If there is an infringement of trademark rights, what should be done?

Infringement of trademark rights can cause serious damage to the reputation and business interests of the enterprise. Legal and administrative solutions will be analyzed in detail in this article to assist you in effectively dealing with cases of intellectual property rights violations.

What are trademark rights?

A trademark is one of the valuable assets that determines the success or failure of a business in fierce competition with its competitors. Currently, the Vietnamese legal system does not have specific regulations on trademark rights.

In the most basic sense, trademark rights are the ownership rights of individuals and organizations to the trademark and the right to apply legal measures to prevent and handle unfair competition practices in registration activities as well as during the use of the trademark.

What is infringement of trademark rights?

Article 129 of the Law on Intellectual Property 2005 regulates acts of infringement of trademark rights. Accordingly, individuals and organizations that perform the acts stated in Article 129 of the Law on Intellectual Property without the permission of the trademark owner are considered to have committed an infringement of trademark rights. Such infringements include:

• Using a sign identical to a protected trademark for goods or services identical to those on the list registered with that trademark;
• Using a sign identical to a protected trademark for goods or services similar to or related to goods or services on the list registered with that 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 mark for goods or services that are identical, similar or related to goods or services on the list registered with that mark, if the use is likely to cause confusion as to the origin of the goods or services;
• Using a sign identical or similar to a famous trademark or a sign in the form of translation or transcription of a famous trademark for any goods or services, including goods and services that are not identical, not similar and not related to goods or services in the list of goods and services bearing a famous trademark, if the use is likely to cause confusion about the origin of the goods or give a false impression about the relationship between the user of that sign and the owner of the famous trademark.

Steps to take in case of trademark infringement

Step 1: Collect information, prepare documents.

Making a record is not mandatory, but to ensure that the infringing party does not remove evidence of the infringement, it is recommended to make a record of infringement, especially for websites containing trademarks and infringing information at the bailiff’s office.

Step 2: Assess trademark violations.

Step 3: Send a warning letter.

Sending a warning letter can save time and costs if the violating party has a cooperative and goodwill attitude to handle the case.

Send a warning letter to the party suspected of committing the violation and ask them to:

• Immediately stop committing acts of infringement of industrial property rights;
• Eliminate intrusive elements;
• Destroy documents, signs, transaction papers, products… containing elements that infringe the rights of the trademark being processed;…

In addition, if infringement occurs on Facebook or YouTube, you can report the violation to these parties.

Step 4: Request competent state agencies to handle violations of the law:

Depending on the nature and severity of the violation, competent state agencies may be required to accept and handle violations of the law in the field of industrial property.

Step 5: Initiate a lawsuit in a competent court or file a denunciation if you find all the elements constituting the crime of infringing on Industrial Property rights according to the Penal Code.

File a lawsuit against the party suspected of committing a violation to a competent court and request them to do one or some or all of the following:

• Apologize and correct public information on websites that the suspected party is managing;
• Compensate for actual damages that your Company has suffered (including costs spent to resolve the matter).

Measures to address the infringement of trademark rights

Civil remedies

Applying civil measures to resolve disputes over trademark rights in Vietnam is understood as the court resolving disputes about the legal rights and interests of subjects in legal relations related to trademark rights.

According to the provisions of Article 202 of the Law on Intellectual Property, the court has the authority to apply civil measures to address individuals or organizations involved in the infringement of trademark rights. Civil remedies recognized by law include:

• Force the termination of infringement of trademark rights;
• Forced public apology and correction;
• Forced to perform civil obligations;
• Forced compensation for damages;
• Forced destruction or forced distribution or use for non-commercial purposes of goods, raw materials, materials and means used mainly to produce and trade goods infringing intellectual property rights, provided that it does not affect the ability of intellectual property rights holders to exploit their rights and apply temporary emergency measures such as seizure, distraint, and sealing according to the provisions of Article 207 of the Law on Intellectual Property.

Administrative measures

Infringement of trademark rights, whether intentional or unintentional, but not to the extent of requiring criminal prosecution, will be handled by applying administrative measures. The nature of administrative handling measures is to use the power of administrative agencies and administrative decisions to handle acts of infringement of rights, which represents the meaning of punishment and deterrence.

According to the provisions of Article 214 of the Law on Intellectual Property 2005 (amended 2009, 2022), administrative sanctions for infringement of trademark rights are applied in accordance with the law on handling administrative violations. Accordingly, sanctions for administrative violations include:

• Warning
• Fine
• Confiscation of exhibits and means of administrative violations
• Suspension of operations for a limited period of time
• Forcible removal from the territory of the Socialist Republic of Vietnam or re-export of goods, articles, or means
• Forced distribution or use for non-commercial purposes of intellectual property counterfeit goods, raw materials, materials and means used mainly to produce and trade intellectual property counterfeit goods, provided that it does not affect the ability of intellectual property rights holders to exploit their rights and meets other conditions as prescribed by the Government.

Criminal measures

Criminal measures in enforcing trademark rights are applied to acts of infringement of trademark rights that constitute a crime according to the provisions of criminal law. Accordingly, based on Article 226 of the Criminal Code 2015, violators may be fined from 100,000,000 VND to 1,000,000,000 VND depending on each case. In addition, the subject may be sentenced to non-custodial reform or imprisonment.

Measures to control exported and imported goods related to trademarks

Measures to control exported and imported goods related to trademarks are measures implemented by customs authorities as prescribed in Article 216 of the Law on Intellectual Property to prevent acts of infringing intellectual property rights related to imported and exported goods. Those measures include:

• Temporarily suspend customs procedures for goods suspected of infringing intellectual property rights;
• Inspect and monitor to detect goods showing signs of infringing intellectual property rights.

Consulting and support services when trademark rights are infringed at Long Phan

At Long Phan, we provide comprehensive support services in protecting trademark ownership. Our services include:

• Consulting in detail on regulations on trademark rights protection;
• Support accurate identification of infringement of trademark rights acts;
• Consulting and supporting the preparation of complete legal documents and records;
• Assist in drafting complaints and related documents;
• Support for submitting documents and carrying out procedures at competent agencies;
• Consulting on handling issues that arise during the process of protecting trademark rights.

Protecting intellectual property rights accurately and complying with legal regulations is extremely important, helping businesses ensure transparency and avoid risks. We are committed to providing professional solutions, helping the process of protecting trademark rights go smoothly and effectively. Please contact the hotline 0906735386 for detailed advice and best support from the Long Phan team of experts.