Chương 2 Nghị định 105/2006/NĐ-CP bảo vệ quyền sở hữu trí tuệ quản lý nhà nước hướng dẫn luật sở hữu trí tuệ: Xác định hành vi, tính chất và mức độ xâm phạm, xác định thiệt hại

Chapter II

DETERMINATION OF ACTS, NATURE AND EXTENT OF INFRINGEMENT,
DETERMINATION OF DAMAGE

Section I. Bases for determination of acts, nature and extent of infringement

Article 5.- Determination of acts of infringement

An examined act shall be regarded as an act of infringement of intellectual property rights specified in Articles 28, 35, 126, 127, 129 and 188 of the Law on Intellectual Property when all the following bases exist:

1. The examined subject matter is a protected one.

2. The examined subject matter contains an infringing element.

3. The person that takes the examined act is neither the intellectual property right holder nor any person permitted by law or a competent agency under Articles 25, 26, 32, 33, Clauses 2 and 3 of Article 125, Article 133, Article 134, Clause 2 of Article 137, Articles 145, 190 and 195 of the Law on Intellectual Property.

4. The examined act takes place in Vietnam.

An examined act that takes place in the Internet but is targeted at consumers or information users in Vietnam shall be regarded to take place in Vietnam.

Article 6.- Bases for determination of protected subject matters

1. The determination of a protected subject matter shall be based on the examination of documents and evidence proving the bases for emergence and establishment of the rights specified in Article 6 of the Law on Intellectual Property.

2. For intellectual property rights that have been registered with competent agencies, the protected subject matters shall be determined on the basis of the registration certificates, protection titles and other documents accompanying such certificates and protection titles.

3. For copyright and rights of performers, rights of producers of phonograms or video recordings, rights of broadcasting organizations that are not registered with competent agencies, these rights shall be determined on the basis of the original exemplar of the work, the first fixation of the performance, phonogram, video recording, broadcast and relevant documents, if any.

When the original exemplar of the work, the first fixation of the performance, phonogram, video recording, broadcast and relevant documents no longer exist, copyright or rights of performers, of producers of phonograms or video recordings or of broadcasting organizations shall be deemed to be true on the basis of information that is usually shown on lawfully published copies on authors, performers, producers of phonograms or video recordings or broadcasting organizations and on the subject matters of copyright or related rights.

4. For trade names, the protected subject matters shall be determined on the basis of their using process and the sector and territory in which such trade names are used.

5. For business secrets, the protected subject matters shall be determined on the basis of documents expressing the contents and nature of the business secrets and explanations and descriptions of relevant measures to keep them secret.

6. For well-known marks, the protected subject matters shall be determined on the basis of documents and evidence expressing the reputation of the marks according to the criteria defined in Article 75 of the Law on Intellectual Property.

Article 7.- Infringing elements of copyright and related rights

1. An infringing element of copyright may take one of the following forms:

a/ Illegally made copy of a work;

b/ Illegally made derivative work;

c/ Work with the forged name and signature of the author, impersonation of the author or appropriation of copyright;

d/ Illegally recited, duplicated or incorporated part of a work;

e/ Product with an illegally deactivated technical device used for copyright protection.

Products containing an infringing element defined in this Clause shall be regarded as copyright-infringing products.

2. An infringing element of related rights may take one of the following forms:

a/ Illegally made first fixation of a performance;

b/ Illegally made copy of the fixation of a performance, illegally made copy of a phonogram, video recording or broadcast;

c/ Illegally duplicated, extracted or incorporated part or whole of a fixed performance, a phonogram or video recording; illegally received, decoded and distributed part or whole of a broadcast;

d/ Product with an illegally deactivated technical device used for related rights protection; the fixation of a performance from which related rights management information has been illegally disengaged or modified.

Products containing an infringing element defined in this Clause shall be regarded as related rights-infringing products.

3. The basis for determination of an infringing element of copyright shall be the scope of copyright protection determined according to the forms of expression of the original work. For determination of infringing elements of derivative works, the basis shall be the characters, images; ways of expression of characters’ personalities, images and circumstances of the original work.

4. The basis for determining an infringing element of related rights shall be the scope of related rights protection already determined according to the forms of expression of the first fixation of the performance, phonogram, video recording or broadcast.

5. In order to determine whether a copy or a work (or the fixation of a performance, phonogram, video recording or broadcast) constitutes an infringing element of copyright or related rights, it is required to compare the copy or work with the original exemplar of the work (the first fixation of a performance, phonogram, video recording or broadcast) or the original work.

A copy of a work or the fixation of a performance, phonogram, video recording or broadcast shall be regarded as an infringing element in the following cases:

a/ The copy is a duplicate of part or the whole of a protected work, the first fixation of a protected performance, phonogram, video recording or broadcast of another person;

b/ The work (part of the work) is part or the whole of a protected work, the first fixation of a protected performance, phonogram, video recording or broadcast of another person;

c/ The work or part of the work contains a character, image, way of expression of the personality of a character or image or circumstances of a protected work of another person.

6. Products containing an infringing element defined at Points a and d, Clause 1, Points b and c, Clause 2 of this Article shall be regarded as pirated goods under the provisions of Article 213 of the Law on Intellectual Property.

Article 8.- Infringing elements of inventions

1. An infringing element of an invention may take one of the following forms:

a/ Product or part (component) of a product that is identical or similar to a product or part (component) of a product being protected as an invention;

b/ Process that is identical or similar to a process being protected as an invention;

c/ A product or part (component) of the product produced through a process that is identical or similar to a process being protected as an invention.

2. The basis for determination of an infringing element of an invention is the scope of invention protection stated in the invention or utility solution patent.

Article 9.- Infringing elements of layout designs of semiconductor integrated circuits

 1. An infringing element of a layout design of a semiconductor integrated circuit may take one of the following forms:

a/ Layout design created through illegally copying a protected layout design;

b/ Semiconductor integrated circuit illegally created according to a protected layout design;

c/ Product or part (component) of a product in which a semiconductor integrated circuit defined at Point b of this Clause is incorporated.

2. The basis for determination of an infringing element of a lay-out design of semiconductor integrated circuit is the scope of protection of rights to lay-out designs stated in the certificates of registration of the lay-out designs of semiconductor integrated circuits.

Article 10.- Infringing elements of industrial designs

1. An infringing element of an industrial design is a product or part of a product of which the external appearance is insignificantly different from that of a protected industrial design.

2. The basis for determination of an infringing element of an industrial design is the scope of protection of the industrial design stated in the industrial design patent.

3. A product or part of a product shall be regarded as an infringing element of an industrial design in the following cases:

a/ The examined product or part of the examined product, even with an industrial design patent, contains a combination of design features that create an overall combination being a copy or in substance a copy (with virtually indistinguishable difference) of a protected industrial design of another owner with the permission of such owner;

b/ The examined product or part of the examined product contains a combination of design features that create an overall combination being a copy or in substance a copy of the protected industrial design or at least one product within a set of products of another person.

4. The industrial design of a product (part of a product) shall only be regarded as insignificantly different from a protected one defined in Clause 1 of this Article when it is a copy or in substance a copy of the protected one.

Article 11.- Infringing elements of marks

1. An infringing element of a mark is a sign affixed on goods, their packages, means of services, transaction documents, signboards, means of advertising or other means of business that is identical or confusingly similar to the protected mark.

2. The basis for determination of an infringing element of a mark is the scope of protection of the mark including the mark specimen and a list of goods and services in the mark registration certificate or the certificate of protection in Vietnam of internationally registered mark.

3. In order to determine whether a suspected sign is an infringing element of a mark, it is required to compare such sign to the mark and at the same time to compare goods or services bearing such sign to the protected products or services. An infringing element can only be confirmed if the following two conditions are fully met:

a/ The suspected sign is identical or confusingly similar to the mark within the scope of protection; where a sign is regarded as identical to a protected mark if it has the same composition and method of presentation (including the colors); a sign is regarded as confusingly similar to a protected mark if it has several features identical or similar to those of the protected mark to such an extent that it is not easy to distinguish between them in terms of composition, the way of pronunciation, the way of phonetic transcription of signs, letters, meaning, the method of presentation and colors, thereby causing confusion to consumers in selecting goods or services bearing the mark;

b/ Goods or services bearing the suspected sign that is identical or similar in substance to, have a relationship in terms of functions and utility with, and have the same distribution channel with, the protected goods or services.

4. For well-known marks, a suspected sign shall be regarded as an infringing element if:

a/ The suspected sign meets the condition specified at Point a, Clause 3 of this Article;

b/ Goods or services bearing the suspected sign meet the condition specified at Point b, Clause 3 of this Article or goods or services are not identical, similar or related to the goods or services bearing the well-known mark but are capable of misleading customers as to the origin of services or goods or create wrong impressions about the relationship between the producer or trader of such goods or services and the owner of the well-known mark.

5. When a product or service bears a sign that is identical to or is insignificantly different in terms of overall composition and method of presentation from the protected mark of a product or service of the same type within the scope of protection, it shall be regarded as a counterfeit mark goods as provided for in Article 213 of the Law on Intellectual Property.

Article 12.- Infringing elements of geographical indications

1. An infringing element of a geographical indication is expressed in the form of a sign affixed on goods, their packages, means of services, transaction documents, signboards, means of advertising and other means of business, which is identical or confusingly similar to the protected geographical indication.

2. The basis for determination of an infringing element of a geographical indication is the scope of protection of the geographical indication stated in the decision on registration of the geographical indication.

3. In order to determine whether a suspected sign is an infringing element of a geographical indication, it is required to compare such sign to the geographical indication and to compare products bearing such sign to products bearing the protected geographical indication on the bases:

a/ The suspected sign is identical or confusingly similar to the geographical indication under the scope of protection; where a sign is regarded as identical to a protected geographical indication if it has the same composition of words, including the way of pronunciation, the way of phonetic transcription of letters, meaning, image and symbol within the scope of protection of the geographical indication; a sign is regarded as confusingly similar to a protected geographical indication if it is confusingly similar to the protected geographical indication in terms of word composition, the way of pronunciation, the way of phonetic transcription of letters, meaning, image and symbol within the scope of protection of the geographical indication;

b/ Products bearing the suspected sign are identical or similar to those bearing the protected geographical indication, where a product is regarded as identical or similar if it is identical or similar in terms of substance, functions, utility and distribution channel to another product;

c/ For wine and spirits, apart from the provisions of Point a and Point b of this Clause, a sign that is identical to a protected geographical indication, including its expression in the form of translation or phonetic transcription or accompanied by parts of speech, types, forms, adaptations or similar words that are used for products not originated from the geographical area bearing the protected geographical indication, shall also be regarded as an infringing element of the rights to the geographical indication.

4. When a product bears a sign that is identical to or is insignificantly different in terms of overall composition and the method of presentation from the protected geographical indication of a product of the same type within the scope of protection, it shall be regarded as a counterfeit geographical indication goods as provided for in Article 213 of the Law on Intellectual Property.

Article 13.- Infringing elements of trade names

1. An infringing element of a trade name is expressed in the form of a sign affixed on goods, their packages, means of services, transaction documents, signboards, means of advertising or other means of business that is identical or confusingly similar to the protected trade name.

2. The basis for determination of an infringing element of a trade name is the scope of protection of the trade name that is determined on the basis of evidence of the lawful use of the trade name, specifying the business owner, business establishment, business activities and products or services bearing the trade name.

3. In order to determine whether a suspected sign is an infringing element of a trade name, it is required to compare the sign to the protected trade name and to compare goods or services bearing this sign to the protected products or services on the following bases:

a/ The suspected sign is identical or confusingly similar to the protected trade name; where a sign is regarded as identical to a protected trade name if it has the same composition, including the way of pronunciation, the way of phonetic transcription of letters; a sign is regarded as similar to a protected trade name if it similar in terms of composition, the way of pronunciation, the way of phonetic transcription of letters, thereby misleading consumers as to the business owner, business establishment or business activities bearing the protected trade name;

b/ Goods or services bearing the suspected sign shall be regarded as identical or similar to those bearing the protected trade name if they are identical or similar in terms of substance, functions, utility and distribution channel.

Article 14.- Infringing elements of plant varieties

1. An infringing element of a plant variety may take one of the following forms:

a/ Use of a sapling or propagative material of a protected plant variety to commit acts specified in Clause 1, Article 186 of the Law on Intellectual Property without the permission of the protection title holder;

b/ Use of a sapling or propagative material or any plant variety specified in Clause 1 or Clause 2, Article 187 of the Law on Intellectual Property;

c/ The process of producing plant varieties specified in Clause 3, Article 187 of the Law on Intellectual Property;

d/ Use of the name of a plant variety of the same species or a species close to the species of a protected plant variety that is identical or confusingly similar to the name of the protected plant variety;

e/ The provisions of Point a and Point b of this Clause shall also apply to harvested materials if the protection title holder has no reasonable conditions for exercising his/her rights to the propagation material of the same plant variety.

2. Bases for determination of an infringing element of the rights to a plant variety:

a/ Written description of the plant variety, with the certification of a plant variety protection agency;

b/ Plant variety protection title.

Article 15.- Bases for determination of the nature and extent of infringement

1. The nature of infringement provided in Clause 1, Article 199 of the Law on Intellectual Property is determined on the following bases:

a/ Circumstances and motive of infringement: unintentional infringement, intentional infringement, infringement due to control or dependency, first-time infringement, recidivism;

b/ Manners of commission of acts of infringement: isolated infringement, infringement in an organized manner, self-commission of acts of infringement, bribery, deception or compelling of other persons to commit acts of infringement.

2. The extent of infringement provided in Clause 1, Article 199 of the Law on Intellectual Property is determined on the following bases:

a/ Scope of territory, time, volume and scale of commission of acts of infringements;

b/ Influence and consequences of acts of infringement.

Section 2. Determination of damage

Article 16.- Principles for determination of damage

1. Damage as a result of intellectual property right infringement provided in Article 204 of the Law on Intellectual Property is actual losses including both physical and spiritual losses directly caused to the intellectual property right holder by acts of intellectual property right infringement.

2. Actual losses shall be regarded as having been occurred when all of the following bases exist:

a/ The physical or spiritual benefit is real and belongs to the aggrieved person;

b/ The aggrieved person could achieve the benefit referred to at Point a of this Clause;

c/ There is a decrease in or loss of the benefit of the aggrieved person after the act of intellectual property right infringement is committed as compared to the possibility of achieving such benefit if such act of intellectual property right infringement would not happen and it constitutes the direct cause of such decrease in or loss of the benefit.

3. The level of damage is determined in accordance with the infringing elements of the intellectual property right subject matters.

The determination of the level of damage is based on the evidence of the damage furnished by the parties, including the assessment results and damage declarations that clearly state the bases for determination and calculation of the level of damage.

Article 17.- Loss in property

1. Losses in property are determined in accordance with the level of decrease in or loss of the in-cash value of the protected intellectual property right subject matters.

2. The in-cash value of an intellectual property right subject matter referred to in Clause 1 of this Article is determined in accordance with the following bases:

a/ The price of transfer of the ownership right or the price of assignment of the use right of the intellectual property right subject matter;

b/ The value of the business capital contributed in the form of intellectual property rights;

c/ The ratio of the value of intellectual property rights to the total assets of an enterprise;

d/ The value of investment in the creation and development of the intellectual property right subject matter, including marketing, research, advertising and labor costs, taxes and other expenses.

Article 18.- Decrease in income, profits

1. The income, profits referred to at Point a, Clause 1 of Article 204 of the Law on Intellectual Property include the following:

a/ The income, profits gained from directly using and exploiting the intellectual property right subject matter;

b/ The income, profits gained from leasing the intellectual property right subject matter;

c/ The income, profits gained from assigning the right to use the intellectual property right subject matter.

2. The level of decrease in income, profits is determined on the following bases:

a/ Direct comparison between the levels of actual income, profits before and after the acts of infringement are committed, applicable to each type of income specified in Clause 1 of this Article;

b/ Comparison between the yields or volumes of products, goods or services actually consumed or supplied before and after the acts of infringement are committed;

c/ Comparison between actual sales price of the products, goods or services on the market before and after the acts of infringement are committed.

Article 19.- Losses in business opportunities

1. Business opportunities specified at Point a, Clause 1 of Article 204 of the Law on Intellectual Property include the following:

a/ Actual possibility of directly using or exploiting the intellectual property right subject matter in the business course;

b/ Actual possibility of leasing the intellectual property right subject matter to other persons;

c/ Actual possibility of assigning the use right of or transferring the intellectual property right subject matter to other persons;

d/ Loss of other business opportunities directly caused by the acts of infringement.

2. A loss in business opportunities means loss of the in-cash value of the income that the aggrieved person would have achieved in any of the cases referred to in Clause 1 of this Article but fails to do so due to the acts of infringement.

Article 20.- Reasonable expenses for prevention and remedy of damage

Reasonable expenses for prevention and remedy of damage referred to at Point a, Clause 1, Article 204 of the Law on Intellectual Property include expenses for temporary custody, maintenance, storage of infringing goods, costs of implementation of provisional urgent measures, reasonable expenses for hire of the assessment service, prevention and remedy of consequences of acts of infringement, and cost of notification and correction in the mass media relating to acts of infringement.