You have spent a lot of money to design a brand and a lot of time and invested money to build a logo brand for your business, but it is copied, counterfeited, and cloned by others your brand? So what to do when you find someone using your brand? How to handle trademark infringement?
We will guide you in detail in the article below.
MỤC LỤC BÀI VIẾT
- 1. What is trademark infringement?
- 2. Legal provisions on trademark infringement
- 3. What to do when detecting trademark infringement?
- 4. Conditions for handling trademark infringement
- 5. Process of requesting treatment of trademark scope by the primary measure.
- 6. Process of requesting handling of trademark infringement by civil means.
- 7. Process of requesting handling of trademark infringement by criminal measures.
- 8. CIS. Law Firm’s trademark handling request service
1. What is trademark infringement?
Trademark infringement is the use of another person’s protected trademark (also known as trademark) for their business activities, such as printing trademarks on labels, product packaging, advertising, etc. promote the brand on e-commerce sites, … without the permission of the trademark owner.
2. Legal provisions on trademark infringement
– The Law on Intellectual Property 2005 was amended and supplemented in 2009 and 2019;
– The Penal Code 2015 was amended and supplemented in 2017;
– Decree 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 state management of property. wisdom;
– Decree 119/2010/ND-CP dated December 30, 2010 amending and supplementing a number of articles of Decree 105/2006/ND-CP dated September 22, 2006 detailing and guiding the implementation of a a number of articles of the Intellectual Property Law on protection of intellectual property rights and state management of intellectual property;
– Decree No. 99/2013/ND-CP dated August 29, 2013 on sanctioning of administrative violations in the field of industrial property;
– Decree No. 126/2021/ND-CP dated December 30, 2021 amending and supplementing a number of articles of the decrees providing for penalties for administrative violations in the field of industrial property; standards, measurement and quality of products and goods; scientific and technological activities, technology transfer; atomic energy;
– Joint Circular 05/2016/TTLT-BKHCN-BKHDT dated April 5, 2016 detailing and guiding the handling of cases where enterprise names infringe industrial property rights.
3. What to do when detecting trademark infringement?
Articles 198 and 199 of the 2005 Intellectual Property Law amend and supplement the following provisions:
| Article 198. Right to self-protection
1. An intellectual property right holder shall have the right to apply the following measures to protect the intellectual property rights of such holder: (a) To apply technological measures to prevent acts of infringement of its intellectual property rights; (b) To request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages; (c) To request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws; (d) To initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder. 2. Organizations and individuals who suffer loss and damage caused by acts of infringement of intellectual property rights or who discover acts of infringement of intellectual property rights which cause loss and damage to consumers or society shall have the right to request the competent State body to deal with such acts in accordance with the provisions of this Law and other relevant laws. 3. Organizations and individuals who suffer loss and damage or who are likely to suffer loss and damage caused by acts of unfair competition shall have the right to request the competent State body to apply the civil remedies stipulated in article 202 of this Law and the administrative remedies stipulated in the law on competition. Article 199. Remedies when dealing with acts of infringement of intellectual property rights 1. Any organization or individual who commits an act of infringement of the intellectual property rights of another organization or individual shall, depending upon the nature and seriousness of such infringement, be dealt with by the application of civil, administrative or criminal remedies. 2. In necessary cases, the competent State body may apply provisional urgent measures, measures to control intellectual property related imports and exports, preventive measures and measures to secure enforcement of an administrative penalty in accordance with the provisions of this Law and other relevant laws. |
Thus, the trademark owner has the right to protect his/her trademark by measures such as: using technology to prevent trademark infringement; requesting the infringing party to stop the act; or requesting competent state agencies to handle infringement by administrative measures, initiating court proceedings, or request criminal handling.
4. Conditions for handling trademark infringement
Clause 2, Article 11 of Decree 105/2006/ND-CP dated September 22, 2006, stipulates as follows:
| Article 11. Elements of trademark infringement
2. The basis for considering an infringing element of a mark’s rights is the scope of trademark protection, including a sample of the mark and a list of goods and services identified in the trademark registration certificate or certificate receive an internationally registered trademark protected in Vietnam. |
Thus, in order to handle trademark infringement, the brand owner first needs to obtain a Certificate of Trademark Registration (trademark) or a Diploma of Trademark Protection. Trademark protection titles are granted through registration procedures at the National Office of Intellectual Property.
5. Process of requesting treatment of trademark scope by the primary measure.
a) What is commercial scope treatment by primary treatment?
Handling of trademark infringement by administrative measures means that the brand owner requests the competent state agency to handle the act of trademark infringement through measures such as: making records of administrative violations, administrative sanctions (fines, application of remedial measures…).
b) Characteristics of administrative measures when dealing with commercial scope
Administrative measures are mandatory and powerful, so the handling of trademark infringement by administrative measures is often quick and thorough.
However, because this is the authority of the state administrative agency to handle the violating party, the violated party is only a supporter, so it does not have the initiative in handling and making decisions. claim for damages as a civil remedy.
c) Authority to handle a series of trademarks
Article 200 of the 2005 Law on Intellectual Property amends and supplements the following provisions:
| Article 200. Competence to handle the scope of intellectual property rights
3. Fing Apply measures of competence of the Inspectorate, Public Security, Market Management, Customs and People’s Committees at all levels. In necessary cases, these agencies can apply preventive measures and ensure administrative handling according to the provisions of law. |
Thus, the agency competent to handle trademark infringement is the Inspectorate, Public Security, Market Management, Customs, and People’s Committees at all levels.
d) How much is the fine for trademark infringement?
Clause 1, Article 2 of Decree 99/2013 / ND-CP stipulates the level of money handling for acts of trademark infringement as follows:
| Article 2. Regulations on maximum fine levels, assessment of handling rights for individuals and organizations
1. The fine level specified in Chapter II of this Decree is the fine level imposed on individuals. The maximum fine for individuals is 250,000,000 VND. For the same main violation, the fine level for organizations is twice as much as for individuals. The maximum fine for organizations is 500,000,000 VND. |
Thus, if an individual commits an act of infringing upon a trademark, depending on the nature and seriousness of the violation, corresponding sanctions will be applied. In case of a fine, the maximum fine is VND 250,000,000; if it is an organization, it will be fined up to 500,000,000 VND.
6. Process of requesting handling of trademark infringement by civil means.
a) What is the handling of trademark infringement by civil measures?
Handling of trademark infringement by civil means that the infringing party initiates a lawsuit at the Court to request the application of civil measures against the trademark infringement parties. The civil measures specified in Article 202 of the Law on Intellectual Property 2005 have been amended and supplemented as follows:
| Article 202. Civil remedies
Courts may apply the following civil remedies in dealing with organizations and individuals who have committed acts of infringement of intellectual property rights: 1. Compulsory termination of the infringing acts. 2. Compulsory public apology and rectification. 3. Compulsory performance of civil obligations. 4. Compulsory payment of damages for loss. 5. 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. |
b) Characteristics of civil remedies when dealing with trademark infringement.
The feature of civil remedies when dealing with trademark infringement is that the brand owner can take the initiative in handling, collecting evidence and offering compensation based on the actual damages that he or she can prove. In addition, the Court is the judicial organ of the State, so the court’s judgment is highly coercive.
However, the time to initiate a lawsuit is often prolonged, making the handling of trademark infringement delayed and time-consuming for the brand owner.
c) Authority to handle a series of trademarks
Clause 2, Article 2 of the 2005 Intellectual Property Law amending and supplementing regulations on the competence to handle trademark-scoped goods by civil means is as follows:
| Article 200. Authority for dealing with acts of infringement of intellectual property rights
2. The application of civil and criminal remedies shall fall within the authority of courts. In necessary cases, courts may apply provisional urgent measures stipulated by law. |
Thus, the competent authority to handle trademark infringement by civil means is the Court.
d) How much compensation must be paid for trademark infringement?
Depending on the evidence provided by the brand owner (ie the plaintiff), such as proving the trademark infringement causes material damage or proving the brand value based on the licensing price use … which will have the corresponding damages. In case it is not possible to determine the amount of compensation for material damage, the court will determine the amount of compensation, depending on the extent of damage, but not exceeding 500,000,000 VND.
The brand owner can also claim mental damages in the range of VND 5,000,000 – 50,000,000 if it is proved that the act of trademark infringement has caused mental damage.
In addition, you also have the right to request the infringing party to pay reasonable costs to hire an attorney.
7. Process of requesting handling of trademark infringement by criminal measures.
a) What is the handling of trademark infringement by criminal measures?
Handling of trademark infringement by criminal measures is criminal measures applied to those who intentionally commit acts of infringing upon the rights to trademarks being protected in Vietnam on a large scale Commerce.
b) Characteristics of the profiling measure when dealing with brand scope.
Handling by criminal measures is the most severe state coercive measure applied by the Court, depriving or restricting the rights and interests of the trademark infringer.
c) Authority to handle a series of trademarks
Clause 2, Article 200 of the 2005 Intellectual Property Law amending and supplementing regulations on competence to handle acts of trademark infringement by criminal means are as follows:
| Article 200. Competence to handle acts of infringing upon intellectual property rights
2. The application of civil remedies or criminal remedies shall fall within the competence of courts. In case of necessity, courts may apply provisional urgent measures provided for by law. |
Thus, the competent authority to handle trademark infringement by criminal measures is the Court.
d) How is trademark infringement punished?
Article 226 of the 2015 Penal Code, which was amended and supplemented in 2017, provides for images applicable to the scope of commercial activity as follows:
| Article 226. Crime of industrial property rights
1. Everyone tries to classify the company’s ownership of the trademark or indication that is being protected in Vietnam, which is a product that counterfeits the trademark or address with the brand or makes any profit. from VND 100,000,000 to under VND 300,000,000 or causing damage to the owner of the mark or address from VND 200,000,000 to under VND 500,000,000 or goods with a value ranging from VND 200,000,000,000 to VND 500,000,000 under VND 500,000,000, the fines of between VND 50,000,000 and 500,000,000 or non-custodial reform for up to 3 years. 2. Committing the crime in one of the following schools, the offenders shall be subject to a fine of between VND 500,000,000 and 1,000,000,000 or between 06 months and 03 years: a) Organized; b) Committing the crime twice or more; c) Gaining illegal profits of VND 300,000,000 or more; d) Damage to the owner of the mark or address is 500,000,000 VND or more; dd) Goods valued at VND 500,000,000 or more. 3. Offenders may be subject to a fine of between VND 20,000,000 and 200,000,000, a ban from performing certain tasks, practicing certain professions, or doing certain jobs for 1 to 5 years. 4. Commercial legal entities committing crimes in this Article shall be penalized as follows: a) Committing the act specified in Clause 1 of this Article on a commercial scale or earning an illegal profit of between VND 200,000,000 and under VND 300,000,000, or causing damage to the trademark owner or from the address 300,000 VND; .000 VND to under 500,000,000 VND or goods with a value ranging from 300,000,000 VND to under 500,000,000 VND; obtaining an illegal profit of between VND 100,000,000 and under VND 200,000,000 or causing damage to the owner of the mark or address from VND 100,000,000 to under VND 300,000,000 or goods with a value of from 100,000 dongs. 000 VND to less than 300,000,000 VND but have been handled for the main violation of this act or terminated for this act, the penalty has not been removed but the scope remains, shall be subject to a fine of between VND 500,000,000 and 2,000,000,000 VND; b) Committing the crime in the cases specified in Article 2, the offenders shall be subject to a fine of from VND 2,000,000,000 to VND 5,000,000,000 or have their operation suspended for a term of 6 months to 2 years; c) A commercial legal entity may be subject to a fine of between VND 100,000,000 and VND 500,000,000, a ban from doing business, from operating in certain fields, or from raising capital for 1 to 3 years. |
8. CIS. Law Firm’s trademark handling request service
Lawyers and specialists of CIS Law Firm have received intensive training in copyright and Intellectual Property from the National Office of Intellectual Property and the World Intellectual Property Organization (WIPO), We are qualified and Experience to assist you:
♦ Research, advise on the legal status and propose solutions related to handling trademark infringement;
♦ Consulting, representing to handle acts of trademark infringement by administrative measures;
♦ Consulting, representing to handle trademark infringement by civil measures (initiate lawsuits);
♦ Consulting, representing to handle acts of trademark infringement by criminal measures.
If you want advice on handling trademark infringement, please contact the information below:
INTELLECTUAL PROPERTY DEPARTMENT – CIS LAW FIRM
109 Hoang Sa, Da Kao Ward, District 1, Ho Chi Minh City.
Phone: 028 3911 8580 – 091 911 8580
Email: info@cis.vn – sohuutritue@cis.vn
