In fact, to be able to consider “decrease in income, profit, loss of business opportunity” as damage caused by infringement of intellectual property rights, we need to prove the causal relationship between that damage and the infringement. The assumption is that if there is no infringement of intellectual property rights, the production and business of products and services of the owners of intellectual property objects can be affected by market demand, production resources or competition from other objects. This is a factor that regularly affects the production and business of any enterprise. The decrease in revenue can be affected by the increase in market share of competitors, can be changed by the general management policy of the State, not necessarily due to the impact of the infringement. The burden of proof in this case lies with the owners of the IP objects and they are forced to prove that the decrease in revenue in their production and business is not due to the impact of the objective factors mentioned above. On the other hand, we see the fact that any production and business entity must fulfill the obligation to pay taxes to the State, so the compensation for profits earned from the infringement of IP rights is the profit earned before or after paying taxes. Or the enterprise can also have many other legal production and business activities; therefore, there must be a clear distinction between the profits earned from the infringement and the profits earned from other legal production and business activities.
Chapter 3
CURRENT STATUS OF PROTECTING INDUSTRIAL PROPERTY RIGHTS FOR COMMERCIAL INDICATORS BY CIVIL MEASURES IN
VIETNAM AND PROPOSALS FOR IMPROVING THE LAW
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Legal Status on Protection of Industrial Property Rights for Trade Names -
Current Status of Industrial Property Protection Activities for Trade Secrets in Vietnam -
Civil Remedies Applied to Deal with Infringement of Industrial Property Rights -
Legal Status on the Content of Industrial Property Rights for Geographical Indications -
Intellectual Property Rights Infringement Status in Vietnam
3.1. Current status of handling acts of infringement of industrial property rights on commercial indications by civil measures
3.1.1. Current status of processing
Since joining the World Trade Organization (WTO), Vietnam has successfully affirmed itself as a responsible member of this organization. The legal framework for the protection and enforcement of intellectual property rights in Vietnam has basically met the country's development needs. In the context of increasingly deep and comprehensive integration into the regional and world economy, disputes over intellectual property rights have become increasingly diverse and complex. Many cases have been resolved in the "para-litigation" process, when administrative agencies partially replace the role of the court in resolving disputes arising in the process of enforcing intellectual property rights. The necessity of the administrative system in the current period cannot be denied. However, the general trend and also the way to thoroughly resolve intellectual property disputes that Vietnam needs to implement is to resolve intellectual property disputes in court.
The central role of the Court in resolving intellectual property disputes is undeniable. There are many issues raised about the transparency and efficiency of the Court's handling of cases. There are also many concerns about the Court's capacity to accept and resolve intellectual property disputes - a rather unique field for which Vietnam does not have specialized judges or courts. However, from a more optimistic perspective, the Court
Judges will also be IP “experts” when they have the opportunity to thoroughly research a case and work with professional lawyers. Research and analysis of recently adjudicated IP disputes can document this trend.
In recent years, especially since the 2005 Law on Intellectual Property and Vietnam's accession to the WTO, the registration of IP rights has been receiving increasing attention from the business community, creative organizations and individuals. Statistics on the registration of rights by entities and the number of certificates granted have increased, especially registration of rights for objects that are commercial indications. From 2005 to 2012, the registration and granting of protection certificates increased by an average of more than 20% annually, in which trademark registration increased by 25% - 30%, and industrial design registration increased by 19 - 22%. [25]
Along with the increase in applications for establishment and granting of IP protection certificates, Vietnam as well as other countries are facing a serious IP infringement situation, causing frustration not only for IP rights holders but also for consumers and society. As a developing country, with low awareness and general technical level, the number of IP infringement cases in reality is mainly within the scope of commercial indications, especially trademarks and industrial designs.
Resolving intellectual property disputes over trade indications by civil measures is considered the most popular and effective mechanism for protecting intellectual property rights in the world today. In Vietnamese law, civil measures also demonstrate their own advantages compared to administrative and criminal measures. If administrative and criminal measures are only meant to prevent infringement, apply administrative sanctions or
While criminal measures aim to deter and educate violators, in civil measures, the intellectual property rights holder, in addition to the right to request the termination of the infringement, also has the right to request compensation for actual damages caused by the infringement, both material and spiritual. However, the practice of adjudication in recent years has shown that the majority of intellectual property rights infringement cases are brought and resolved through administrative measures and by enforcement agencies of the state administrative system. There are very few intellectual property rights disputes brought to court for resolution, which does not accurately reflect the development of intellectual property rights disputes in social life, which is increasingly diverse and complex, and also goes against the trend that countries around the world are applying to enhance the effectiveness of intellectual property rights enforcement.
Analysis of general data on the situation of infringement and handling of infringement through figures of administrative agencies shows that: the number of cases of intellectual property rights infringement detected has increased rapidly over the years. According to incomplete statistics, in 2012, enforcement forces in six ministries including: Ministry of Science and Technology, Ministry of Information and Communications, Ministry of Agriculture and Rural Development, Ministry of Finance, Ministry of Industry and Trade, and Public Security handled nearly 20,000 cases of intellectual property rights infringement, imposed fines of over 15 billion VND, and confiscated many means and other evidence of administrative violations. In 2012, the Inspectorate of the Ministry of Science and Technology alone inspected 73 cases, handled 48 cases of trademark infringement, 02 cases of design infringement and 05 cases of utility solution infringement, issued 01 warning, fined 45 cases with a total fine of 697,356,000 VND and handled 156,426 products infringing on intellectual property rights [25]. Or according to statistics provided by the Hanoi People's Committee, in just 6 months, from August 2011 to April 2012, the Hanoi Police Department investigated and solved 166 cases with 189 subjects, of which administrative handling was
150 cases and 171 subjects, 16 cases and 28 subjects were criminally prosecuted, the budget was paid, and the confiscated goods awaiting destruction were worth more than 10 billion VND. From May 2012 to April 2013, the number of cases discovered and the number of criminal cases prosecuted was nearly double the figure for the previous 6 months [27].
Unlike many countries in the world, the protection of intellectual property rights in general, and rights to objects that are commercial indications, is mainly carried out by civil measures and is undertaken by the judicial system, other administrative agencies only take measures to prevent infringement of intellectual property rights initially to ensure the immediacy of enforcement activities. According to them, the protection of intellectual property rights by civil measures should be promoted and is considered to have more advantages than administrative and criminal measures because civil measures have partly ensured the order and procedures are public and fair for civil litigation participants to exercise their rights and obligations at the People's Court, ensuring the principles and procedures of full and systematic litigation, clearly defining the functions and powers of the agencies and persons conducting the litigation, the powers of each level of the Court in resolving civil cases.
However, in Vietnam, the practice of resolving intellectual property disputes at the People's Court by civil measures has not brought about the desired results. According to statistics from the Supreme People's Court, the settlement of intellectual property disputes from 2000 to 2005 (the period before the Law on Intellectual Property) by the entire Court system was as follows: 93 cases were accepted, 61 cases were resolved, of which 16 cases were suspended and temporarily suspended; 12 cases were reconciled; 33 cases were brought to trial (including 11 cases of copyright and related rights disputes, 22 cases of industrial property rights disputes). Since the Law on Intellectual Property came into effect (from July 1, 2006), the situation of resolving intellectual property disputes at the People's Court has been
There have not been many significant changes in the court system. According to statistics from the Supreme People's Court from July 1, 2006 to June 22, 2012, the entire court system has only accepted 208 cases of intellectual property disputes (of which the majority of cases at the Court are copyright disputes; industrial property disputes account for a very low percentage (less than 20 cases); disputes over work use contracts account for 5 cases; disputes over technology transfer contracts account for 3 cases). If we only count the Supreme People's Court of Appeal in Hanoi, from July 1, 2006 to now, the Supreme People's Court of Appeal in Hanoi has only accepted and resolved 12 cases, but in reality, there are only 8 cases, because 4 cases must be tried at the second appeal hearing. [38]
Thus, it can be clearly seen that the number of IP infringement cases tried in Court is very modest compared to the handling by other authorities. This is reflected by the reasons that will be analyzed below.
3.1.2. Causes
Firstly, resolving disputes over intellectual property rights in general and rights to commercial indications in particular is a difficult issue . Many cases require specialized technical expertise, many cases involve third parties, and foreign elements, so the process of providing documents and evidence between the parties often takes a long time, leading to prolonged resolution. In some cases, it has to be tried multiple times, through multiple levels, causing waste of time and money for the parties and the state. This is a disadvantage for the right holders because their intellectual property rights are often limited to a certain period of time. Moreover, the delay in resolution has not responded promptly to the right holders' exploitation activities.
According to the provisions of Article 179 of the Civil Procedure Code, the time limit for preparing for first-instance trial for civil cases is 4 months, for business and commercial cases is 4 months.
The time limit for resolving intellectual property disputes at Court is 2 months from the date the Court accepts the case; for complicated cases or due to objective obstacles, the time limit may be extended but not more than 2 months for civil cases and 1 month for commercial cases. In fact, through the study of case files, we see that most cases of resolving intellectual property disputes at Court are often prolonged. This stems from the specific nature of intellectual property disputes, which are relatively complicated, requiring that in the process of resolving the case, the Courts often have to consult with state management agencies on intellectual property and relevant authorities to reach a conclusion on the infringement, so in many cases the Court has to extend the time limit for preparing for trial. There are even cases where the Court has to decide to temporarily suspend the settlement of civil cases on the grounds that it needs to wait for the response from the state management agencies on intellectual property and specialized agencies. It can be said that the long settlement time is one of the fundamental reasons why intellectual property rights holders are hesitant to file a lawsuit requesting the Court to protect their rights and interests against infringements. This is one of the main reasons why litigants rarely choose the Court as an effective solution as it is today.
An example to illustrate this situation:
(i) The “Postinor” trademark case:
Gedeon Richter Company (abbreviated as GR Company) is licensed to establish a representative office in Vietnam and is the owner of the trademark.
„„Postinor‟‟ (emergency contraceptive) is protected in Vietnam under international registration number R441292 dated October 19, 1998. In April 2004, GR Company discovered that Trung Nam Company Limited and Binh Duong Pharmaceutical Company used details from the color, arrangement and presentation of the packaging of the contraceptive box with the trademark „„Posinight‟‟ similar to the contraceptive box.
branded "Posinor" by GR Company. To prevent the infringement of its trademark rights, GR Company filed a lawsuit with the People's Court of Ho Chi Minh City, requesting Trung Nam Company Limited and Binh Duong Pharmaceutical Company to stop unfair competition in intellectual property and claim damages of 85,348 USD and attorney fees of 9,496 USD, compensation for mental damage with a minimum of 10 months of basic salary, recall and destroy all medicine boxes with commercial indications, specifically the pink rose image, the pink number 2 arranged on the packaging, along with a public apology in Tuoi Tre and Thanh Nien newspapers for 3 consecutive issues.
Receiving this petition, on November 12, 2004, Ho Chi Minh City People's Court accepted case number 2360/2004/DS-ST to consider GR Company's petition. However, after nearly two years, with many extensions, on March 29, 2006, Ho Chi Minh City People's Court opened the first instance trial of this civil case and issued civil judgment number 275/2006/DS-ST. Based on the provisions of the law, the Court ordered Trung Nam Pharmaceutical Company Limited and Binh Duong Pharmaceutical Company to jointly be responsible for compensating GR Company the amount of 46,969 USD, forcing the termination of the illegal use of the trademark that the plaintiff had registered for protection, forcing the defendant to be responsible for recalling and destroying all packaging that used the image of pink roses and pink number 2 that the plaintiff had protected, and at the same time announcing this recall in the mass media. Rejected the plaintiff's other requests such as compensation for mental damage, public apology in the press. Not accepting the plaintiff's request for compensation for lawyer fees but only accepting to reimburse the plaintiff's cost of collecting information of 400,000 VND.