Infringement of industrial property rights: Possible fines and business prohibition.

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Dear Sir, how is it called infringement of industrial property rights when doing business?

- According to Clause 2, Article 3 of the Law on Intellectual Property (2005, revised in 2009) - Hereinafter referred to as the Law on Intellectual Property), the subject of industrial property rights includes inventions, industrial designs, semiconductor IC designs, business secrets, trademarks, trade names and geographical indications. Therefore, based on Article 126, the Intellectual Property Law, the following acts are considered acts of infringing upon rights to inventions, industrial designs and layout designs.

- Using a protected invention, protected industrial design or an industrial design that is not significantly different from that design, the protected layout design or any original part of the layout design during the validity period of the protection title without the permission of the owner; using the inventions, industrial designs, layout designs without paying compensation according to provisions on temporary rights.

- Accessing and collecting information belonging to a business secret by resisting such business security measures. The person who lawfully controls a business secret includes the owner of the business secret, the person legally assigned the right to use the business secret, and the manager of the business secret.

- Disclosing or using the information belonging to a business secret without the permission of the business secret's owner.

- Violating confidentiality contracts or defrauding, inducing, bribing, coercing, seducing, taking advantage of the trust of persons with confidentiality obligations in order to access, collect or disclose business secrets, etc.

Based on Clause 1, Article 129 of the Intellectual Property Law, the following acts are considered acts of infringing upon trademark rights:

- Using an identical sign to a protected mark for goods or services similar to or related to goods or services on the list of registered trademarks attached to that mark.

- 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.

- Using 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 goods or services registered with that mark, if the use is likely to be causing confusion about the origin of goods and services...

Pursuant to Clause 2, Article 129 of the Intellectual Property Law, the following acts are considered acts of infringing upon the rights to trade names:

- Any act of using an identical or similar trade indication to another person's trade name that has been used before for the same product or service or for a similar product or service that can cause confusion about the subject matter, business activities under that trade name.

Pursuant to Clause 3, Article 129 of the IP Law, the following acts are considered acts of infringing upon the rights to protected geographical indications:

- Using a protected geographical indication for a product although that is from the geographical area with the geographical indication but does not meet the standards of specific properties and quality of the product with geographical indications.

- Using a protected geographical indication for products similar to those bearing the geographical indication for the purpose of taking advantage of the reputation and prestige of the geographical indication...

* In case of infringing industrial property rights, how will the business be handled?

- Depending on the nature and severity of their acts, an act of infringing upon industrial property rights shall be administratively sanctioned or examined for penal liability.

- Regarding sanctioning of administrative violations, based on Article 211 of the IP Law, acts of infringing upon intellectual property rights shall be administratively sanctioned. For the acts listed in Article 211 of the IP Law, organizations and individuals that infringe intellectual property rights are forced to stop infringing and are subject to be applied a main sanction that is warning or monetary fine.

- Depending on the nature and seriousness of infringement, organizations and individuals that infringe intellectual property rights may also be subject to one or more additional sanctions and applied by one or more measures to overcome the consequences.

Regarding criminal prosecution, based on Article 226 of the Criminal Code (2015, revised in 2017), which stipulates the crime of infringing upon industrial property rights, the offenders can be fined from VND 50 million to VND 1,000,000 billion dong, a non-custodial probation for up to three years or a prison term of between six months and three years. In addition, depending on the case, offenders may also be fined from 20-200 million dong, be fired from the title, be prohibited from practicing certain professions or doing certain jobs  from 1 to 5 years. For legal entities, they can be fined from 100-500 million VND, banned from doing business, banned from operating in certain fields or banned from raising capital for 1-3 years.

* In your opinion, how can businesses protect their intellectual property rights and avoid trademark infringement?

- Trademark protection is something businesses must pay attention to. The successful registration of trademark protection will create a legal basis for enterprises to exercise their legal rights related to trademark ownership in the market. Furthermore, the protection registration is not only considered in Vietnamese market but also should be considered for abroad registration. This is based on a fact that many Vietnamese trademarks that have been registered in Vietnam as well as widely used and well- known in Vietnam, but for some reason that trademarks have not been registered yet in foreign market. As a result, the trademarks could be imitated in foreign markets.

According to the provisions of Clause 20, Article 4, intellectual property law provides for well-known marks as follows: "A well-known brand is a brand that is widely known by consumers through Vietnam's territory". In case that a brand that has registered the copyright is a well-known, long-standing in Vietnam, if there are any words, colors or logos that confuses the brand, it can be considered as an infringing acts to the brand. Therefore, in order to protect their rights, businesses need to ask that the competent authority intervenes to determine the nature and level of the infringement to handle in accordance with the law.