Infringement of intellectual property rights in Vietnam

On August 22nd , 2019, the Prime Minister signed Decision No. 1068/QD – TTg approving the Intellectual Property Strategy to 2030. The development of the intellectual property system must be synchronous at all stages: Creating, establishing rights, exploiting and protecting intellectual property rights. In particular,  combating intellectual property rights violations  is an increasingly popular issue in Vietnam.

Violation of intellectual property  rights  in Vietnam

In recent years, intellectual property rights violations are on the rise, complicated developments. Violators tend to move from traditional marketing and distribution to e – commerce (through online sales sites, sales websites and especially Facebook and Zalo social networking sites). Violations on the internet are "no borders, no geographical barriers." Moreover, the method of production, import, marketing, sale of infringing intellectual property items has become increasingly sophisticated, organized inter – provincial, inter – regional, inter – national and multi – stomach, variety of formand type, so it is difficult for enforcement agencies in  the developmentand  handling.

Violations occur mainly in the following areas: Infringement of copyright and copyright – related rights; exportingand selling counterfeit goods; negative industrial property rights on goods, signs and means of business; xnegative rights to trademarks in business names and trade names; unfair competition on label samples and product packaging styles; Unfair competition related to registration of domain names on the internet.

Examples of intellectual property rights violations

A few examples of cases of intellectual property rights violations:

• In 2021, Nam Dinh Provincial Police and Market Administration arrested a large number of counterfeit goods trademark Ed  Hermès, LV, Chanel,... at a warehouse in  Dai Re village, Vinh Hao commune, Ban Ban district, Nam Dinh province. Dozens of accounts with other peeling names such as The Queen Shop, Trang Anna (The Queen), Dung Vu (Boss The Queen), The Queen – VIP Bag Specialist,  Duong Vu Xuan,  The Queen – Ocean – Retail  handbags,  Handbag Warehouse – Guangzhou Row ... is used alternately to evade inspection by the authorities and shipping units when being denounced and to block accounts for violations. It is estimated that between 20,000 and 30,000 infringing products are stored there. Mainly handbags branded Hermès, LV, Chanel. Authorities had to use up to 10 vehicles have 3.5 – ton to move all the infringing goods at the warehouse. The offending shipment is estimated to be worth about $6 billion.
• In 2020, Saigon Beer Vietnam Joint Stock Company was found to produce and trade products infringing on industrial property rights to the trademark "SAIGON BEER" of Saigon Beer – Wine – Beverage Joint Stock Corporation (SABECO). The results of the referendum showed that Saigon Beer Vietnam Joint Stock Company had infringed on 5 signs  in SABECO's protected    trademark.   Accordingly,  the commercial legal person is Saigon Beer Joint Stock Company Vietnam and the company's legal representative  Mr. Le Dinh Trung has been prosecuted and tried  in the case of  " Affect negatively public ownership" under Article 226 of the Penal Code.
• In 2019, the producer of "Butterfly House" used     recordings of the songs "Forever Together","Taxi", "Curve"  without  permission and without  the consent of   the relevant ownersincluding the performer and the producer of the sound. 
• In 2018, Dong Dong Trading and Manufacturing Co., Ltd.  sued  Asanzo Vietnam Electronics Company for the production and sale of strange electronic and electrical products bearing the brand  "Asanzo" with the logo shape, the design similar to the trademark "Asano"  that Oriental Trading and Manufacturing Co., Ltd. is protected. The result of the case: The legally effective judgment forced  Asanzo Vietnam Electronics Company to pay compensation to Dong Dong Trading and Manufacturing Co., Ltd.  100 million VND, remove the trademark on the product, and at the same time apologize and publicly correct on 3 related numbersin Thanh Hien Newspaper.

What is a violation of intellectual property rights?

Following and determines the violation of intellectual property rights:

Violations of intellectual property rights are acts specified in Articles 28, 35, 126,    127, 129, 130 and 188 of the Law on Intellectual Property. These acts are considered a violation of intellectual property rights when there are sufficient grounds:

• The subjects under consideration fall under the scope of the subjects being protected intellectual property rights.
• There is an intrusive element in the subject under consideration. 
• The person performing the acts under consideration is not an intellectual property rights subject and is not a person permitted by law or competent authority as prescribed in Articles 25, 26, 32, 33, Clause 2 and Clause 3 Article 125, Article 133, Article 134, Clause 2, Article 137,  Articles 145, 190 and 195 of the Intellectual Property Law. 
• The alleged behavior occurred in Vietnam. The behavior under consideration is also considered to occur in Vietnam if such behavior occurs on the internet but is aimed at consumers or users who believe in Vietnam.

Agencies handling intellectual property violations

According to Article 200 of the Law on Intellectual Property, competent agencies dealing with violations of intellectual property rights include:

• Inspectionagencies, police, market management, customs, people's committees at all levels competent to apply measures to handle administrative violations.    
• Courts apply civil and criminal measures to handle violations.
• Customs offices shall apply measures to control exports and imports related to intellectual property under their competence.

Violations of  intellectual property rights

Copyright infringement

According to Article 28 of the Law on Intellectual Property, violations of intellectual property rights against copyright include:

• Appropriation of copyright for literary, artistic and scientific works.
• Impersonating the author.
• Publish and distribute works without the author's permission.
• Publication and distribution of works co – authored without the permission of that co – author. 
• Repairing, cropping or misrepresenting the work in any way that harms the honor and reputation of the author.
• Copying works without permission of the author or copyright owner, except for cases specified in Point a and Point dd Clause 1 Article 25 of the Law on Intellectual Property.
• Making derivative works without the author's permission, the copyright owner for works used to make derivative works, except for the cases specified in Clause 1 Article 25 of the Law on Intellectual Property.
• Use the work without the permission of the copyright owner, without paying royalties, remuneration, other material rights as prescribed by law, except for the cases specified in Clause 1, Article 25 of the Law on Intellectual Property.
• Lease the work without paying royalties, remuneration and other material benefits to the author or copyright owner.
• Clone, produce copies, distribute, display or communicate works to the public through media networks and digital media without the permission of the copyright owner.
• Publish works without the permission of the copyright owner.
• Intentionally cancel or invalidify technical measures taken by the copyright owner to protect the copyright to his or her work.
• Intentionally delete and change permission management information in the form of electronically present in the work.
• Production, assembly, transformation, distribution, import, export, sale or lease of equipment upon knowledge or having grounds to know that such equipment invalids technical measures taken by the copyright owner to protect copyright for his or her work.
• Make and sell works where the author's signature is forged.
• Export, import and distribution of copies of works without the permission of the copyright owner.

Violations of related rights

According to Article 35 of the Law on Intellectual Property, violations of intellectual property rights for related rights include:

• Appropriating the rights of performers, producers of recordings, video recordings, broadcasting organizations.
• Impersonating performers, producers of recordings, video recordings, broadcasting organizations.
• The announcement, production and distribution of the performance has been shaped, recorded, recorded, broadcast without the permission of the performer, producer of audio recordings, video recordings, broad casting organizations.
• Correction, mutilation, misrepresentation in any form for the performance harms the honor and reputation of the performer. 
• Copying and extracting for the formed performance, recordings, recordings, broadcasts without the permission of the performers, producers of recordings, recordings, broadcasting organizations.
• Remove or change permission management information in electronic form without the permission of the relevant rights owner.
• Intentionally cancel or invalidation of technical measures taken by the relevant rights holder to protect his related rights.
• Broadcasting, distributing, importing for distribution to the public the performance, copies of the performance have been shaped or recordings, recorded upon knowing or having grounds to know the information of rights management in electronic form has been removed or has been changed without the permission of the relevant rights owner.
• Manufacture, assemble, modify, distribute, import, export, sell or lease equipment when it is known or has grounds to know that the device illegally decodes a satellite signal carrying an encrypted program.
• Intentionally collecting or continuing to distribute a satellite signal carrying the program is encoded when the signal has been decrypted without the permission of the legaldistributor.

Violations of rights to inventions, industrial designs, semiconductor integrated circuit layout designs

According to Article 126 of the Law on Intellectual Property, the following acts are considered to be violations of the intellectual property rights of the patent owner, industrial design, layout design:

• Using a protected invention, a protected industrial design or an industrial design that does not differ significantly from that design, the design of the layout is protected or any of the original part of that layout design within the validity period of the protectionist diploma without the permission of the owner.
• Use of inventions, industrial designs, layout designs without payment of compensation in accordance with the provisions on temporary rights specified in Article 131 of the Law on Intellectual Property.

Violation of rights to business secrets

According to Article 127 of the Law on Intellectual Property, the following acts are considered a violation of intellectual property rights for  business secrets:

• Access and collect information that belongs to business secrets by resisting the security measures of the legitimate controller ofthat business.
• Disclose and use information belonging to business secrets without the permission of the owner ofthat business secret.
• Breach of confidentiality contract or deception, induces, bribes, coerces, seduces, takes advantage of the trust of persons with security obligations in order to access, collect or revealbusiness secrets.
• Access and collect information belonging to the applicant's business secrets according to the procedure of applying for a business license or circulating products by resisting the security measures of the competentauthority.
• Using or disclosing business secrets whether you know or are obliged to know such business secrets obtained by others in connection with one of the violations of the right to business secrets.
• Failing to fulfill the security obligations specified in Article 128 of the Intellectual PropertyLaw.

Legal controllers of business secrets include business secret owners, legally transferred persons with the right to use business secrets, managers of business secrets.

Violations of rights to trademarks, trade names and geographical indications

According to Clause 1, Article 129 of the Law on Intellectual Property, thefollowing acts committed without the permission of the trademark owner are considered to be a  violation of intellectual property rights for  trademarks:

• Use signs that coincide with the protected mark for goods and services that coincide with goods and services on the list of registrations attached tosuch labels.
• Use signs that coincide with the protected mark for goods or services similar to or related to goods or services on the list of registration attached to that mark, if the use is likely to cause confusion about the origin of goods orservices.
• Use a sign similar to a protected mark for goods or services that are identical, similar to or related to goods or services on the list of registrations attached to that mark, if the use is likely to cause confusion about the origin of goods orservices.
• Use signs that coincide or resemble well – known trademarks or signs in the form of translations, transfigurations from well – known trademarks for any goods or services, including goods and services that do not coincide, are not similar and do not relate to goods or services in the list of goods,  well – known branded service, if the use is likely to cause confusion about the origin of the goods or give a false impression of the relationship between the user of that sign and the famous trademark owner.

According to clause 2, Article 129 of theLaw on Intellectual Property, the act ofusing trade indications that are identical or similar to the trade names of others that have been used in advance for the same type of products, services or for similar products or services, causing confusion about business entities, business establishments or business activities under that trade name is considered a violation of intellectual property rights for the trade name.

According to Clause 3, Article 129 of the Law on Intellectual Property, thefollowing acts are considered to be a violation of intellectual property rights for  geographical indications protected:

• Using a protected geographical indication for a product that is derived from a geographical area with geographical indications, it does not meet the specific quality and nature standards of a product witha physiological indication.
• Use protected geographical indications for products similar to products with geographical indications for the purpose of taking advantage of the reputation and reputation ofgeographical indications.
• Using any indication that coincides or is similar to a protected geographical indication for a product that is not sourced from the geographic area that carries that geographic indication makes consumers misunderstand that the product originated fromthat geographic area.
• Using a protected geographical indication for wine, spirits for wine, spirits not originating from the geographical area corresponding to that geographical indication, including in the case of stating the true origin of the goods or geographical indications used in the form of translations,  transcript transcripts or used with words of type, style, form, adaptation, or similar words.

Unfair competitive behavior

According to Clause 1, Article 130 of the Law on Intellectual Property, thefollowing acts are considered to be unfair competition,violating intellectual propertyrights:

• Use misleading trade indications about business entities, business activities, commercial origins of goods andservices.
• Use trade indications that cause confusion about the origin, manner of production, features, quality, quantity or other characteristics of goods and services; about the conditions for providing goods andservices.
• Use of a protected trademark in a country that is a member of an international treaty that prohibits the representative or agent of the trademark owner from using such a trademark to which the Socialist Republic of Vietnam is also a member, if the user is the representative or agent of the trademark owner and such use is not approved by the owner of the labeland without good reason.
• Registering, seizing the right to use or use domain names that are identical or similar to the trademarks, protected trade names of others or geographical indications that they do not have the right to use for the purpose of appropriating domain names, taking advantage of or damaging their reputation,  reputation of the trademark, trade name, corresponding geographical indication.

Trade indications are signs and information to guide the trade of goods and services, including:Brand, trade name, business symbol, business slogan, geographical indication, packaging style of goods, trademarks. 

Acts of using trade instructions includeacts: Directingsuch trade on goods, packaging of goods, means of service, business transaction papers, means of advertising; selling, advertising for sale, stockpiling for sale, import of goods with such trade instructions attached.

Violation of rights to plant varieties

According to Article 188 of the Law on Intellectual Property, thefollowing acts are considered to be a violation of intellectual property rights for  plant varieties:

• Exploit and use the rights of the owner by protection without the owner's permission byprotection.
• Use the plant variety name for which the name is the same or similar to the protected plant variety name for the plant variety of the same species or species closely related to the protected plantvariety.
• Use of protected plant varieties without paying compensation as prescribed in Article 189 of the Intellectual PropertyLaw.

Advertising infringing  on intellectual property rights

Intellectual property rights in advertising activities are not guaranteed easily leading to disputes, interrupted advertising activities, the purpose of trade promotion is not achieved. Therefore,  before  carrying out advertising activities, enterprises and advertising subjects need to check and review to ensure that advertising products do not infringe the intellectual property rights of other organizations and individuals.

Infringement of  intellectual property rights Facebook

Currently, Facebook is a social networking site with a large number of usersin the world. In order  to protect intellectual property rights, Facebook has developed a mechanism to deal with violations    related to  copyright, related rights and trademarks.  

Accordingly, when there is a suspicion that its copyright, related rights or trademarks have been infringed, Facebook encourages users to first address it by contacting the infringing subject directly to request an end to the infringement and to pay damages.   If the infringing party does not terminate the infringement of intellectual property rights, the infringing party may use Facebook's copyright or trademark complaint mechanism to remove articles, images and videos containing infringing content.

In case the affected party has a copyright or a trademark with documents proving that the intellectual property rights belong to it, it may submit an appeal about the complained content to Facebook. Where the content of the protest is grounded,  Facebook will send a notice to the  complainant. If the complainant does not notify that they have filed a lawsuit in court to request protection of his or her intellectual property rights,  Facebook will restore or stop disabling the complained posts, photos, and videos.

Overall, facebook's policy of complaining about intellectual property rights violations has contributed to  protecting the legitimate rights and interests of  Facebook users.

Handling of intellectual property rights violations

Measures, how to handle

There are 04 measures and ways to handle intellectual property rights violations in Vietnam,including:

1. Subjects subject to intellectual property rights infringement shall take measures to protect their intellectual property rights including: Applying technological measures to prevent infringement of intellectual property rights; Request organizations and individuals committing acts of infringing on intellectual property rights to stop the infringement, apologize, publicly correct, compensate for damages.
2. Civil measures shall be applied to handle infringements at the request of intellectual property rights holders or organizations or individuals affected by the infringement, even if such acts have been or are being handled by administrative or criminal means. Procedures for requesting the application of civil measures, competence, order and procedures for application of civil measures in accordance with the provisions of the law on civil procedures.
3. Administrative measures shall be applied to handle violations in one of the cases specified in Article 211 of the Law on Intellectual Property, at the request of intellectual property rights holders, organizations and individuals affected by the infringement,  organizations and individuals detecting violations or actively detected by competent agencies. Forms, fines, competences, procedures for sanctioning infringements and remedial measures in accordance with the Law on Intellectual Property and the law on sanctioning administrative violations in the field of copyright and related rights, industrial property rights,  Rights to plant varieties.
4. Criminal measures shall be applied to handle infringements in cases where such acts have sufficient  elements constituting a crime in accordance with the Provisions of the Penal Code. Competence, order and procedures for applying criminal measures in accordance with the provisions of the law on criminal proceedings.

Obligations  of litigants in case of handling of violations by civil means

In addition to the obligation to prove under Article 91  of the Civil Procedure Code  2015,plaintiffs and defendants in cases of intellectual property rights violations are also obliged to prove as follows:

a) The plaintiff proves himself to be the subject of intellectual property rights by one of the following evidences:

• Copies of copyright registration certificates, certificates of registration of related rights, protection certificates; an extract of the National Register on Copyright and Related Rights, the National Register on Industrial Property, the National Register on Protected PlantVarieties.
• Evidence necessary to prove the basis for arising copyrights and related rights in the absence of copyright registration certificates or related rights registration certificates; evidence necessary to prove the right to business secrets, trade names,trademarks.
• A copy of the contract for use of intellectual property objects in case the right of use is transferred under the contract.

b) The plaintiff must provide evidence of infringement of intellectual property rights or unfair competition.

c) In a patent infringement lawsuit that is a product manufacturing process, the defendant must prove that his/her product is manufactured in a process other than the process protected in the following cases:

• Products produced under the protected process are new products;
• Products produced under the protected process are not new products, but the patent owner assumes that the product produced by the defendant is under the protected process and despite the use of appropriate measures, it is still impossible to determine the process used by the defendant.

d) In case one party in the case ofintellectual property rightsviolation  proves that the appropriate evidence to prove that its claim is controlled by the other party and therefore inaccessible, it is entitled to rest assured that the court shall compel the control party to give such evidence.

dd) In case of a claim for damages, the plaintiff must prove the actual damage that has occurred and state the basis for determining the level of damage compensation.

Damage determination

Damages caused bywelding h intellectual property rights violations    include:

• Materialdamage: Bpond includes loss of property, decrease in income, profit, loss of business opportunity, reasonable cost to prevent and repairdamages.
• Mentaldamage: Bpond includes the loss of honor, dignity, prestige, reputation and other spiritual losses caused to the author of literary, artistic, scientific works; performers; authors of inventions, industrial designs, layout designs, plant varieties. The maximum compensation for mental damage  is not more than VND 50 million, depending on the extent of the damage.
• In addition, the intellectual property rights holder hasthe right to request the court to force theorganization, c, the individual who commits the violation of intellectual property rights to pay reasonable costs to hire a lawyer.

The above  content is the sharing of NPLaw on the contents related to intellectual property rights violations  in Vietnam.For advice and best support of procedures related to registration andprotection of intellectual property rights, please contact  NPLaw.

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