise the right to initiate a lawsuit. a civil case at the Court or requesting the agency to handle it by administrative measures (in this case, the right holder still has the right to initiate a lawsuit at the Court to claim compensation for damage).
Intellectual property expertise plays a supporting role for IPR enforcement forces in assessing and concluding on:
- Legal status, ability to protect the subject matter of IP rights, scope of protected IP rights;
- Identify the evidence to calculate the extent of damage;
- Determining the infringing elements, infringing products/services, the factors serving as the basis for determining the value of the protected IPR object, the infringing object;
- Determine the ability to prove the status of the right holder, to prove the infringement, the infringing goods or the ability to prove the contrary of the documents and evidences used in the dispute or infringement.
The conclusion of IP assessment of an assessment organization or an assessor is one of the sources of information and reference documents for enforcement agencies to conclude whether or not there is an infringement of IP rights.
The request for expertise can be made by the right holder, relevant organizations and individuals and enforcement agencies when necessary.
Assessment activities are carried out by organizations and individuals that satisfy the conditions for practice as prescribed by law.
IP representation is a service performed by an organization or individual to represent the right holder, protect the legitimate interests of the IPR holder and is responsible for providing evidence or information about acts of infringing upon IPR rights, the right holder that he is representing, has the responsibility to explain and clarify the contents related to the request for handling before the enforcement agencies.
State management agencies in charge of intellectual property (NOIP, Copyright Office, Office of Plant Variety Protection) do not directly implement measures to enforce IPR rights, but these are specialized agencies, in many cases, these agencies will provide comments to help enforcement agencies conclude on whether or not there is an infringement of IPR.
The provision of expert opinion is similar to that of an IP examination, but is carried out by rights-setting authorities and only the enforcement agency has the right to obtain expert advice from these bodies. Rights-setting authorities do not provide expert opinions to rights holders or other relevant organizations and individuals.
The Inspectorates of the Ministry of Science and Technology at all levels.
Market Management Bureau at all levels.
General Department of Customs of Vietnam.
Economic Police at all levels.
People's Committees of districts and provinces.