The current situation in Vietnam regarding trademark infringement is alarming. Enterprises are encouraged to equip themselves with appropriate knowledge to protect their prestige and interests.
Trademark infringement is the use of signs on goods and/or services that are identical or confusingly similar to those of registered marks. Specifically:
Clause 1 Article 129 of the 2005 Law on Intellectual Property, amended in 2009
To evaluate trademark infringement factors, it is required to compare:
Determining which trademarks and groups of goods and services are protected is conducted based on the Certificate of trademark registration.
In regards of well-known trademarks, a protected trademark is identified based on the duration of continuous use, number of countries protecting it, and its reputation in Vietnam, etc.
Signs are considered identical or confusingly similar to a protected mark of the goods or services of the same class if they have identical or confusingly similar features in terms of overall composition, visual impression, way of pronunciation and/or phonetic transcription.
For example: The marks ‘TEAM’ and ‘TIM’ if registered together for the same class of goods and services within the scope of protection in Vietnam might cause confusion due to their somewhat similar pronunciation (for Vietnamese people).
Not all acts of using trademarks without the consent of its owner are acts of infringement. Such cases are:
Article 5 and 11 of Decree 105/2006/ND-CP
Depending on the nature and severity of the breach, trademark holders may take appropriate protective measures.
Trademark owners are entitled to apply technical and/or technological measures to prevent acts of trademark infringement.
For example: Apple provides a website that allows iPhone users to check the Service and Support Coverage of their devices using serial numbers, which can be used to verify whether an iPhone is genuine or not.
Trademark owners should sufficiently collect evidence, documents, and intellectual property assessments before sending a written request to opponents asking them to terminate their infringing acts or before taking any administrative measures.
An intellectual property assessment done by the Vietnam Intellectual Property Research Institute (VIPRI) covers the following contents: legal status, protectability, similarity, infringing elements, and value of damage. The VIPRI does not reach the conclusion of trademark infringement.
Instead, the results of intellectual property assessments are used by state agencies as the legal basis for decisions made on trademark infringement.
Trademark owners can also independently send written requests to those that commit acts of infringement to terminate their acts.
Trademark holders have the right to request competent state agencies (Inspectorate of the Ministry of Science and Technology, Economic Police, or Market management offices, etc.) to apply administrative remedies provided by the law, such as: monetary fines, forced removal of infringing elements, confiscation of infringing goods, means and production tools, etc.
Trademark holders are entitled to request the Court to apply the following civil remedies in handling parties that have committed acts of trademark infringement:
Trademark holders have the right to file a request to procedural agencies to handle acts of trademark infringement on a large scale and/or involving elements which constitute a crime.
In addition, trademark owners may request the suspension of import formalities at the customs office to execute the collection of information and evidence for the purpose of sanctioning the infringement.
Article 198, 199, 200, and 202 of the 2005 Law on Intellectual Property, amended in 2009
PLF is the Organization of Industrial Property Representation in Vietnam – an entity authorized by the National Office of Intellectual Property to act on behalf of individuals and enterprises to establish and enforce intellectual property rights.
Enterprises seeking for PLF’s assistance in handling or advising on trademark infringement, please contact:
PLF LAW FIRM
12th Floor, Ruby Tower,
81-85 Ham Nghi, District 1, Ho Chi Minh City, Vietnam
Tel: +8428 3821 2161 or +8428 3821 2162
Fax: +8428 3821 2165
8h00 - 17h30 (UTC+7)
Mondays - Fridays