Elements of infringement on rights to marks

Elements of infringement on rights to marks

1. Legal Basis

• Consolidated document No. 11/VBHN-VPQH dated July 8, 2022 consolidating the Law on Intellectual Propert.
• Decree No. 65/2023/ND-CP of the Government dated August 23, 2023 detailing a number of articles and measures to implement the Law on Intellectual Property on industrial property and protection of industrial property rights , rights to plant varieties and state management of intellectual property.
• Decree No. 99/2013/ND-CP of the Government dated August 29, 2013 regulating penalties for administrative violations in the field of industrial property (amended and supplemented by Decree No. 126/2021/ND -CP December 30, 2021).

2. Elements of infringement on rights to marks

Elements of infringement on rights to marks refer to signs attached to goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses that are identical or similar to the point of confusion over the protected marks.

The ground to assess elements of infringement on rights to marks is the scope of protection of marks, including mark samples and lists of goods and services determined in the certificates of mark registration, confirmation certificates of internationally registered marks protected in Vietnam, or excerpts from the National Industrial Property Register or determined via the assessment of evidence proving the famous marks according to Article 75 of the Law on Intellectual Property.

In order to determine if a suspicious sign is an element of infringement on rights to a mark, it is necessary to compare such a sign to the related mark while comparing the goods and services bearing that sign to the goods and services under the protection scope. An element of infringement may only be confirmed when the following requirements are met:

• The suspicious sign is identical or similar to the point of confusion over the mark under the scope of protection. Specifically, a sign is considered identical to a protected mark if it has the same structure and presentation or similar to the point of confusion over a mark under the protection scope if there are several components completely identical to or similar to the point that they cannot be easily distinguished from each other in terms of structure, pronunciation, transcription, meanings, presentation, or colors regarding a visible sign and melody or tone regarding a sound sign and the use of the sign can potentially cause confusion over the goods and services bearing the mark for consumers;
• Goods and services that bear the suspicious sign are identical or similar to the goods and services under the protection scope if they are identical or similar in terms of nature or functions and uses and have the same consumption channel or have connections with each other in terms of nature, functions, or implementation methods.

Regarding famous marks, suspicious signs are considered elements of infringement if:

• The suspicious signs meet the requirements prescribed in Point a Clause 3 of Decree No. 65/2023/NĐ-CP.
• Goods and services showing signs of being suspected of meeting the conditions specified in Point b, Clause 3, Article 77 of Decree 65/2023/ND-CP or goods and services that are not identical, not similar, or not related to goods or services bearing well-known trademarks but are likely to confuse consumers about the origin of goods or services or give a false impression about the relationship between producers and traders of products, that service with famous trademark owners.

3. Acts of infringement of rights to marks

The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

• Sử dụng dấu hiệu trùng với nhãn hiệu được bảo hộ cho hàng hoá, dịch vụ trùng với hàng hoá, dịch vụ thuộc danh mục đăng ký kèm theo nhãn hiệu đó;
• Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
• Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
• Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.

4. Penalties for infringement of rights to marks

Clauses 15, 16, 17, Article 11 of Decree No.99/2013/ND-CP amended by Point d, Clause 10, Article 1 of Decree No.126/2021/ND-CP, regulations on handling acts of infringement of rights to marks are as follows:

Infringement of rights to marks, geographical indications, trade names or industrial designs

15. A fine of between VND 10,000,000 and 20,000,000 shall be imposed for acts of using signs infringing upon rights to marks, geographical indications, trade names on signboards, business transaction papers, means of business or service, goods packages.
16. Additional sanctions:

Suspension of trading in infringing goods or services, for between 01 and 03 months, for violations specified in from Clauses 1 thru 15 of this Article.

17. Remedial measures:

• Forcible removal and destruction of infringing elements for violations specified in Clauses 1 thru 15 of this Article;
• Forcible destruction of material evidence and means used in the commission of violations which infringing elements cannot be removed; goods that cause harms to the health of humans, plants and environment; infringing stamps, labels, packages and articles, for violations specified in Clauses 1 thru 15 of this Article;
• Forcible bringing out of the Vietnamese territory of transit goods infringing industrial property rights for violations specified in Clauses 1 thru 12 of this Article;
• Forcible change of enterprise name or removal of infringing elements in enterprise name, for violations specified in Clause 15 of this Article;
• Forcible remittance of illicit earnings from the commission of administrative violations specified in Clauses 1 thru 13 of this Article.

Thus, the act of using signs to infringe trademark rights will be fined from 10,000,000 VND to 20,000,000 VND. The above fine level applies to individuals. In case of violation by an organization, the fine level is 2 times higher than that for individuals.