Civil Remedies Applied to Deal with Infringement of Industrial Property Rights

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As mentioned above, industrial property rights are civil rights protected by the state. By law, the state strictly prohibits all acts of infringement of industrial property rights. When an infringement occurs, depending on the nature and severity of the infringement, the violator will be handled according to the provisions of law.

When industrial property rights are infringed, first of all, industrial property rights holders must protect themselves by applying technological measures to prevent infringement; requesting organizations and individuals who infringe industrial property rights to stop the infringement, apologize, publicly correct, compensate for damages and request competent state agencies to handle the infringement of industrial property rights. Rights holders can also file a lawsuit in court or arbitration to protect their legitimate rights and interests. For some subjects such as trade names and geographical indications, infringement acts not only affect the owners of industrial property rights but also affect consumers and society. Therefore, when organizations and individuals suffer damage due to infringement acts of industrial property rights or discover infringement acts of industrial property rights that cause damage to consumers or to society, they also have the right to request competent state agencies to handle the infringement acts according to the provisions of law.

In the case of unfair competition, the right to request the termination of the infringement is not limited to the request to stop the infringement that has occurred but also includes the prevention of future infringements, thereby eliminating the risk of further infringement.

Among the above mentioned protection measures, the measure of filing a lawsuit in court to resolve the matter through civil procedures deserves to be respected [38]. This is a measure applied to handle infringement acts at the request of the subject.

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industrial property rights or of organizations and individuals damaged by infringement, even when such infringement has been or is being handled by administrative or criminal measures.

2.3.1. Civil measures applied to handle acts of infringement of industrial property rights

According to the provisions of Article 202 of the Law on Intellectual Property, to handle organizations and individuals who infringe intellectual property rights in general, the court has the right to apply civil measures including: forcing the termination of the infringing act; forcing a public apology and correction, forcing the performance of civil obligations; forcing compensation for damages; forcing the destruction or forcing the distribution or putting into non-commercial use of goods, raw materials, materials and means used primarily for the production and trading of goods that infringe intellectual property rights, provided that this does not affect the ability to exploit the rights of the intellectual property right holder [17].

The above civil measures have also been recorded in the Vietnam - US Trade Agreement. Accordingly, at Point c, Clause 2, Article 12 stipulates: " Each Party shall allow its judicial authority to compel a party to the lawsuit to cease the infringement, including measures to prevent the entry into the channels of trade of imported and exported goods that infringe intellectual property rights immediately after completing customs procedures for such goods " [30].

According to Article 44 of the TRIPs Agreement, “the judicial authorities shall have the authority to order a party to a proceeding to cease the infringement, among other things, to prevent the entry of imported goods infringing an intellectual property right into the channels of commerce within their jurisdiction after customs clearance ” [28]. Thus, according to the above Agreements, the Court's request for the infringing party to cease the infringement is a preventive measure that can be applied even before accepting the case for trial.

Compulsory cessation of infringement is the Court's decision to compel the infringer of intellectual property rights to immediately cease the infringement upon the request of the plaintiff (for example, compel the infringer of intellectual property rights to a trademark to cease using a sign identical to a protected trademark for goods and services identical to the goods and services in the list of registered goods and services attached to that trademark). The Court may decide to compel the infringer of intellectual property rights to cease the infringement in the judgment or in the decision to apply temporary emergency measures. The Court must specifically state the intellectual property rights that have been infringed and the acts of infringement of intellectual property rights, and the Court must also clearly stipulate what the infringer of intellectual property rights must and must not do in order to strictly enforce the judgment or decision of the Court.

According to the provisions of Clause 1, Article 123 of the Civil Procedure Code, the decision to apply temporary emergency measures shall take effect immediately. Therefore, if the person subject to the temporary emergency measures to force the termination of the act of infringement of intellectual property rights complains about that decision, within the time limit for complaint settlement, they must still enforce the decision. In the case where the Court decides in the judgment to force the termination of the act of infringement of intellectual property rights and that judgment is appealed or protested, according to the provisions of Clause 1, Article 254 of the Civil Procedure Code, the part of the first instance judgment or decision that is appealed or protested shall not be enforced, except in cases where the law provides for immediate enforcement. Therefore, it is necessary to base on the specific provisions of the legal document for immediate enforcement of the appealed or protested part of the first instance judgment or decision and the provisions of Clause 1, Article 254 of the Civil Procedure Code to declare in the judgment or decision that: The decision to force the termination of the act of infringing upon intellectual property rights shall be enforced immediately despite being appealed or protested.

Compelling a public apology and correction is also a measure stipulated in Article 202 of the Law on Intellectual Property. This is a measure decided by the Court.

In the judgment or decision on forcing the person who infringed the intellectual property rights to apologize and make a public correction in order to restore the honor, dignity, prestige, reputation... of the infringed intellectual property rights subject. The purpose of forcing the apology and making a public correction is to protect the author's personal rights and restore the author's honor and reputation. In case the parties reach an agreement on the content, method of apology, public correction and the cost of making the apology and correction, and the agreement is not contrary to the law or social ethics, the court will recognize their agreement. In case the parties do not reach an agreement on the content, method of apology, public correction and the cost of making the apology, the court will decide on the content, duration of apology, public correction and the cost of making the apology, the cost of making the apology, based on the nature of the infringement and the extent and consequences caused by the infringement. The public apology and correction can be made directly at the main address of the injured person or published publicly in the daily newspaper of the central agency or the local newspaper where the main address of the injured person is located for three consecutive issues.

Compelling the performance of civil obligations is a measure decided by the Court to be applied to a person who violates his obligations to the subject of intellectual property rights. This is a civil measure applied when the obligated person fails to perform or improperly performs the obligations agreed upon in the contract and must bear civil liability to the subject of intellectual property rights. When applying this measure, it is necessary to base on the corresponding provisions in Sections 2 and 3, Chapter XVII, Part Three of the 2005 Civil Code.

Another important civil measure used when an act of infringement of intellectual property rights occurs is the measure of compulsory compensation for damages. Accordingly, a person who infringes intellectual property rights and causes material and mental damage to the intellectual property rights owner must compensate. The liability for compensation for damages of a person who infringes intellectual property rights according to the provisions of Vietnamese law is determined according to the grounds prescribed in

Clause 1, Article 604 of the Civil Code and the guidance in Section 1, Part 1 of Resolution No. 03/2006/NQ-HDTP dated July 8, 2006 of the Council of Judges of the Supreme People's Court guiding the application of a number of provisions of the 2005 Civil Code on compensation for non-contractual damages. Damages caused by acts of infringement of intellectual property rights to be compensated include material damages and spiritual damages. In which, material damages include: property losses; reduction in income and profits; loss of business opportunities; reasonable costs to prevent and remedy damages. Spiritual damages include: losses of honor, dignity, reputation caused to the author of the invention, industrial design, or layout design.

Material and spiritual damage is the actual material and spiritual loss directly caused by the infringement to the subject of intellectual property rights and is determined according to the grounds prescribed in Clause 2, Article 16 of Decree No. 105/2006/ND-CP. Accordingly, it is considered an actual loss if there are all of the following grounds: the material or spiritual benefit is real and belongs to the damaged person; the damaged person has the ability to achieve the benefit; there is a decrease or loss of the benefit of the damaged person after the infringement occurs compared to the ability to achieve that benefit when there is no infringement and the infringement is the direct cause of the decrease or loss of that benefit [8].

Compulsory destruction or distribution or non-commercial use of goods, raw materials, materials and means used primarily for the production and trading of goods infringing on intellectual property rights, provided that this does not affect the ability of the intellectual property rights holder to exploit the rights. The Court shall consider the decision to compulsory destruction or distribution or non-commercial use of the above goods, raw materials, materials and means regardless of whether the right holder requests it or not. When deciding to compulsorily destroy goods, raw materials, materials and means used primarily for the production and trading of goods infringing on intellectual property rights, the Court shall decide

The person who infringes upon the intellectual property rights shall bear the costs of such destruction.

2.3.2. Regulations on the right to sue and evidence to prove acts of infringement of intellectual property rights.

2.3.2.1. Right to sue and conditions for suing

Right to initiate a lawsuit: Initiating a civil lawsuit is when an individual, agency or organization, by itself or through a legal representative, initiates a lawsuit at a competent court to request protection of its legitimate rights and interests [14]. The plaintiff must have a petition, the content of the petition must include the contents specified in Article 164 of the Civil Procedure Code, and attached to the petition, the plaintiff must provide documents and evidence to prove that his/her request is well-founded and legitimate. The petition is submitted directly to the court or sent by post. Upon receipt of the petition, the court must record it in the petition receipt book. Within five working days from the date of receipt of the petition, the court must consider and make one of the following decisions: accept the case if the case is within its jurisdiction; transfer the petition to a competent court and notify the plaintiff if the case is not within the court's jurisdiction.

In case the Court finds that the case is within the jurisdiction of the Court, the Court must immediately notify the plaintiff to come to the Court to pay the advance court fee. Within 3 working days from the date of acceptance of the case, the Chief Justice of the Court shall assign a judge to handle the case. Within 3 working days from the date of acceptance of the case, the Court must notify in writing the defendant, individuals, agencies, organizations with rights and obligations related to the settlement of the case, and the People's Procuracy at the same level that the Court has accepted the case. Within 15 days from the date of receipt of the notice, the notified person must submit to the Court a written statement of his/her opinion on the lawsuit request and accompanying documents and evidence, if any.

In case an extension is required, the notified person must submit a request for extension to the Court and state the reasons; if the request for extension is well-founded, the Court must grant an extension, but not more than 15 days; the notified person has the right to request the Court to view, record, or photocopy the petition and documents and evidence attached to the petition.

Conditions for filing a lawsuit for infringement of industrial property rights:

Industrial property rights have been established based on the grounds specified in Clause 3, Article 6 of the Law on Intellectual Property and Article 6 of Decree No. 103/2006/ND-CP. Specifically: industrial property rights for inventions, industrial designs, layout designs, trademarks and geographical indications are established when a competent state agency grants a Certificate of Protection as prescribed in Article 752 of the 2005 Civil Code; Articles 92 and 118 of the Law on Intellectual Property. Industrial property rights for trademarks are established based on the acceptance of protection by a competent state agency for internationally registered trademarks under the Madrid Agreement or the Decision on recognition of a famous trademark by a competent state agency as prescribed in Article 75 of the Law on Intellectual Property. Industrial property rights for trade secrets and trade names are established when all the conditions specified in Articles 76 and 84 of the Law on Intellectual Property are met without having to be registered with a competent state agency [7]. On the other hand, it is necessary to specifically determine which IP object the dispute relates to (invention, industrial design, layout design, trademark, etc.) to determine the basis for establishing IP rights for that object. Because not in all cases the basis for establishing IP rights for all IP objects is the same, in some cases it is necessary to go through registration procedures, in some cases it is not necessary to go through registration procedures. For example, IP rights for trademarks are established on the basis of the decision to grant a protection certificate by the Intellectual Property Office according to the registration procedures prescribed in the Law on IP and other relevant legal documents or the recognition of international registration according to the provisions of international treaties to which the Socialist Republic of Vietnam is a member. Particularly for famous trademarks, IP rights for this trademark

established on the basis of widespread use of that trademark and the criteria specified in Article 75 of the Law on Intellectual Property without registration procedures. In case of a dispute over intellectual property rights for an intellectual property object and it is necessary to determine whether intellectual property rights have been legally established, it is necessary to base on: i) the protection certificate decided by the Intellectual Property Office to grant to the applicant for registration of inventions, layout designs, industrial designs, trademarks (except famous trademarks) and geographical indications. For trademarks registered internationally under the Madrid Agreement and the Madrid Protocol, the basis is the recognition of the state management agency for that international registration;

ii) based on the protection conditions for industrial property objects such as famous trademarks, trade names, trade secrets, and rights against unfair competition [21].

Industrial property rights that are still within the protection period or fully meet the protection standards: industrial property rights for inventions, industrial designs, layout designs, and trademarks are protected during the term of the protection certificate in effect as prescribed in Article 93 of the Law on Intellectual Property; industrial property rights for business secrets, geographical indications, and trade names are only protected when they fully meet the protection standards. After the above protection period, or the subjects no longer meet the protection standards, the right holders will no longer be protected by the State and the law. Therefore, the Court will only accept the lawsuit for settlement if at the time of the dispute, the plaintiff's rights are still within the protection period or fully meet the protection standards as prescribed by the Law on Intellectual Property.

2.3.2.2. Evidence proving infringement of intellectual property rights

Evidence is real, objectively existing things, submitted to the Court by the parties, individuals, agencies, and organizations or collected by the Court according to the order and procedures prescribed in the Civil Procedure Code, which the Court uses as a basis to determine whether the request or objection of the parties is well-founded and

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