Chương 4 Nghị định 99/2013/NĐ-CP Quy định xử phạt vi phạm hành chính trong lĩnh vực sở hữu công nghiệp: Xử lý hành vi vi phạm

Chapter 4.

HANDLING OF VIOLATIONS

Article 22. Right to request handling of violations and competence to take the initiative in detecting and handling violations

1. Industrial property rights holders that may request handling of violations in the domain of industrial property include:

a) Industrial property rights holders that suffer damage caused by violations, including also organizations authorized to manage geographical indications currently protected in Vietnam;

b) Persons licensed to use industrial property objects who suffer damage caused by violations, provided their right to request handling of violations are not restricted by industrial property rights holders.

When exercising the right to request handling of acts infringing upon industrial property rights provided at Point a, Clause 1, Article 211 of the Law on Intellectual Property and acts of unfair competition specified in Article 130 of the Law on Intellectual Property, organizations and individuals defined in this Clause shall clearly indicate the nature and severity of violations in their requests and supply documents and evidence specified in Clause 2, Article 26 of this Decree.

2. Organizations and individuals that detect acts infringing upon industrial property rights, thus causing damage to consumers or the society, violations related to goods, stamps, labels or articles bearing counterfeit marks or geographical indications; organizations and individuals that suffer damage or are likely to suffer damage caused by acts of unfair competition in the domain of industrial property may notify and request competent agencies to carry out procedures for verifying and sanctioning violations.

Upon receiving notices of organizations and individuals defined in this Clause, agencies competent to handle violations shall inspect and coordinate with industrial property rights holders in verifying and handling violations under Clause 3 of this Article.

3. Agencies competent to handle violations shall take the initiative in inspecting, examining, detecting and coordinate with industrial property rights holders in verifying and handling violations related to the following objects:

a) Goods, stamps, labels, packages and other articles bearing counterfeit marks or geographical indications;

b) Infringing goods or services related to food, foodstuffs, pharmaceuticals, cosmetics, livestock feed, fertilizers, veterinary drugs, plant protection drugs, construction materials, means of transport, chemicals for medical, agricultural or environmental use, and other items identified by competent persons while conducting periodical or irregular inspection or examination.

Article 23. Authorization to request handling of violations

1. Industrial property rights holders defined in Clause 1, Article 24 of this Decree that do not directly file their requests for handling of violations may authorize heads of their representative offices, branches or agents or industrial property representation service providers in Vietnam to carry out all procedures for requesting handling of violations under this Decree.

2. Authorization must be made in writing in the form of power of attorney or authorization contract.

A power of attorney of organization or individual in Vietnam must bear a signature of legal representative of the authorizing party and confirmation seal of the authorizing party, in case of possessing a legally-registered seal.

A power of attorney made by a foreign organization or individual must be certified by a notary public, consular office or local administration or other form considered as being lawful as prescribed by law of where it is made.

3. A power of attorney enclosed with the request for handling of violations must be original. A power of attorney made in a foreign language must be enclosed with its Vietnamese translation certified by local administration or bearing guarantee and certification by an industrial property representation service provider being the authorized.

In case a copy of a power of attorney refers to the original power of attorney already included in a dossier previously filed with the same violation-handling agency, such copy is also considered valid, provided that the applicant must specify number code of the filed dossier and the original is still valid and consistent with contents of authorization.

4. A power of attorney which is valid in procedures for establishing rights under Article 107 of the Law on Intellectual Property and clearly indicates contents of authorization including enforcement and protection of industrial property rights in Vietnam is also legally valid in procedures for requesting handling of violations under this Decree.

5. Time limit of authorization is defined under time limit inscribed in the power of attorney. If a power of attorney fails to inscribe time limit, the time limit of authorization will be defined according to Clause 3 Article 107 of the law on intellectual property.

Article 24. Requests for handling of violations

1. A request for handling of a violation must be made in writing, under form of application for handling of violation, clearly indicating the date of making, name(s) of request-receiving agency(ies), information on the requesting organization or individual; lawful representative or authorized organization or individual; concerned industrial property object; goods or service showing signs of infringement; name and address of infringing organization or individual; proposed handling measure(s); signature of the lawful representative of the requesting organization or individual or the authorized organization or individual, and the seal for signature certification (if any). If such a request has been previously filed with another agency, it must clearly indicate the name of this agency and the filing date.

2. A written request for handling of a violation must be enclosed with documents evidencing the right to request handling of violation; documents describing or photos of infringing act, goods or service; place in which the infringing act is committed or infringing goods or service exists.

The requester may supply other documents, samples or evidence to help the competent agency identify the infringing act and goods or service.

Article 25. Receipt and examination of written requests for handling of violations

1. When receiving a written request for handling of a violation, a violation-receiving agency shall implement the following jobs:

a) Determine the competence to handle the violation; if the written request for handling of a violation falls under the handling competence of another agency, guide the requester to file this request with that agency;

b) Examine documents and evidence enclosed with the written request.

2. Examination of a written request for handling of a violation shall be conducted as follows:

a) Within 10 working days after receiving the written request, the violation-handling agency shall consider the validity of the written request and enclosed documents and evidence;

b) When documents or evidence supplied by the requester are insufficient, the violation-handling agency shall request the requester to supplement documents and evidence or give explanations within 30 days after being requested;

c) The agency competent to accept the case for handling may request the alleged violator to furnish information, evidence and give explanations; solicit expert opinions of the state management agency in charge of industrial property or request industrial property assessment to clarify circumstances of the case;

d) Within 30 days after receiving the complete dossier which satisfies the requirements, the competent person shall notify the requester of the projected time of handling, procedures and measures and request cooperation and support of the industrial property rights holder in the inspection, examination, verification and handling of the violation.

3. Rights and responsibilities of parties requested to be handled for their violations:

a) In the course of handling a case, the party requested to be handled may, at his/her/its own will or the request of a competent person, provide information, documents and evidence and give explanations, in case of disagreeing with the requester, within 10 days after the date fixed in the notice of the competent person currently handling the violation or the date of making a minutes of inspection, minutes of administrative violation. If there is a plausible reason, the party requested to be handled may request in writing the competent person currently handling the case to prolong that time limit for not more than 30 days after the date fixed in the notice or the date of making a minutes of inspection or minutes of administrative violation;

b) The party requested to be handled may authorize another organization or individual under Article 23 of this Decree to provide information, documents and evidence and give explanations under Point a of this Clause;

c) To prove that his/her/its act does not infringe upon the right to an invention or a utility solution being a process, the party requested to be handled is obliged to prove that the product believed to be produced from the process infringing upon the right to that invention or utility solution has, in fact, not been produced from the process protected as an invention or a utility solution and satisfied the relevant conditions specified in Clause 4, Article 203 of the Law on Intellectual Property;

d) In case the party requested to be handled fails to provide or provides insufficient information, documents, evidence and explanations to prove his/her/its lawful act, the competent person shall decide to handle the case based on inspection and examination results and information, documents and evidence provided by the requester, for issuing a handling decision.

Article 26. Provision of evidence and information to identify violations

1. A requester for handling of a violation may request industrial property assessment or request the state management agency in charge of industrial property to give its expert opinions for identifying the protection scope and infringing elements, or take the initiative in providing documents and evidence to prove the infringing act or to clarify circumstances of the case.

2. The agency competent to handle the violation may request the requester to provide documents, evidence and explanations or clarify circumstances of the case within a given time limit; request the industrial property rights holder to provide information, documents and samples to identify signs of violation, genuine goods and counterfeit or infringing goods, source of supply or place of consumption of lawful goods, grounds for identifying goods produced beyond the scope of licensing of industrial property object or imports other than parallel imports.

3. The agency competent to handle the violation may conduct at its own will inspection, verification, collection of evidence, determination of the scope of industrial property rights protection and identification of the act of violation under the law on intellectual property. When necessary, it may request a functional agency to conduct verification, collect evidence of violation, request the state management agency in charge of industrial property to give its expert opinions or request industrial properly assessment to identify the scope of protection and infringing elements.

4. The person competent to handle the violation may base him/herself on the industrial property rights holder's written confirmation of goods or service bearing a counterfeit mark or geographical indication, written expert opinions of the state management agency in charge of industrial property and written assessment conclusion to identify the violation but shall take legal responsibility for his/her violation conclusion and violation-handling decision.

5. The agency competent to handle the violation may provide relevant information on the place of production, consumption channel and source of supply of counterfeit or infringing goods and circumstances of the case at the request of the industrial property rights holder or a person competent to settle disputes or sanction violations of another agency or organization, provided that such supply of information and documents does not affect the effectiveness of the concerned case handling and is not confidential as prescribed by law.

6. The agency competent to handle the case may request the party requested to be handled for his/her/its violation and parties with related rights and benefits in the case to provide information, documents and evidence to prove their requests and arguments or to disprove requests and arguments of other parties; request the party currently keeping or controlling evidence and documents related to the case of violation to furnish such evidence and documents as a basis for handling the case.

7. The industrial property rights holder or his/ her/its authorized representative may request the agency competent to handle the violation to permit his/her/its participation and assistance in the inspection, examination, verification, collection of evidence, identification of genuine goods, counterfeit or infringing goods and infringing elements on goods, articles, raw materials, materials and means of business, and determination of measure(s) to handle the infringing goods or service. The agency competent to handle the violation shall decide to permit the participation as requested as prescribed in this Clause, unless it is necessary to protect a trade secret at the justifiable request of the handled party.

Article 27. Handling of violations involving disputes

1. In case a complaint, denunciation or dispute arises concerning the registration right, ownership right, right to request handling of violation, conditions or scope of protection of concerned industrial property rights after a written request for handling of a violation is accepted, the agency competent to accept the case for handling shall take the following handling measures:

a) Requesting involved parties to carry out procedures for requesting settlement of the complaint, denunciation or dispute by a competent agency under the law on intellectual property;

b) Requesting the industrial property rights holder to give explanations or make commitment or to request the state management agency in charge of industrial property to clarify the legal status of industrial property rights subject to the complaint, denunciation or dispute.

Within 30 working days after receiving a written explanation or commitment of the industrial property rights holder or a written reply of the state management agency in charge of industrial property, the agency competent to accept the case for handling shall reply the requester of whether it will carry out handling procedures or refuse to handle the violation.

2. In case a written request for handling of a violation has been accepted but parties involved in the case reach an agreement and propose a handling measure in compliance with the law on intellectual property which does not affect the rights and interests of a third party, consumers and the society, the agency competent to handle the violation shall recognize such handling measure and terminate the handling of the case.

Article 28. Refusal to handle or termination of handling of violations

1. A violation-handling agency shall refuse to handle a violation in the following cases:

a) The written request for handling of the violation is filed when related industrial property rights are disputed;

b) The requester fails to meet requirements of the violation-handling agency on explanation about or addition of evidence proving the status of the industrial properly rights holder and the violation under Point b, Clause 2, Article 25 of this Decree;

c) The statute of limitations for sanctioning the administrative violation has expired under Clause 1, Article 6 of the Law on Handling of Administrative Violations;

d) Results of verification by the violation-handling agency or a police office disprove the violation as described in the written request for violation handling;

dd) There's a conclusion, decision or notice of a competent agency on the lack of grounds for carrying out procedures for handling the violation;

e) The act is neither regarded as a violation under the law on intellectual property nor subject to any administrative sanction specified in this Decree.

2. A person accepting a written request for handling of a violation shall cease procedures for handling the violation in the following cases:

a) Arising a complaint, denunciation or dispute after the request is accepted and pending results of handling by a competent agency defined in Clause 1, Article 27 of this Decree;

b) Lack of grounds to identify act infringing industrial property rights after having accepted the written request for handling of the violation;

c) The requester requests in writing withdrawal of the written request for violation handling;

d) The involved parties can reach agreement on the handling of the case under Clause 2, Article 27 of this Decree.

3. In case a violation is related to the production of or trading in a goods or its package, stamp, label or other articles bearing a counterfeit mark or geographical indication, a person with sanctioning competence shall still carry out procedures for administratively sanctioning this violation even after receiving a notice of withdrawal of the written request for violation handling under Point c, Clause 2 of this Article.

Article 29. Coordination in the handling of violations

1. Requirements for coordination in the handling of violations:

a) For a violation involving complicated circumstances or different organizations and individuals, the agency competent to accept a written request for violation handling may request a competent agency and the state management agency in charge of industrial property in the concerned locality to coordinate in handling the violation. A request for coordination in the handling of a violation must contain brief information on the case, propose issues which require coordinated handling and indicate a time limit of 15 days for the request-receiving agency to reply;

b) The agency receiving the request for coordination shall reply within the indicated time limit, unless it refuses to coordinate. In case of refusal to coordinate, it shall clearly state the reason.

2. Use of results of examination and handling of written requests for violation handling from other agencies:

a) A violation-handling agency may use results of identification of violations or determination of the value of infringing goods conducted by another competent agency (if any) to ensure uniformity of handling measures and sanctioning levels applicable to the same or similar violations or related to the same industrial property object of the same industrial property rights holder;

b) When competent agencies have different opinions, conclusions and decisions on the identification of the violation, measures and extent of handling of the violation, the person competent to handle the violation may set up an advisory council composed of experts prestigious in relevant professional domains to assist the competent person in making conclusions on the violation.

Article 30. Sanctioning procedures

1. When detecting a violation in domain of industrial property, persons with sanctioning competence defined in Articles from 16 thru 21 of this Decree and civil servants and public employees on their duty shall make a minutes of administrative violation.

2. Order of and procedures for sanctioning the administrative violation shall comply with provisions in section 1 Chapter III of the Law on Handling of Administrative Violations.

Article 31. Execution of sanctioning decisions and enforcement of executing sanctioning decisions

1. Execution of sanctioning decisions and enforcement of executing sanctioning decisions comply with Law on Handling of Administrative Violations.

2. For decisions on sanctioning administrative violations which apply remedial measure of forcible change or removal of infringing elements from enterprise name, infringing organizations and individuals shall conduct procedures for changing enterprise name, removing infringing elements from enterprise name at business registration agencies within 60 days after the effective day of decisions on sanctioning administrative violations.

After the time limit mentioned above, if infringing organizations and individuals fail to carry out procedures for changing enterprise name, removing infringing elements from enterprise name, agencies issuing decisions on sanctioning administrative violations shall request the business register agencies to withdraw certificate of business register. The business register agencies shall withdraw certificates of business register as prescribed by law.

3. For decisions on sanctioning administrative violations which apply remedial measure of forcible change of information about domain names or return of domain names, organizations and individuals shall conduct procedures for changing information of domain names or returning domain names at agencies managing domain names, within 30 days after the effective day of decisions on sanctioning administrative violations.

After the time limit mentioned above, if infringing organizations and individuals fail to carry out procedures for changing information about domain names, or returning domain names, agencies issuing decisions on sanctioning administrative violations shall request the agencies managing domain names to revoke such domain names. The agencies managing domain names shall revoke domain names as prescribed by law.

4. Credit institutions and State Treasuries shall collect fines, remit or refund collected fine amounts based on handling decisions of persons with sanctioning competence as prescribed by law.

Article 32. Modification, cancellation or invalidation of administrative sanctioning decisions

1. In case a decision on the settlement of a dispute on industrial property is issued by a competent agency within 90 days from the date of issuance of an administrative sanctioning decision, leading to a change in grounds and contents of the administrative sanctioning decision, a person with sanctioning competence shall issue a decision to modify, invalidate or cancel partially or wholly the validity of the issued administrative sanctioning decision to make it consistent with the dispute settlement decision.

2. In case an administrative sanctioning decision has been complied with by the sanctioned organization or individual, a person with sanctioning competence shall take any of the following measures:

a) Requesting the Slate Treasury that has collected the fine to refund partially or wholly the fine amount remitted under the decision on modification, cancellation or invalidation of the sanctioning decision at the request of the organization or individual that has paid the fine. The request for fine refund may be accepted within 90 days after the date of issuance of the decision on modification, cancellation or invalidation;

b) Returning the goods, article or means of business which has been seized or confiscated but not yet handled. In case such goods, article or means of business has been handled, the organization or individual that has requested the violation handling shall pay a compensation to the handled organization or individual according to the commitment realized upon requesting the violation handling, if any;

c) Other handling measures as reasonably proposed by involved parties.

3. In case the issuance of an administrative sanctioning decision is detected involving a violation of issuing competence, procedures or grounds, such decision shall be handled under Article 15 of the Law on Handling of Administrative Violations and the provisions of the law on settlement of complaints and denunciations.