Chương XVII Luật Sở hữu trí tuệ 2005: Xử lý xâm phạm quyền sở hữu trí tuệ bằng biện pháp dân sự

Chapter XVII

APPLICATION OF CIVIL REMEDIES IN DEALING WITH INFRINGEMENTS OF INTELLECTUAL PROPERTY RIGHTS

Article 202. Civil remedies

Courts may apply the following civil remedies in dealing with organizations and individuals who have committed acts of infringement of intellectual property rights:

1. Compulsory termination of the infringing acts.

2. Compulsory public apology and rectification.

3. Compulsory performance of civil obligations.

4. Compulsory payment of damages for loss.

5. Compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of goods which infringed intellectual property rights, provided that such destruction, distribution or use will not affect the exploitation of rights by intellectual property right holders.

Article 203. Burden of proof of litigants

1. The plaintiff and the defendant to a lawsuit regarding infringement of intellectual property rights shall bear the burden of proof stipulated in article 79 of the Civil Procedure Code and this article.

2. The plaintiff must prove that the plaintiff is the intellectual property right holder by leading one of the following forms of evidence:

 (a) Copies of the copyright registration certificate, related right registration certificate or protection title; or an extract of the National Register of Copyright and Related Rights, the National Register of Industrial Property or the National Register of Protected Plant Varieties;

 (b) Necessary evidence proving the basis for establishment of copyright or related rights in the absence of a copyright registration certificate, related right registration certificate; necessary evidence proving the right to a trade secret, trade name or well known mark;

 (c) Copy of the license contract for an intellectual property object where the use right is licensed pursuant to a contract.

3. The plaintiff shall bear the burden of proving acts of infringement of intellectual property rights or acts of unfair competition.

4. In a lawsuit regarding infringement of the right to an invention which is a production process, the defendant shall bear the burden of proving that the product of the defendant was produced by a process other than the protected process in the following cases:

 (a) The product made by the protected process is new;

 (b) The product made by the protected process is not new, but the invention owner believes that the product of the defendant is made by the protected process and fails to identify the process used by the defendant in spite of having applied appropriate measures.

5. Where a party to a lawsuit regarding infringement of intellectual property rights can prove that appropriate evidence proving such party's claim is under the control of the other party and is therefore inaccessible, the former party shall have the right to request the court to compel the latter party to produce such evidence.

6. When making a claim for compensation for damages for loss, the plaintiff must prove the plaintiff's actual loss and damage and specify the basis for determining the amount of compensation for damages in accordance with article 205 of this Law.

Article 204. Principles for determining loss and damage caused by an infringement of intellectual property rights

1. Loss and damage caused by acts of infringement of industrial property rights shall comprise:

(a) Material loss and damage including property loss, decrease in income and profit, loss of business opportunity, and reasonable expenses for mitigating and remedying the material damage;

 (b) Spiritual loss and damage including damage to honour, dignity, prestige, reputation and other spiritual loss caused to authors of literary, artistic and scientific works; to performers; to authors of inventions, industrial designs, layout designs; and to breeders of plant varieties.

2. The extent of damage shall be determined on the basis of actual losses suffered by intellectual property right holders due to acts of infringement of intellectual property rights.

Article 205. Bases for determining amount of damages for loss and damage caused by an infringement of intellectual property rights

1. Where the plaintiff proves that an act of infringement of intellectual property rights has caused the plaintiff material damage, the plaintiff shall have the right to request the court to decide the amount of damages on one of the following bases:

 (a) Total material damage calculated in an amount of money plus profit derived by the defendant as a result of the act of infringement of intellectual property rights, where the reduced profit amount of the plaintiff has not yet been included in such total material damage;

 (b) The price of the licensing of an intellectual property object on the assumption that the defendant was licensed by the plaintiff to use that object under a license contract within a scope corresponding to the act of infringement which was committed;

 (c) Where it is impossible to determine the amount of damages for material damage on the bases stipulated in sub-clause (a) and (b) of this clause, such amount of damages shall be set by the court depending on the extent of loss but must not exceed five hundred million (500,000,000) dong.

2. Where a plaintiff proves that the act of infringement of intellectual property rights caused the plaintiff spiritual damage, the plaintiff shall have the right to request the court to decide on the amount of damages depending on the extent of loss, to range from five million (5,000,000) to fifty million (50,000,000) dong.

3. In addition to the amount of damages stipulated in clauses 1 and 2 of this article, an industrial property right holder shall also have the right to request the court to compel the organization or individual who have committed the act of infringement of industrial property rights to pay reasonable costs of engaging a lawyer.

Article 206. Right to request the court to apply provisional urgent measures

1. Upon or after the initiation of a lawsuit, an intellectual property right holder shall have the right to request the court to apply provisional measures in the following cases:

 (a) There is a danger of irreparable damage to such intellectual property right holder;

 (b) Goods suspected of infringement of intellectual property rights or evidence related to the act of infringement of industrial property rights are likely to be dispersed or destroyed unless they are protected in time.

2. A court may make a decision applying provisional urgent measures at the request of an industrial property right holder as stipulated in clause 1 of this article before hearing the party subject to such measures.

Article 207. Provisional urgent measures

1. The following provisional urgent measures may be applied to goods suspected of infringing intellectual property rights or to raw materials and materials, or facilities of production or trading of such goods:

 (a) Retention;

 (b) Seizure;

 (c) Sealing; prohibiting any alteration of the original state; prohibiting any movement;

 (d) Prohibiting transfer of ownership.

2. Other provisional urgent measures may be applied in accordance with the Civil Procedure Code.

Article 208. Obligations of applicants for provisional urgent measures

1. Applicants for provisional urgent measures shall bear the burden of proving their right provided for in clause 1 of article 206 of this Law by producing the documents and evidence stipulated in clause 2 of article 203 of this Law.

2. An applicant for provisional urgent measures shall be obliged to pay compensation for loss caused to a person subject to such measures in a case where the latter is found not to have infringed industrial property rights. To secure the performance of this obligation, an applicant for provisional urgent measures shall deposit security in one of the following forms:

 (a) A sum of money equal to twenty (20) per cent of the value of the goods subject to the application of provisional urgent measures, or at least twenty million (20,000,000) dong where it is impossible to value such goods;

 (b) A deed of guarantee issued by a bank or other credit institution.

Article 209. Cancellation of application of provisional urgent measures

1. The court shall issue a decision cancelling provisional urgent measures previously applied in the case stipulated in clause 1 of article 122 of the Civil Procedure Code or in a case where the person subject to such measures proves that such application was not well founded.

2. In a case of cancellation of a provisional urgent measure, the court shall consider refunding the applicant the security stipulated in clause 2 of article 208 of this Law. Where a request for the application of a provisional urgent measure was not well founded thus causing loss to the person subject to such measure, the court shall compel the applicant to pay compensation for such loss.

Article 210. Authority and procedures for application of provisional urgent measures

The authority and procedures for application of provisional urgent measures shall be implemented in accordance with the provisions of Chapter VIII, Part One of the Civil Procedure Code.