Chương I Nghị định 65/2023/NĐ-CP: Xác định hành vi, tính chất và mức độ xâm phạm, xác định thiệt hại

Chapter I

DETERMINATION OF ACTS, NATURE, AND LEVEL OF INFRINGEMENT AND DAMAGE IDENTIFICATION

Section 1. GROUNDS TO DETERMINE ACTS, NATURE, AND LEVEL OF INFRINGEMENT

Article 71. Application of civil, administrative, and criminal measures to protect industrial property rights and rights to plant varieties

Acts of infringement may, based on the nature and level, be handled by civil, administrative, and criminal measures according to Part Five (Protection of Industrial Property Rights) of the Law on Intellectual Property and the following regulations:

1. Civil measures shall be applied to handle any act of infringement at the request of the holder of industrial property rights or rights to plant varieties or the organization or individual with damage caused by the infringement, even if such an act has been or is being handled by administrative or criminal measures.

The procedure for requesting the application of civil measures and the competence and procedure for applying civil measures shall comply with civil procedure laws.

2. Administrative measures shall be applied to handle any act of infringement that falls into one of the cases prescribed in Article 211 of the Law on Intellectual Property at the request of the holder of industrial property rights or rights to plant varieties, the organization or individual with damage caused by such acts, or a competent authority.

Forms, fines, competence, and procedure for fining acts of infringement and measures to remedy the consequences in compliance with the Law on Intellectual Property and administrative handling laws concerning industrial property rights and rights to plant varieties.

3. Criminal measures shall be applied to handle any act of infringement if such an act has sufficient elements to constitute a crime according to the Criminal Code.

The competence and procedure for applying criminal measures shall comply with criminal procedure laws.

Section 72. Determination of violations

Acts are considered infringements on industrial property rights and rights to plant varieties according to Articles 126, 127, 129, and 188 of the Law on Intellectual Property when the following grounds are found:

1. The subject in consideration falls into the scope of subjects under protection;

2. There are elements of infringement in the subject in consideration;

3. The person who commits the act that is in consideration is not the holder of industrial property rights or rights to plant varieties and is not a person permitted by laws or a competent authority according to Clause 2 and Clause 3 Article 125, Article 133, Clause 3 Article 133a, Article 134, Clause 2 Article 137, Article 145, Article 190, and Article 195 of the Law on Intellectual Property;

4. The act in consideration takes place in Vietnam. The act will also be considered to take place in Vietnam if it occurs on the Internet and is carried out on an information website under a Vietnamese domain name or with the display language of Vietnamese or aims at consumers or information users in Vietnam.

Article 73. Grounds to identify subjects of protection

1. The identification of subjects of protection shall be performed by assessing documents and evidence proving the arising grounds and establishment of rights according to Article 6 of the Law on Intellectual Property.

2. Regarding industrial property rights registered at competent authorities, the subjects of protection shall be identified according to the certificates of registration confirmation, protection titles, and documents enclosed with such certificates of registration confirmation and protection titles.

3. Regarding trade names, the subjects of protection shall be identified based on the use progress, fields, and territories using such trade names.

4. Regarding business secrets, the subjects of protection shall be identified based on documents specifying the content and nature of the business secrets and presenting and describing the corresponding confidentiality measures.

5. Regarding famous marks, the subjects of protection shall be identified based on documents and evidence that the marks are used widely to achieve their fame following the criteria prescribed in Article 75 of the Law on Intellectual Property.

6. Regarding geographical indications protected under international treaties, the subjects of protection shall be identified according to international treaties or the National Industrial Property Register.

7. Rights to plant varieties shall be determined according to plant variety protection titles issued by competent authorities.

Article 74. Elements of infringement on invention ownership

1. Elements of infringement on rights to inventions may be in one of the following forms:

a) A product or any part of the product is identical or similar to a product or any part of the product under the scope of invention protection;

b) A procedure is identical or similar to a procedure under the scope of invention protection;

c) A product or any part of the product is produced under a procedure identical or similar to a procedure under the scope of invention protection.

2. The ground to determine elements of infringement on rights to inventions is the scope of invention protection determined according to the invention patents, utility solution patents, or excerpts from the National Industrial Property Register.

Article 75. Elements of infringement on rights to layout designs

1. Elements of infringement on rights to layout designs may be in one of the following forms:

a) A layout design is created from an illegal copy of a protected layout design;

b) A semiconductor integrated circuit is created illegally following a protected layout design;

c) A product or any part of the product with a semiconductor integrated circuit prescribed in Point b of this Clause.

2. The ground to determine elements of infringement on rights to layout designs is the scope of protection of rights to layout designs determined according to certificates of registration of semiconductor integrated circuit or excerpts from the National Industrial Property Register.

Article 76. Elements of infringement on rights to industrial designs

1. Elements of infringement on rights to industrial designs refer to when a product or any part for assembly into a complex product whose external appearance does not differ significantly from the protected industrial design.

2. The ground to determine elements of infringement on rights to industrial property is the scope of protection of industrial designs determined according to the industrial design patents, decisions on acceptance of the protection of industrial designs internationally registered, or excerpts from the National Industrial Property Register.

3. A product or any part for assembly into a complex product whose appearance is considered to not differ significantly from a protected industrial design if it falls into one of the following cases:

a) The product or any part for assembly into the complex product in consideration, even if it has an issued industrial design patent, has an appearance that is a combination of design features that forms a whole that is a copy or essentially a copy (nearly indistinguishable) of a protected industrial design of another person;

b) The product or any part for assembly into the complex product is considered to have an external appearance that is a combination of design features that forms a whole that is a copy or essentially a copy of an industrial design of at least one product in the protected set of products of another person.

Article 77. Elements of infringement on rights to marks

1. Elements of infringement on rights to marks refer to signs attached to goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses that are identical or similar to the point of confusion over the protected marks.

2. The ground to assess elements of infringement on rights to marks is the scope of protection of marks, including mark samples and lists of goods and services determined in the certificates of mark registration, confirmation certificates of internationally registered marks protected in Vietnam, or excerpts from the National Industrial Property Register or determined via the assessment of evidence proving the famous marks according to Article 75 of the Law on Intellectual Property.

3. In order to determine if a suspicious sign is an element of infringement on rights to a mark, it is necessary to compare such a sign to the related mark while comparing the goods and services bearing that sign to the goods and services under the protection scope. An element of infringement may only be confirmed when the following requirements are met:

a) The suspicious sign is identical or similar to the point of confusion over the mark under the scope of protection. Specifically, a sign is considered identical to a protected mark if it has the same structure and presentation or similar to the point of confusion over a mark under the protection scope if there are several components completely identical to or similar to the point that they cannot be easily distinguished from each other in terms of structure, pronunciation, transcription, meanings, presentation, or colors regarding a visible sign and melody or tone regarding a sound sign and the use of the sign can potentially cause confusion over the goods and services bearing the mark for consumers;

b) Goods and services that bear the suspicious sign are identical or similar to the goods and services under the protection scope if they are identical or similar in terms of nature or functions and uses and have the same consumption channel or have connections with each other in terms of nature, functions, or implementation methods.

4. Regarding famous marks, suspicious signs are considered elements of infringement if:

a) The suspicious signs meet the requirements prescribed in Point a Clause 3 of this Article;

b) Goods and services bearing the suspicious signs meet the requirements prescribed in Point b Clause 3 of this Article, or the goods and services are not identical, similar, or related to goods and services bearing the famous marks, but they can potentially cause confusion for consumers over the goods origins and services or make a false impression on the relationship between the persons producing and trading such products and services with the owners of the famous marks.

Article 78. Elements of infringement on rights to geographical indications

1. Elements of infringement on rights to geographical indications displayed in the form of signs attached to goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses that are identical or similar to the point of confusion with the protected geographical indications.

2. The ground to assess elements of infringement on rights to geographical indications is the scope of protection of geographical indications determined according to certificates of registration of geographical indications, international treaties that have contents of recognition and protection of geographical indications, or excerpts from the National Industrial Property Register.

3. In order to determine if a suspicious sign is an element of infringement on rights to a protected geographical indication, it is necessary to compare such a sign to the related geographical indication while comparing the product bearing that sign to the product with the protected geographical indication based on the following grounds:

a) The suspicious sign is identical or similar to the point of confusion over the protected geographical indication. Specifically, a sign is considered identical to a protected geographical indication if it has the same wording structure, including pronunciation and transcription of letters, meanings, or images and symbols under the scope of protection of the geographical indication. A sign is considered similar to the point of confusion over the protected geographical indication if it is similar in terms of wording structure, including pronunciation and transcription of letters, meanings, or images and symbols under the scope of protection of the geographical indication and misleads consumers that the product bearing the suspicious sign originates from a protected geographical area;

b) The product bearing the suspicious sign is identical or similar to the product bearing the protected geographical indication in terms of nature, functions, uses, and consumption channel;

c) Regarding wines and brandies, aside from the regulations prescribed in Point a and Point b of this Clause, signs that are identical with protected geographical indications, even if they are presented in the form of definition, transcription, or words indicating types, styles, forms, or equivalences used for products not originating from geographical areas with protected geographical indications are also considered elements of infringement on rights to geographical indications.

Article 79. Elements of infringement on rights to trade names

1. Elements of infringement on rights to trade names displayed in the form of commercial indications attached to goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses that are identical or similar to the point of confusion with the protected trade names.

2. The ground to assess elements of infringement on rights to trade names is the scope of protection of trade names determined based on the evidence showing the legal use of such trade names provided by the trade name owners, which identifies the subjects of business, business facilities, business operations, business fields, and business areas and the process of using the trade names.

3. In order to determine if a suspicious sign is an element of infringement on rights to a trade name, it is necessary to compare such a sign to the protected trade name, the subject of the business, the business facility, and the business operation related to the suspicious sign, and the goods and services bearing such a sign to the goods and services of the protected trade name based on the following grounds:

a) The suspicious sign is identical or similar to the point of confusion over the protected trade name. Specifically, a sign is considered identical to a protected trade name if they are identical in terms of wording structure, including pronunciation and transcription of the trade name. A sign is considered similar to a protected trade name if they are similar in terms of structure, pronunciation, and transcription of the trade name, confusing the consumers over the subject of business, business facility, and business operation under the protected trade name;

b) Goods and services that bear the suspicious sign are considered identical or similar to goods and services bearing the protected trade name if they are identical or similar in terms of nature or functions and uses and have the same consumption channel, or have connections with each other in terms of nature, functions, or implementation methods.

Article 80. Elements of infringement on rights to plant varieties

1. Elements of infringement on rights to plant varieties considered to constitute acts of infringement are as follows:

a) Plant propagation materials, intact seedlings, harvested products, or any material that can potentially grow into the complete seedlings of protected plant varieties;

b) Names of plants or characters that are similar to the point of confusion over the display on goods, goods packaging, means of services, transaction documents, signs, advertising means, and other means of businesses or the names of the protected plant varieties;

c) Machinery, equipment, storage, preservation, transport vehicles, or other equipment serving the processing and storage of seeds, plant propagation materials, and harvested materials for making seeds of protected plant varieties.

2. The ground to determine elements of infringement on rights to plant varieties is the scope of unexpired plant variety protection titles.

Article 81. Grounds to determine nature and level of infringement on industrial property rights and rights to plant varieties

1. The nature of infringement prescribed in Clause 1 Article 199 of the Law on Intellectual Property is determined based on the following grounds:

a) Circumstances and motives for infringement: unintentional infringement, intentional infringement, infringement due to being controlled or dependent, first-time infringement, and repeated infringement;

b) Methods of infringement: independent infringement, organized infringement, self-perpetuated acts of infringement, and acts of bribing, deceiving, or forcing others to commit acts of infringement.

2. The level of infringement prescribed in Clause 1 Article 199 of the Law on Intellectual Property is determined based on the following grounds:

a) Territorial scope, time, volume, and scale of the infringement;

b) Impacts and consequences of the infringement.

Section 2. DAMAGE IDENTIFICATION

Article 82. Principles of identifying damage to industrial property rights and rights to plant varieties

1. Damage caused by infringement on industrial property rights and rights to plant varieties prescribed in Article 204 of the Law on Intellectual Property means the actual physical and spiritual loss caused by acts of infringement directly to the right holders.

2. Actual loss shall be identified if there are the following grounds:

a) Physical or spiritual benefits are real and belong to the aggrieved person;

b) The aggrieved person can potentially gain the benefits prescribed in Point a of this Clause;

c) There is a reduction or loss of benefits for the aggrieved person after the occurrence of the infringement compared to the potential gain of such benefits when the infringement does not occur, and such infringement is the main source that causes such reduction or loss.

3. The level of damage shall be determined in conformity with the elements of infringement on rights for subjects of industrial property rights and rights to plant varieties. The determination of damage levels shall be based on evidence of the damage provided by concerned parties, including the results of the request for damage identification and table of damage with elaboration on grounds to identify and calculate the damage.

Article 83. Loss of assets

1. Loss of assets shall be determined based on the level of deterioration or loss of value in money of the subject of industrial property rights or rights to plant varieties under protection.

2. The value in money of the subject of industrial property rights or rights to plant varieties prescribed in Clause 1 of this Article shall be determined by one or more of the following grounds:

a) Price for the transfer of the ownership or price for the transfer of rights to use the subject of industrial property rights or rights to plant varieties;

b) Value of business capital contribution by industrial property rights or rights to plant varieties;

b) Value of industrial property rights or rights to plant varieties in the total number of assets of the enterprise;

d) Value of investment in the creation and development of the subject of industrial property rights or rights to plant varieties, including costs of marketing, research, advertising, labor, taxes, and other costs.

Article 84. Spiritual loss

Damage to the honor, dignity, reputation, fame, and other spiritual losses caused to the author of inventions, industrial designs, layout designs, and plant varieties according to the Law on Intellectual Property refers to when the moral rights of the mentioned subjects are infringed on, making the author receive damage to the honor and dignity or decrease or loss of credibility (prestige), reputation, and trust due to misunderstanding.

Article 85. Decrease of incomes and profits

1. Incomes and profits prescribed in Point a Clause 1 Article 204 of the Law on Intellectual Property include:

a) Incomes and profits from direct use or utilization of subjects of industrial property rights or rights to plant varieties;

b) Incomes and profits from leases on subjects of industrial property rights or rights to plant varieties;

c) Incomes and profits from the transfer of rights to use subjects of industrial property rights or rights to plant varieties.

2. Decrease of incomes and benefits shall be determined following one or more of the following grounds:

a) Direct comparison of the actual incomes or profits before and after the occurrence of the violations corresponding with each type of income prescribed in Clause 1 of this Article;

b) Comparison of the output, quantity of actual products, goods, and services consumed or the supply of the mentioned subjects before and after the occurrence of the violations;

c) Comparison of the actual market sale prices of the products, goods, or services before and after the occurrence of the violations.

Article 86. Loss of business opportunities

1. Business opportunities prescribed in Point a Clause 1 Article 204 of the Law on Intellectual Property include:

a) The actual capacity for directly using or utilizing subjects of industrial property rights or rights to plant varieties in business;

b) The actual capacity for leasing subjects of industrial property rights or rights to plant varieties;

c) The actual capacity for transferring rights to use subjects of industrial property rights or rights to plant varieties or transferring subjects of industrial property rights or rights to plant varieties;

d) Loss of other business opportunities caused by acts of direct infringement.

2. Loss of business opportunities means the damage to the value in money of the income that is supposed to belong to the aggrieved person when performing the capacities prescribed in Clause 1 of this Clause if the related act of infringement does not occur.

Article 87. Reasonable expenses for damage prevention and remedy

Reasonable expenses for damage prevention and remedy prescribed in Point a Clause 1 Article 204 of the Law on Intellectual Property include the expenses for temporary detention, preservation, and storage of infringing goods, expenses for the implementation of temporary emergency measures, reasonable expenses for hiring lawyers, assessment services, and preventing and remedying acts of infringement, and expenses for notification and rectification on mass media concerning acts of infringement.