Question
I am the owner of a business and have registered a trademark for my products. Recently, I discovered that another party has been using a sign similar to my trademark on its products and packaging. Would this constitute an infringement of my trademark rights?
Answer:
1/ Concept of trademark:
Pursuant to clause 16 Article 4 of the effective Law on Intellectual Property, a trademark means any sign used to distinguish goods or services of different organizations or individuals.
2/ Acts of trademark infringement:
The following acts, if committed without the permission of the trademark owner, shall be deemed an infringement upon the rights to a trademark:
– Using a sign identical with a protected trademark for goods or services identical with the goods or services on the list registered together with such trademark;
– Using a sign identical with a protected trademark for goods or services similar or related to the goods or services on the list registered together with such trademark, if the use is likely to cause confusion as to the origin of the goods or services;
– Using a sign similar to a protected trademark for goods or services identical with, similar, or related to the goods or services on the list registered together with such trademark, if the use is likely to cause confusion as to the origin of the goods or services;
– Using a sign identical with or similar to a well-known trademark, or a sign in the form of a translation or transcription from a well-known trademark, for any goods or services, including goods or services non-identical with, non-similar, and unrelated to the goods or services on the list of goods or services bearing the well-known trademark, if the use is likely to cause confusion as to the origin of the goods or services or cause a false impression of the relationship between the user of such sign and the well-known trademark owner.
3/ Counterfeit trademark goods:
Pursuant to clause 2 Article 213 of the Law on Intellectual Property, counterfeit trademark goods are goods or packaging of goods bearing a trademark or sign or label containing signs identical with or similar to the extent of being indistinguishable from a protected trademark used for the very same category of goods, without the permission of the trademark owner.
4/ Handling of violations regarding trademark infringement:
a/ Administrative penalties:
Pursuant to clause 1 Article 211 of the effective Law on Intellectual Property, an organization or individual committing any of the following acts of infringement upon intellectual property rights shall be subject to administrative penalties:
– Infringing upon intellectual property rights causing damage to authors, owners, consumers, or society;
– Producing, importing, transporting, or trading in counterfeit intellectual property goods specified in Article 213 of this Law, or assigning other persons to commit these acts;
– Producing, importing, transporting, trading in, or storing labels, tags, or other items bearing counterfeit trademarks or geographical indications, or assigning other persons to commit these acts.
b/ Criminal prosecution:
In addition, pursuant to the provisions of Article 226 of the Criminal Code, any act of intentionally infringing upon industrial property rights to trademarks or geographical indications currently protected in Vietnam, where the subject matter is counterfeit trademark or geographical indication goods on a commercial scale or generating an illegal profit from 100,000,000 VND to under 300,000,000 VND, or causing damage to the trademark or geographical indication owner from 200,000,000 VND to under 500,000,000 VND, or where the infringing goods are valued from 200,000,000 VND to under 500,000,000 VND, may also be handled pursuant to criminal law provisions.
5/ What enterprises should do to protect their trademarks:
Intellectual property law recognizes the right of self-protection of right holders under Article 198 as follows:
– Applying technological measures to protect rights, attaching rights management information, or applying other technological measures to prevent acts of infringement upon intellectual property rights;
– Requesting organizations or individuals committing acts of infringement upon intellectual property rights to terminate the infringing acts, remove and delete infringing content on telecommunications networks and the Internet, make a public apology and rectification, and pay damages;
– Requesting competent State authorities to handle acts of infringement upon intellectual property rights pursuant to the provisions of this Law and other relevant legal provisions;
– Initiating a lawsuit at a court or arbitration to protect their legitimate rights and interests.
Organizations and individuals suffering damage caused by acts of infringement upon intellectual property rights, or discovering acts of infringement upon intellectual property rights causing damage to consumers or society, may request competent State authorities to handle the acts of infringement upon intellectual property rights pursuant to the provisions of this Law and other relevant legal provisions.
If your enterprise needs consulting support on trademark intellectual property protection, please contact SB Law for detailed advice from our experts.
