Handling trademark infringement on the Internet

In recent years, the internet and online tools, such as e-commerce, have become increasingly popular and generate significant revenue for individuals and businesses. However, along with the development of the internet, forms of trademark infringement on the Internet have also become more diverse and complex. Therefore, it is essential to handle infringement cases to protect the rights of trademark holders on the Internet. In this article, Viet An Law will provide basic legal advice on handling trademark infringement on the internet in Vietnam.

Legal basis

• Vietnam Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, and 2022;
• Criminal Code 2015, as amended and supplemented in 2017;
• Civil Procedure Code 2015;
• Decree 99/2013/ND-CP, as amended and supplemented by Decree No. 126/2021/ND-CP and Decree No. 46/2024/ND-CP on sanctioning administrative violations in industrial property.

What is a trademark on the internet?

According to Clause 16, Article 4 of the current Law on Intellectual Property: “Mark means any sign used to distinguish goods or services of different organizations or individuals.”

Internet trademark infringement is an act of an individual or organization using a protected trademark without the consent of the trademark holder on the internet environment, typically on social networks such as Facebook, Instagram, Tiktok, and Youtube with a large number of infringements.

Acts of infringing upon the trademark

According to Clause 1, Article 129 of the current Law on Intellectual Property, the following acts if being performed without the permission of mark holders, shall be regarded as infringements of the rights to marks:

Measures to handle trademark infringement on the internet

Currently, depending on the nature and seriousness of such infringements, individuals and organizations that commit trademark infringement on the Internet shall be handled with civil, administrative, or criminal remedies. Specifically:

Right to self–protection

According to Article 198 of the current Law on Intellectual Property, holders of trademark rights on the Internet shall have the right to apply the following measures to protect their rights:

• Applying technological measures to protect rights, providing information on rights management, or applying other technological measures to prevent trademark infringement on the Internet.
• Requesting organizations or individuals that commit acts of trademark infringement on the internet to terminate their infringing acts, make public apologies or rectifications, and pay damages;
• Requesting competent state agencies to handle acts of trademark infringement on the internet according to the provisions of law;
• Initiating lawsuits at courts or arbitration centers to protect their legitimate rights and interests.

For infringements occurring on third-party platforms, trademark holders can report trademark infringement to businesses providing intermediary services such as social media networks (Facebook, Instagram, Reddit, Pinterest), e-commerce marketplaces (Shopee, Tiki, Lazada), and other online platforms to request the removal of infringing trademark images following Article 198b of the Intellectual Property Law.

The law requires these businesses to implement technical measures to prevent and remove infringing content. Additionally, these businesses are responsible for cooperating with competent government agencies when requested to resolve trademark infringement on the Internet.

If the trademark holder can identify the party infringing their trademark on the internet, they can send a warning letter/ legal letter (soft copy or hard copy) demanding that the infringing party stop using the trademark. Viet An Law can provide support and drafting documents requesting the infringer to stop acts of intellectual property infringement upon request.

In cases where rights holders do not know how to deal with trademark infringement on the internet, rights holders can use legal services for advice and support.

Civil remedies

Holder of trademark rights on the internet has the right to request competent authorities to apply civil remedies to protect their rights. According to the Vietnamese civil procedure code, the application of civil remedies shall fall within the competence of district and provincial people’s courts.

According to Article 202 Law on Intellectual Property, the court shall apply the following civil remedies in handling organizations and individuals that have committed acts of trademark infringement on the internet:

• Compelling the termination of infringing acts;
• Compelling the public apology and rectification;
• Compelling the performance of civil obligations;
• Compelling the payment of damages.

The right holder shall prove that he/she is the the right holder of the infringed trademark and must provide evidence of trademark infringement on the internet.

Administrative remedies

Acts of trademark infringement shall be administratively sanctioned according to the provision of Decree 99/2013/ND-CP, as amended and supplemented by Decree 46/2024/ND-CP. The following acts of infringement for business purposes will be subject to a warning or fine:

• Selling, offering for sale; transporting, including transiting; storing: displaying for sale of goods or services infringing upon rights to marks, geographical indications, trade names, or industrial designs;
• Placing orders to, assigning, or hiring other parties to perform the above actions.

Monetary fine

Depending on the value of the infringing goods and services, the fine level will vary. Specifically, the fine level for individuals is:

In case the value of infringing goods or services cannot be determined, a fine of between 10 million VND and 30 million VND shall be imposed.

For the same act of administrative violation, the fine level for the organization will be twice the fine level for an individual. The maximum fine level for organizations will be 500 million dong.

Remedial measures

• Compelling the removal of infringing elements and destroying infringing elements to the infringement;
• Compelling destruction of infringing articles and means if the infringement cannot be eliminated: infringing stamps, marks, packaging, and items for infringement acts.
• Compelling the return of illegal profits obtained from the infringement.

Authority

Regarding the authority to impose sanctions, many agencies have the authority to apply administrative measures to acts of trademark infringement on the Internet. According to Decree No. 99/2013/NĐ-CP (as amended by Decree No. 46/2024/NĐ-CP), the authority to impose administrative sanctions belongs to specialized inspectors, market management, customs, public security, chairpersons of people’s committees at district and provincial levels. Therefore, in cases where acts of trademark infringement on the internet fall under the administrative sanctioning authority of many agencies, the sanction will be carried out by the first receiving agency.

Criminal remedies

According to Article 226 of the current Criminal Code for infringement industrial property rights, people who infringe the right to a trademark shall be fined the following level:

• Fine from 50.000.000 VND to 500.000.000 VND or face a penalty of up to 03 years community sentence.
• Fine from 500.000.000 VND to 1.000.000.000 VND or imprisonment from 06 months to 03 years.

For legal entities that infringe upon trademark rights, the penalties are as follows:

• A fine of VND 500,000,000 to VND 2,000,000,000.
• A fine of VND 2,000,000,000 to VND 5,000,000,000 or suspension of operation for a period of 6 months to 2 years.
• A fine of VND 100,000,000 to VND 500,000,000, prohibition of business, prohibition of activities in certain fields, or prohibition of capital mobilization for 1 to 3 years.

In addition, online trademark infringers are required to take remedial measures, including:

• Publicly rectifying false information on mass media regarding infringements.
• Removing infringing trademarks from the online and digital environment.

Jurisdiction for punishment lies with district and provincial people’s courts following the provisions of the current criminal procedure law.

Some product images show signs of trademark infringement in Vietnam market

Intellectual Property Consultation Services by Viet An Law Firm

• Intellectual property rights registration representative
• Legal advice on trademark protection, transfer of trademark rights, and franchising
• Advice on how to handle trademark infringement
• Representing clients in requests to cease infringing acts
• Requesting competent state agencies to assess and conclude on acts of infringement of intellectual property rights
• Requesting competent state agencies to handle infringements
• Participating in litigation as lawyers to protect clients’ rights and interests related to intellectual property in competent courts

If you need to register a trademark or get advice on how to handle trademark infringement on the Internet, please contact Viet An Law Firm for the best advice and support.