Proposing Solutions to Improve the Effectiveness of Protecting Industrial Property Rights by Civil Measures

over 15 billion VND, and at the same time confiscated many vehicles and other administrative violation evidence [20].

In recent years, complaints about infringement of IP rights have been increasing. At the Department of Intellectual Property under the Ministry of Science and Technology alone, complaints about infringement of IP rights were as follows: in 2005, there were 33 complaints about patents, 65 complaints about industrial designs, 306 complaints about trademarks; in 2006, there were 41 complaints about patents, 210 complaints about industrial designs, 324 complaints about trademarks; in 2007, there were 17 complaints about patents, 264 complaints about industrial designs, 320 complaints about trademarks [24].

In many countries around the world, the protection of intellectual property rights is mainly by civil measures and is undertaken by the judicial system, other administrative agencies only take measures to prevent initial infringements of intellectual property rights 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 public and fair procedures for civil litigation participants to exercise their rights and obligations at the People's Court, ensuring complete and systematic principles and procedures, clearly defining the functions and powers of the agencies and persons conducting the litigation, and the powers of each level of the Court in resolving civil cases. However, in Vietnam, the practice of resolving intellectual property rights disputes at the People's Court by civil measures has not brought about the desired results. According to statistics of the Supreme People's Court, the settlement of intellectual property disputes from 2000 to 2005 by the entire Court sector was as follows: 93 cases were accepted, 61 cases were resolved, of which 16 cases were temporarily suspended, suspended, or the lawsuit was withdrawn, 12 cases were mediated, and 33 cases were brought to trial (including

11 copyright and related disputes, 22 intellectual property rights disputes) [33].

As analyzed above, the situation of resolving disputes over intellectual property rights by civil measures is often prolonged, requiring multiple trials at multiple levels, wasting time and money of the parties and the State, which is one of the main reasons. 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 the first-instance trial of a civil case is 4 months from the date the Court accepts the case; for complicated cases or due to objective obstacles, the time limit can be extended but not more than 2 months. However, due to the nature of intellectual property rights disputes, the time limit for resolution as prescribed above is still difficult for the Court. An example to demonstrate this situation: Gedeon Richter Company (abbreviated as GR Company) was granted a license to establish a representative office in Vietnam as the owner of the trademark.

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„„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 bearing the trademark „„Posinight‟‟ similar to the contraceptive box bearing the trademark "Posinor" of 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 was placed on the packaging along with a public apology in the 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 a pink rose and the 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 and public apology in the press. The plaintiff's request for compensation for lawyer fees was not accepted, but only the plaintiff's information collection cost of 400,000 VND was reimbursed.

Another obstacle is that in the process of resolving a case, the Court often has to consult with state management agencies on intellectual property and relevant authorities to conclude on the infringement. In the above civil case, the People's Court of Ho Chi Minh City had to send two official dispatches to request the Department of Intellectual Property for comments, and also had to consult with the specialized agency, the Department of Drug Administration, Ministry of Health, to serve the Court's trial. This situation also leads to the Court's resolution being prolonged and in many cases, the recognition and assessment of intellectual property infringement acts by the authorities are sometimes inconsistent. In some cases, the authorities even have to request the Government to intervene in the Court's resolution process. A typical example is the lawsuit between the plaintiff

are Foremost Vietnam Dairy Company and Truong Sinh Industrial Company Limited. The lawsuit has been going on for quite a long time and the Court has had to deal with different opinions from state management agencies such as the Ministry of Trade, the Ministry of Health, the Department of Intellectual Property of the Ministry of Science and Technology. According to the Ministry of Trade, the sweetened condensed milk product with the trademark "Truong Sinh" of Foremost Company belongs to group 29 in the list of goods of the Ministry of Trade, and the soy milk product with the trademark "Truong Sinh" of Truong Sinh Industrial Company Limited belongs to group 32, therefore these are two products that are not in the same group and there is no infringement. According to the Ministry of Health, these are two products with different nutritional qualities, whether or not there is an infringement depends on the conclusion of the Department of Intellectual Property. The Intellectual Property Office said it had refused to grant a Trademark Certificate for the trademark "Truong Sinh Premium Soy Milk" of Truong Sinh Company in 1998, and after Foremost Company filed a petition with the Intellectual Property Office claiming that Truong Sinh Company had infringed on its protected rights, the Office twice sent a document requesting Truong Sinh Company to immediately stop using the Truong Sinh trademark for its soy milk products.

Thus, in many cases, the Court is not capable of making a judgment on the infringement, so it depends heavily on the conclusion of the violation factors of the state management agency on intellectual property to conclude whether or not there is an infringement of intellectual property as mentioned above. In addition, there are a number of reasons such as: the cost of judicial activities is often very expensive due to having to hire lawyers, guarantee the costs for lawyers to operate... while many businesses cannot meet these costs. On the other hand, we do not have organizations to independently survey and evaluate public and consumer opinions, thus limiting the ability of judicial agencies to resolve. In many countries, enforcement agencies and agencies assisting in enforcement activities are highly qualified in intellectual property such as

Judges, academics, university lecturers, people working in the field of IP and IP representative organizations. Meanwhile, in Vietnam, experience in enforcement activities is still very limited (only about 10 years), so it is inevitable that there will be difficulties and confusion [26].

The reality is that there are many disputes over intellectual property rights today, but the Court's handling of intellectual property rights infringement cases by civil measures is still modest for many reasons as stated above. Meanwhile, administrative handling of intellectual property rights violations according to administrative procedures often takes place in a short time, quickly resolves the case, promptly meets the time requirements so that the right holder can effectively exploit his/her industrial property objects. In addition, the procedures for administrative measures are often simpler, especially in providing evidence to prove the infringement of the rights of the violator, because the competent authority then enforces the rights by administrative measures to continue to prove and clarify through direct inspection and examination at the violating facility. According to the assessment of the National Key Scientific Research Project on Intellectual Property conducted by the National University, up to 90% of violations are resolved by administrative sanctions. This situation leads to the consequence that civil relations and civil disputes are overly administrativeized, thereby demonstrating that the protection of intellectual property rights is not thorough and that violations continue to recur on a larger scale and with more sophisticated tricks [27]. In reality, enforcement agencies in Vietnam have tried to handle many acts of counterfeiting trademarks and industrial designs of many large companies and corporations operating in Vietnam such as Honda, Luis Vuitton, Lacoste, AMP, Sisco... by administrative measures, but violations of these trademarks are still continuing on a widespread scale.

The current situation in the enforcement of civil judgments is very difficult. According to the Ministry of Justice, there are currently about 500,000 effective judgments that have not been enforced (most of which are civil judgments). The fact that legally effective judgments have not been enforced in practice has reduced the effectiveness of the enforcement of rights through civil procedures.

Determining the damage of the owner of an IP object still faces many difficulties because in civil proceedings, a very important principle is that the plaintiff must have the obligation to prove to the Court the actual extent of damage caused by the infringement of IP rights by the other party. However, the owner often cannot provide evidence to prove the infringement of the defendant's rights or cannot prove the extent of damage caused by the infringement, even though the infringement and actual damage have occurred and the potential damage, if any, due to the infringement of rights. The reason for this situation is that the plaintiff does not have enough books and related documents to prove it, or the accounting books do not accurately reflect the actual figures, or the decrease in revenue is due to many other reasons such as purchasing power, the replacement of new products... for the decrease in revenue and profit due to the infringement of rights. Therefore, the request for compensation is often not accepted in full by the Court. In addition, filing a lawsuit in court often requires a long wait, usually from 6 months to 1 year, but even without results, which has discouraged many owners of industrial property. This can affect the owner's business.

Another reason why owners are reluctant to bring their cases to court is due to psychological factors. They think that going to court is not the right thing to do, and that going to court can also negatively affect their business operations and reputation in the market. Sometimes, many owners are not even aware of their rights and legitimate interests when requesting the court to make a decision.

Protecting business secrets and the confidentiality of the subjects of intellectual property rights is also an obstacle that makes owners reluctant to bring disputes to court.

before the Court, because when bringing a dispute to court means having to publicize related issues that the parties do not want, so they turn to a simpler, faster and more effective method, which is to complain to state agencies or enforcement forces to request handling by administrative measures.

In addition, in the opinion of many owners of intellectual property rights, the People's Court still lacks judges with solid expertise in the field of intellectual property rights, because the legal system still has many inconsistent points, making the judgments and decisions of the Court not very convincing, not creating trust for the violated subjects. On the other hand, before bringing the case to Court for settlement, the parties often have a fierce competitive mentality, proving that they are not wrong, so they often appeal the decision of the Court of First Instance to request the Court of Appeal to resolve. There are cases where after the judgment of the Court of Appeal, the plaintiff still believes that the judgment of the Court of Appeal is incorrect, so he files a complaint with government agencies, party agencies and the press...

3.2. PROPOSED SOLUTIONS TO IMPROVE THE EFFECTIVENESS OF PROTECTING INDUSTRIAL PROPERTY RIGHTS BY CIVIL MEASURES

The improvement of the law on the protection of intellectual property rights by civil measures is a continuous process, with many difficulties and complications, requiring the attention and efforts of each agency, organization and individual in drafting and promulgating legal documents to regulate legal relations related to the protection of intellectual property rights. In recent years, we have been actively developing the legal system on intellectual property, which has basically been built on the principle of being consistent with international standards on intellectual property and meeting the requirements of economic development of the country in the context of deep integration into the international economy. However, due to the promulgation at different times, the legal system is not yet synchronized, and further research is needed to improve it. On the other hand, the implementation

The enforcement of the law on the protection of intellectual property rights by civil measures has not been as expected due to many reasons, including subjective and objective reasons, requiring us to take remedial measures soon. It can be seen that the legal system as well as the practice of enforcing the law on the protection of intellectual property rights by civil measures is not commensurate, requiring us to study to find solutions. Based on the theory and practice stated in Chapters 1 and 2, the author of the thesis would like to propose a number of groups of solutions to improve the effectiveness of the protection of intellectual property rights by civil measures.

3.2.1. Group of solutions on legal improvement

3.2.1.1. Perfecting the law on procedural law

To resolve a case in accordance with the law, it is necessary to stipulate the basic principles; the order and procedures for requesting the Court to resolve the case; the order and procedures for the Court to resolve the case must be complete and specific. The provisions of these issues must be reflected in legal documents on civil proceedings.

The 2004 Civil Procedure Code is an important legal tool for the Court in resolving civil cases in general and civil cases on intellectual property rights in particular. After more than 3 years of implementation, it has been shown that there are many issues that have not been regulated or have been regulated but are not specific, so the Court has encountered many difficulties when resolving civil cases related to intellectual property rights. After the National Assembly passed the Intellectual Property Law on November 29, 2005, comparing the provisions of the Intellectual Property Law with the provisions of the Civil Procedure Code, we see many inconsistencies. In particular, regarding the resolution of civil cases on intellectual property rights, it is necessary to amend and supplement a number of provisions of the Civil Procedure Code on temporary emergency measures and the participation of state management agencies on intellectual property rights in the process of the Court resolving cases. Specifically:

- It is necessary to add to Article 99 of the Civil Procedure Code on "Right to request application of

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