Chương 3 Nghị định 105/2006/NĐ-CP bảo vệ quyền sở hữu trí tuệ quản lý nhà nước hướng dẫn luật sở hữu trí tuệ: Yêu cầu và giải quyết yêu cầu xử lý xâm phạm

Chapter III

REQUEST FOR HANDLING OF INFRINGEMENTS AND SETTLEMENT THEREOF

Article 21.- Exercise of the right to self-protection

1. Organizations and individuals shall exercise the right to self-protection under the provisions of Article 198 of the Law on Intellectual Property and the specific provisions of this Article.

2. Technological measures provided at Point a, Clause 1, Article 198 of the Law on Intellectual Property include:

a/ Displaying indicative information on the origin of emergence, protection title, owner, scope and period of protection and other information on intellectual property rights on products, means of services, the originals and copies of works, fixations of performances, phonograms, video recordings or broadcasts (collectively referred to as products in this Article) in order to inform that the products are protected intellectual property right subject matters and warn that they should not be infringed upon;

b/ Using technical means or measures to mark, identify, distinguish and protect the protected products.

3. Intellectual property right holders shall request termination of acts of infringement specified at Point b, Clause 1, Article 198 of the Law on Intellectual Property by sending written notices to the infringes. Such a written notice shall contain indicative information on the origin of emergence, protection title, owner, scope and term of protection and fix a reasonable period of time for the infringer to terminate the act of infringement.

4. Requests for competent state agencies to handle acts of infringement provided at Point c, Clause 1, Article 198 of the Law on Intellectual Property shall comply with the provisions of Articles 22, 23, 24, 25, 26 and 27 of this Decree.

Article 22.- Petition for handling of infringement

1. A petition for handling of infringement must contain the following major details:

a/ Date of the petition;

b/ Name and address of the requester for handling of infringement; full name of the representative of the requester if such request is made by the representative;

c/ Name of the agency that receives the petition;

d/ Name and address of the infringer; name and address of the suspected infringer in the case of request for temporary cessation of customs clearance for exports or imports suspected of infringement;

e/ Name(s) and address(es) of organizations and individuals with related rights and interests (if any);

f/ Name(s) and address(es) of the witness(es) (if any);

g/ Brief information about the infringed intellectual property rights: type of the right, bases for emergence of the right and its subject matter;

h/ Brief information about the act of infringement: date and place of occurrence of the infringement, brief description of the infringing product, acts of infringement and other information (if any).

For a petition for temporary cessation of customs clearance for imports or exports suspected of infringement, it is required to contain additional information on the mode of import or export, country of exportation, mode of packaging, the lawful importer or exporter, features of lawfully imported or exported goods for distinction from infringing goods; risks of occurrence of circumstances when certain measures need to be applied to prevent infringements and to secure the imposition of penalties, and other information (if any);

i/ Proposed measures to handle infringement;

j/ A list of documents and evidence accompanying the petition;

k/ Signature of the petitioner with a seal (if any).

2. A petition for handling of infringement must be accompanied with documents and evidence to prove the request.

Article 23.- Accompanying documents, evidence and exhibits

1. A requester for handling of infringement must submit the petition together with the following documents, evidence and exhibits to prove the request:

a/ Evidence proving that the requester is the right holder, if the requester is the right holder or an assignee, heir or successor of the intellectual property rights;

b/ Evidence proving the actual occurrence of the acts of infringement; proving the suspicion of infringing imports or exports (for a petition for temporary cessation of customs clearance for imports or exports suspected of infringement);

c/ Copy of the notice sent by the intellectual property right holder to the infringer, which allows a reasonable period of time for the infringer to terminate the acts of infringement, and evidence proving the infringer’s failure to terminate the acts of infringement in the case of filing a petition for handling of infringement under the provisions of Point b, Clause 1, Article 211 of the Law on Intellectual Property;

d/ Evidence proving the damage caused by the infringing products to consumers or society, including food, foodstuffs, preventive and curative medicines, livestock feeds, fertilizers, veterinary drugs, plant protection drugs, plant varieties and animal breeds that are harmful to the health of humans or animals or to the environment, in the case of filing a petition for handling of infringement under the provisions of Point a, Clause 1, Article 211 of the Law on Intellectual Property;

e/ Evidence and exhibits related to the intellectual property counterfeit goods or products, parts of products, decals, labels, marks, goods packages, materials and means chiefly used for the production of intellectual property counterfeit goods; documents proving the acts of assignment, ordering, production or trading of products, parts of products, decals, labels, marks, goods packages, materials and means used for the production of intellectual property counterfeit goods in the case of filing a petition for handling of infringement under the provisions of Point c or d, Clause 1, Article 211 of the Law on Intellectual Property;

f/ Evidence proving the request for the application of measures to prevent infringement and to secure the imposition of penalties (in the case of concurrently requesting the application of those measures).

2. When a request for handling of infringement is made through an authorized representative, the petition must be enclosed with the paper or contract of authorization notarized by public notary or certified by the local administration; if it is made by a representative at law, the petition must be enclosed with a paper proving the representative-at-law status.

Article 24.- Evidence to prove the right holder status

The documents referred to in Clause 2, Article 203 the Law on Intellectual Property and specified in this Clause shall be regarded as evidence to prove the right holder status.

1. For inventions, industrial designs, lay-out designs, marks, geographical indications, plant varieties, copyright, rights of performers, rights of producers of phonograms or video recordings or rights of broadcasting organizations already registered, evidence to prove the right holder status may be one of the following two documents:

a/ The original of the protection title for inventions, industrial designs, layout design, marks or geographical indications; the original of the protection title for plant varieties; the original of a copyright/related right registration certificate or a copy thereof notarized by a public notary or certified by the original-issuing agency;

b/ An excerpt of the National Register of Industrial Property; an excerpt of the National Register of Copyright/Related Rights; an excerpt of the National Register of Rights to Plant Varieties, issued by the competent agencies that have registered those subject matters.

2. For an internationally registered mark, the evidence to prove the right holder status shall be the original or the certificate of protection in Vietnam of such internationally registered mark issued by the state management agency in charge of industrial property, a copy of the International Mark Official Gazette of the World Intellectual Property Organization that is certified by the state management agency in charge of industrial property or a copy of or the certificate of protection in Vietnam of such internationally registered mark or the Industrial Property Official Gazette that is notarized by public notary or certified by the state management agency in charge of industrial property.

3. For other intellectual property rights subject matters, evidence to prove the right holder status shall be any documents, exhibits or information used as the basis for emergence and establishment of the relevant right as provided in Clause 1, Clause 2, at Point b and Point c, Clause 3 of Article 6 of the Law on Intellectual Property and specified as follows:

a/ For unregistered copyright, rights of performers, rights of producers of phonograms or video recordings or rights of broadcasting organizations: the original or a copy of the work, fixation of the performance, phonogram, video recording, the broadcast, the satellite signals carrying encoded programs together with other documents evidencing their creation, publication or dissemination of those subject matters and accompanying documents and evidence (if any);

b/ For business secrets: a description of the contents, form of storage, method of protection and method of acquisition of the secret;

c/ For trade names: a description of the contents, mode of use and using process of the trade name;

d/ For well-known marks: documents evidencing the criteria of a well-known mark provided in Article 75 of the Law on Intellectual Property and explanations on the process of using a mark to make it well-known.

4. If the requester for handling of infringement is a transferee of the ownership of the intellectual property right subject matter, a transferee of the right to use the intellectual property right subject matter, a heir or successor of the intellectual property right subject matter, in addition to those documents referred to in Clauses 1, 2 and 3 of this Article, the requester shall also produce the original or a valid copy of the contract for transfer of the ownership of the intellectual property right subject matter or for the use of the intellectual property right subject matter or a document of certification of the inheritance or succession of the intellectual property right subject matter. When the transfer has been entered in the protection title or the certificate of registration of the contract for transfer of the ownership of the intellectual property right subject matter or for the use of the intellectual property right subject matter, these documents shall be also regarded as evidence to prove the right holder status.

Article 25.- Evidence to prove infringements

1. The following documents and exhibits shall be regarded as evidence to prove an infringement:

a/ The original or a valid copy of the descriptive documents or specimen or related exhibit expressing the protected subject matter;

b/ The specimen, related exhibit, photos or recorded images of the examined products;

c/ The written explanation and comparison between the examined products and protected subject matter;

d/ Minutes, testimonies and other documents evidencing acts of infringement.

2. A list of the documents and exhibits referred to in Clause 1 of this Article must be made, certified with the signature of the requester.

Article 26.- Responsibilities of requesters for handling of infringement

1. A requester for handling of infringement shall ensure and be held liable for the truthfulness of the information, documents and evidence that he/she supplied.

2. A requester for handling of infringement who takes advantage of the right to request for handling of infringement for other unhealthy purposes and thereby causing damage to other organizations and individuals shall be liable for compensation.

Article 27.- Filing and settlement of petitions for handling of infringement

1. A petition for handling of infringement shall be filed with agencies with competence to handle infringements defined in Article 200 of the Law on Intellectual Property.

2. Upon receiving a petition for handling of infringement, if the petition-receiving agency finds that the petition falls within the settling competence of another agency, it shall either instruct the requester to file the petition with the agency with the settling competence or forward the petition to the agency with settling competence within ten days after the date of receipt of the petition.

3. If a petition for handling of infringement lacks documents, evidence or exhibits as required, the infringement-handling agency shall request the requester to submit supplementary documents and evidence and fix a reasonable time limit not exceeding thirty days for the requester to do so.

4. The infringement-handling agency shall reject a petition for handling of infringement and state the reason for rejection in the following cases:

a/ At the expiration of the fixed time limit referred to in Clause 3 of this Article, the requester for handling of infringement fails to submit supplementary documents and evidence as requested by the infringement-handling agency;

b/ The statute of limitations for handling infringements as provided for by law has expired;

c/ The verification result of the infringement-handling agency or the police shows that there is no infringement as described in the petition;

d/ A competent agency’s document shows that there are insufficient grounds for handling the infringement.

5. When there is a dispute over or complaint about the right holder, the possibility of protection or scope of protection of the intellectual property rights, the agency that has received the petition for handling of infringement shall instruct the requester to carry out procedures for requesting settlement of the dispute or complaint at a competent agency within ten days after the date on which the dispute arises.