Against trademark counterfeit in Vietnam

Against trademark counterfeit is essential to understand the legal measures and strategies available to protect intellectual property rights. Using a logo, slogan, or packaging design that is identical to a well-known brand can expose a business to serious legal consequences due to intellectual property disputes. Trademark counterfeit is not only a violation of the law but also an infringement of the intellectual property rights of others. To protect intellectual property rights for trademarks and ways to deal with counterfeiting, Viet An Law will analyze regulations to against trademark counterfeit in Vietnam in the article below.

What is trademark counterfeit?

Trademark counterfeit is an act of intellectual property infringement, specifically the infringement of rights to a registered trademark. This act is often carried out by copying, imitating, or illegally using another person’s trademark, causing confusion to consumers about the origin of goods and services. Clause 1, Article 129 of the Law on Intellectual Property 2005, as amended and supplemented, specifically stipulates acts considered to be infringement of rights to trademarks and counterfeit trademark goods as prescribed in Clause 2, Article 213 without the permission of the trademark owner:

How is counterfeiting of a protected trademark punished?

Acts of infringement of trademark rights will be punished under Article 11 of Decree 99/2013/ND-CP, amended and supplemented by Clause 10, Article 1, Clause 3, Article 2 of Decree 46/2024/ND-CP, and Clause 10, Article 1 of Decree 126/2021/ND-CP, specifically as follows:

In addition, for acts of infringement of trademark rights listed in Section 1 where the value of infringing goods and services is over 100,000,000 VND and violations in Section 2, individuals and organizations shall also be subject to an additional penalty of partial or total suspension of production and trading of infringing goods and services for 01 to 03 months.

Remedies

Remedies are prescribed in Clause 17, Article 11 of Decree 99/2013/ND-CP, amended and supplemented by Point d, Clause 10, Article 1 of Decree 126/2021/ND-CP, and Point c, Point d, Clause 10, Article 1 of Decree 46/2024/ND-CP, specifically as follows:

• Forced to remove of infringing elements and destruction of infringing elements
• Forced to destroy evidence and means of violation if the violating elements cannot be eliminated; violating goods that are harmful to human health, livestock, crops, and the environment; stamps, labels, packaging, and violating items
• Forced to change the business name, remove infringing elements in the business name (in case the business name contains a protected trademark and constitutes infringement)
• Forced to return illegal profits obtained from committing violations.

How can trademark owners against trademark counterfeit in Vietnam?

Protections under the law

Intellectual property rights holders have the right to apply the measures prescribed in Clause 1, Article 198 of the Law on Intellectual Property 2005, amended and supplemented, to protect their intellectual property rights, including:

• Apply technological measures to protect rights, provide rights management information, or apply other technological measures to prevent infringement of intellectual property rights.
• Require organizations and individuals who infringe intellectual property rights to stop the infringement, remove and delete infringing content on telecommunications networks and the Internet, apologize, make public corrections, and compensate for damages.
• Request the Market management agency, the Inspectorate of the Ministry of Science and Technology, and the Police to handle violations.
• File a lawsuit in Court or Arbitration to protect your legitimate rights and interests.

In addition, intellectual property rights holders may authorize other organizations or individuals to apply the above measures to protect their intellectual property rights.

How to prevent counterfeiting of protected trademarks

• Ensuring trademark protection: Not only for newly registered trademarks, enterprises that have been in the market for a long time and have a foothold still need to pay attention to ensuring the validity of protected trademarks. Enterprises must strictly renew protection every 10 years and carry out objection procedures with the National Office of Intellectual Property regarding new trademark applications with signs of duplication/similarity that confuse.
• Market review: In the business sector, businesses need to regularly monitor the activities of competitors and the market to detect trademark infringement early. Businesses should use the trademark monitoring services of law firms or professional organizations to receive notices of similar trademark use, similar to the way the DMCA did for copyright protection.
• Legal notice: Enterprises need to prepare notices requesting the termination of violations to send to relevant parties when detecting violations, especially in the e-commerce environment. The earlier the notice, the faster the dispute resolution by peaceful means will be promoted.
• Designing anti-competition clause: the infringing subjects are the employees and former managers of the enterprise. The process of terminating the labor contract and terminating the membership obligations can terminate their obligations to protect the company’s intellectual property. Therefore, provisions on anti-unfair competition need to be designed in the labor contract to ensure its validity after the contract is terminated.

For example

A typical example of trademark infringement is the case of Saigon Beer Corporation Vietnam, represented by Mr. Le Dinh Trung, who counterfeited the trademarks “BIA SAIGON” and “BIA SAIGON, dragon image” which are protected and qualified as famous trademarks of Saigon Beer – Alcohol – Beverage Joint Stock Company (SABECO).

Accordingly, Mr. Trung applied for industrial design registration and the trademark Saigon Vietnam Beer at the National Office of Intellectual Property. Although the National Office of Intellectual Property has not yet issued a certificate of trademark registration, Saigon Vietnam Beer Company has ordered the BiVa beer production facility (Ba Ria City) to produce canned beer products under the brand name “Bia Saigon Vietnam” for sale on the market on a commercial scale. After being discovered and handled by the Department of Market Management, on September 9, 2020, the Investigation Police Agency of Ba Ria – Vung Tau Province Police initiated a case and prosecuted the defendant. On November 30, 2020, the National Office of Intellectual Property refused to issue a certificate of registration of the trademark Saigon Vietnam Beer. On March 16, 2023, after two years of prosecuting the case, the People’s Court of Ba Ria – Vung Tau province sentenced Saigon Beer Vietnam Group Joint Stock Company and its representative to a fine of VND 3.7 billion for the crime of infringing industrial property rights.

The case is an important lesson in protecting trademark rights and combating unfair competition in the field of intellectual property. Mr. Le Dinh Trung, the defendant in this case, is a long-time employee at SABECO, the company whose trademark was infringed. Not to mention that intellectual property assets are business secrets, Mr. Trung’s resignation and brand plagiarism for unfair competition is a loophole in human resource management and labor contracts between SABECO and its employees.

Above is all the information about how to against trademark counterfeit in Vietnam. If you need advice on regulations related to intellectual property, please contact Viet An Law for the best support.