The country is opening up, and trade connections are increasing. From the perspective of positive law, the sign of "crossing the border" of infringing goods has also been described as a sign of increased penalties in a number of crimes in the Chapter on crimes against economic management order (such as crimes against counterfeit goods, crimes against prohibited goods). Therefore, adding this sign to the CTTP to increase the severity of crimes against intellectual property rights is necessary.
*Fourth, adding the sign " goods with elements of infringing on a trademark protected in Vietnam " to the CTTP increases the severity of crimes related to counterfeit goods.
This recommendation is prioritized by the thesis author among the solutions that can be used to overcome the limitations in distinguishing crimes of intellectual property rights infringement from crimes of counterfeit goods.
In the research section on defining the crime of infringing intellectual property rights, the author raises the case of the crime being the act of producing and trading in goods with counterfeit elements in content and at the same time satisfying the signs of counterfeit goods with trademarks and geographical indications that are protected in Vietnam, then which crime is determined. In resolving this case, the viewpoint has more consensus than the viewpoint of attracting more serious crimes. The author believes that this viewpoint is only consistent with the previous regulations when the definition of "counterfeit goods" in the documents guiding the application of the law also includes counterfeit intellectual property goods. However, Decree No. 98/2020/ND-CP has separated these two types of goods. Therefore, this attractive viewpoint is no longer suitable. On the other hand, it must be objectively affirmed that the case of producing and trading in counterfeit goods both in terms of content and counterfeiting of trademarks and geographical indications is much more dangerous than the case of counterfeiting only in terms of content or counterfeiting of trademarks and geographical indications. If only one crime of producing and trading in counterfeit goods is brought to the attention and the trial is not distinguished from the case of goods counterfeiting only in terms of content which also constitutes this crime, then the principle of differentiation of criminal liability is not ensured.
From here, there are two solutions to the above case: the first is to define the crime of both crimes (crime of infringing intellectual property rights and crime of manufacturing and trading in counterfeit goods); the second is to transform the signs of infringing intellectual property rights into signs to define a heavier penalty for crimes related to counterfeit goods. The second direction is prioritized by the author of the thesis because:
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- In this case, the infringing goods showing signs of counterfeit trademarks and geographical indications should be considered a circumstance of the crime rather than an independent crime.
- The legislative technique of converting an independent crime into an aggravated CTTP case in another crime has existed in many crimes of the Penal Code.
- The penalty for the crime of manufacturing and trading counterfeit goods is much higher than the crime of infringing intellectual property rights. If the reverse is done (the regulation that counterfeit goods are a sign of increased severity in the crime of infringing intellectual property rights) then the penalty for the crime of infringing intellectual property rights is appropriate to the nature and level of danger to society of the crime.
*Fifth, increase the maximum penalty and redefine the penalty framework.
The legislative experience of countries around the world as well as the requirements from international commitments that Vietnam has participated in and signed, the criminal sanctions prescribed for crimes of intellectual property infringement must be strong enough to deter criminals and prevent future crimes. Currently, the Penal Code prescribes penalties for crimes of intellectual property infringement quite low, not really commensurate with the nature and level of danger to society of the act; the highest level of main penalty prescribed for crimes of intellectual property infringement is 3 years in prison (for the offender). With the wider scope of infringement, the tools, means, methods and tricks of infringement are more developed; the damage caused by acts of intellectual property infringement is increasingly greater, the maximum penalty needs to be re-prescribed (at least) to 5 years in prison. The maximum penalty of 5 years in prison is proposed because: the penalty for crimes of intellectual property infringement in the 2015 Penal Code is the lowest level in comparison with the provisions in other crimes in the same Chapter. Relatively, the crimes with the element of “fraud” related to goods and low-risk trade in the same Chapter (such as the crime of false advertising or the crime of deceiving customers) also stipulate a maximum sentence of 5 years in prison. Along with that, the prison sentence of 5 years is also a low penalty among the legal provisions of some countries that have been studied and compared.
Fourth, perfect the content and legislative techniques of existing regulations.
As analyzed in the current situation and causes of difficulties in applying criminal law to crimes of intellectual property infringement, there are two problems with the sign "commercial scale": first, this qualitative sign has not been specifically explained so it is difficult to apply; second, the definition of this sign in the text
International legal documents have some points that are not similar to the current provisions of Vietnamese law (whether the sign of commercial scale is independent or includes the sign of illegal profit, damage to the right holder, and a certain value of infringing goods). To solve this problem, it is necessary to interpret the concept of "commercial scale" and then refer to the provisions of the Penal Code to adjust the content and legislative techniques accordingly.
Although it first appeared in an international legal document called TRIPS (Article 61 and Article 61 TRIPS do not explain this sign), in April 2007, when the United States filed a complaint with the WTO DSB against China regarding the criminal law protection mechanism for intellectual property rights in this country, the concept of "commercial scale" reappeared in many international legal science forums with the topic of discussion being "the criminal threshold of intellectual property violations" [154]. Among them, two streams of opinion stand out:
- The first viewpoint (represented by the United States) focuses on the term “trade”, while “scale” is just a term that refers to the nature of the term “trade”. From there, the scale of trade includes all commercial activities or activities with commercial purposes regardless of the level of that activity.
- The second school of thought (represented by China) focuses on the term “scale” as a quantitative sign, indicating a certain level of commercial activity. Therefore, only commercial activities that reach a certain level of violation are considered “commercial scale”. [153][126]
As a result, the Panel concluded that “scale of trade” is “the relative level, or extent, of typical or customary trade in a product in a given market” [153] . It varies not only from market to market, but also from product to product within the same market [153]. In light of the Panel’s decision, it is not difficult to see that “scale of trade” in the TRIPs provision is an open and flexible term. By so ruling, the Panel further confirms the policy space enjoyed by each Member State [124]. The above explanation of scale of trade is quite general and flexible.
The efforts of developed countries in the EU or the United States to establish a strict standard for criminal handling of IP infringements continued to be realized by conducting negotiations to create ACTA. One of the basic draft contents is a clearer definition of acts on a commercial scale such as: IP infringements are
for commercial advantage or private financial gain. However, India, China, Brazil and several other developing economies that are not members of the negotiations have also expressed concern that additional levels of enforcement would be unnecessarily detrimental to their economies.[131, p. 210]
More appropriate and appropriate to Vietnam is the interpretation from CPTPP that the author believes Vietnam should consider. Accordingly, the sign “ commercial scale ” explained in Clause 1, Article 18.77 of CPTPP must include at least the following elements:
(a) The purpose of performing the act is toobtain a commercial advantage or financial gain; or (b) Significantly prejudice the interests of the right holder in the marketplace . Footnote 127 further clarifies that a Party may provide that the quantity and value of any infringing material may be taken into account in determining whether the conduct causes significant prejudice to the interests of the copyright and related rights holder in the marketplace.
Compared with the provisions of current law, the author recommends including the content of signs of illegal profit, damage to the right holder and value of goods in the definition of "commercial scale", according to the structure: infringement on a commercial scale is understood as an infringement that includes one of the following elements:
+ Carried out to gain commercial advantage or financial gain;
+ Or causing damage to the right holder from ... million VND or more;
+ Or the value of the infringing goods is from… million dong or more.
In addition, among the elements of “commercial scale”, there is still the element of “aiming to gain commercial advantage” which is not easy for the applicators to unify, so there needs to be a guiding document.
Fifth, complete documents guiding the application of the law:
*First, explain the sign “to gain commercial advantage” in the definition of “commercial scale”.
This content is set if the premise is that the recommendation in the fourth item above is realized. Commercial advantage is a specialized concept in economics. Currently, the definitions of “commercial advantage” that are content-related to the context stated above are very few.
According to the Dictionary of Economics by author Nguyen Van Ngoc (National Economics University), if a company wants to buy another company, then commercial advantage is the amount that the buyer must pay in addition to the value of its assets, due to its location.
have trade relations, reputation, special management skills and technology... [30]. It can be seen that, from a certain perspective, achieving trade advantages is often carried out by activities that increase and promote trade relations and reputation; actively investing in management skills and special technologies... Speaking directly about activities that promote and increase trade relations, we can mention trade promotion activities. In the common sense, trade promotion is not the activity of buying and selling, providing goods and services, but rather activities that promote (make progress faster) the buying and selling of goods and providing services with the aim of finding and promoting trade business opportunities and are carried out by many entities. This is also one of the popular ways to encourage, support, and expand trade for businesses; thereby, obtaining advantages, promoting the buying and selling, providing goods and services to take place more, faster, and stronger. Some trade promotion activities may include commercial advertising, displaying and introducing goods and services; trade exhibitions, etc. (see Clause 10, Article 3 of the 2005 Commercial Law). Legislative experience of some countries such as the United States also shows that acts of circulating infringing products outside the scope of one's business activities for trading or thereby taking advantage of the geographical limits of protected cases to register trademarks can also be considered crimes [53, p. 123].
In fact, the regulations of the United States - a superpower in science and technology - also show the viewpoint of maximally protecting the interests of the creative subject when debating the "criminal threshold" in the lawsuit with China in 2007: as long as the infringement has a commercial element, regardless of the scale, it can be considered a crime. If Vietnam fully learns that viewpoint to proceed with the construction of criminal law regulations in the present or near future, it will not be suitable for the socio-economic context of Vietnam - a developing country. On the contrary, it is very difficult to only regulate infringement by existing quantified signs because in the obligations that Vietnam has committed to CPTPP, there is no explanation of the commercial scale, which certainly does not contain the qualitative sign " to gain commercial advantage " in addition to the quantified signs.
In summary, the author believes that it is necessary to explain the sign "to gain commercial advantage" at an intermediate level between the two thresholds mentioned above, through the implementation of a number of trade promotion activities in which the infringing goods and services are the subject.
The object is put into promotion; or there are activities of circulating counterfeit trademark products outside the scope of business registration in order to register protection for that trademark.
*Second, provide specific guidance on the provisions on criminal liability of commercial legal entities. In reality, there have been cases where criminal liability of commercial legal entities could be prosecuted but the subject applying the law did not prosecute. From the results of practical research on a number of cases, it is necessary to have guidance on the application of the provisions of the Penal Code on the prosecution of criminal liability of commercial legal entities. In particular, focus on clarifying the conditions for criminal liability of commercial legal entities in Clause 1, Article 75 of the Penal Code, for example: it is necessary to provide guidance on cases where commercial legal entities commit crimes in areas where such legal entities are not registered for business in the direction that the scope of such business registration is not the limit for the prosecution of criminal liability of legal entities.
trade according to the provisions of the Criminal Code.
From the above recommendations, the author models the expected amendment and supplementation of the Articles regulating crimes of intellectual property infringement into the Penal Code as follows:
CHAPTER XVIII
CRIMES AGAINST ECONOMIC MANAGEMENT ORDER
Item…
Article ... Crime of infringement of copyright and related rights
1. Anyone who, without the permission of the copyright or related rights holder, intentionally commits one of the following acts, infringing upon copyright or related rights protected in Vietnam in order to gain commercial advantage or to gain illegal profits or cause damage to the copyright or related rights holder from VND 100,000,000 to under VND 500,000,000 or infringing goods worth from VND 100,000,000 to under VND 500,000,000 , shall be subject to a fine of VND 50,000,000 to VND 300,000,000 or non-custodial reform for up to 03 years or imprisonment for up to 01 year:
a) Copying works, audio recordings, video recordings;
b) Distribute to the public copies of works, copies of sound recordings, copies of video recordings.
c) Communicate to the public works, recordings, and video recordings
2. Committing a crime in one of the following cases shall be subject to a fine of from VND 300,000,000 to VND 1,000,000,000 or imprisonment from 01 year to 05 years:
a) Organized;
b) Committing the crime 02 times or more;
c) Illegal profits of VND 300,000,000 or more;
d) Causing damage to copyright and related rights owners of VND 500,000,000 or more;
d) Infringing goods worth VND 500,000,000 or more.
e) Across the Vietnam border
f) Committing a crime on the internet
3. The offender may also be fined from VND 20,000,000 to VND 200,000,000, banned from holding positions, practicing a profession or doing certain jobs from 01 to 05 years.
4. A commercial legal entity that commits a crime specified in this Article shall be punished as follows: a) Committing one of the acts specified in Clause 1 of this Article to achieve
gain commercial advantage or to gain illegal profits or cause damage to copyright owners or related rights from VND 300,000,000 to under VND 500,000,000 or infringing goods worth from VND 300,000,000 to under VND 500,000,000; causing damage to the copyright or related rights holder from VND 100,000,000 to under VND 300,000,000 or infringing goods worth from VND 100,000,000 to under VND 300,000,000 but having been administratively sanctioned for one of the acts specified in this Article or having been convicted of this crime, not having had the criminal record expunged but still committing the violation, shall be subject to a fine from VND 300,000,000 to VND 1,000,000,000;
b) Committing a crime under the provisions of Clause 2 of this Article shall be subject to a fine of from VND 1,000,000,000 to VND 3,000,000,000 or suspension of operations for a period of from 06 months to 02 years;
c) Commercial legal entities may also be fined from VND 100,000,000 to VND 300,000,000, banned from doing business, banned from operating in certain fields or banned from raising capital from 01 to 03 years.
Article ... Crime of infringing industrial property rights on trademarks
1. Anyone who intentionally infringes upon industrial property rights in the following cases , with the aim of gaining commercial advantage or making illegal profits or causing damage to the trademark owner from VND 200,000,000 to under VND 500,000,000 or infringing goods worth from VND 200,000,000 to under VND 500,000,000
VND, shall be fined from VND 50,000,000 to VND 500,000,000 or be subject to non-custodial reform for up to 03 years or imprisonment for up to 01 year:
a. Acts of infringement of industrial property rights under intellectual property law, the subject of which is counterfeit trademark goods;
b. Manufacturing, importing, transporting, trading, or storing stamps, labels, or other items bearing counterfeit trademarks.
2. Committing a crime in one of the following cases shall be subject to a fine of from VND 500,000,000 to VND 1,000,000,000 or imprisonment from 01 year to 05 years:
a) Organized;
b) Committing the crime 02 times or more;
c) Illegal profits of VND 300,000,000 or more;
d) Causing damage to the trademark owner of VND 500,000,000 or more; dd) Infringing goods worth VND 500,000,000 or more.
e) Across the Vietnam border
f) Committing a crime on the internet
3. The offender may also be fined from VND 20,000,000 to VND 200,000,000, banned from holding positions, practicing a profession or doing certain jobs from 01 to 05 years.
4. A commercial legal entity committing a crime specified in this Article shall be punished as follows:
a) Committing the acts specified in Clause 1 of this Article to gain commercial advantages or to gain illegal profits or cause damage to the owner of a trademark or geographical indication from VND 300,000,000 to under VND 500,000,000 or infringing goods worth from VND 300,000,000 to under VND 500,000,000; causing damage to the trademark owner from VND 100,000,000 to under VND 300,000,000 or infringing goods worth from VND 100,000,000 to under VND 300,000,000 but having been administratively sanctioned for this act or having been convicted of this crime, not having had the criminal record expunged but still committing the violation, shall be fined from VND 500,000,000 to VND 2,000,000,000;
b) Committing a crime under the provisions of Clause 2 of this Article shall be subject to a fine of from VND 2,000,000,000 to VND 5,000,000,000 or suspension of operations for a period of from 06 months to 02 years;