Trademarks are not only a framework to create a competitive advantage in the market but also play a vital role in affirming the reputation of a business to consumers. Therefore, when the owners discover a trademark infringement, it needs to be assessed and resolved under the provisions of the law. In the article below, Viet An Law will present the regulations related to trademark infringement inspection in Vietnam.
Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
Decree No. 65/2023/ND-CP provides detailed regulations on industrial property, protection of industrial property rights, and management of plant varieties.
What is trademark infringement inspection?
Trademarks are signs that distinguish the goods and services of different organizations and individuals.
Trademark infringement inspection is the use of professional knowledge and expertise by organizations and individuals to evaluate and conclude issues related to intellectual property rights.
Why is it necessary to inspect trademark infringement?
Trademarks of individuals and businesses have been registered for protection at the National Office of Intellectual Property and have been granted a trademark registration certificate. However, in the course of business, a third party has used a trademark for products and services similar to their own trademark. At that time, the individual or organization cannot determine the degree of similarity, overlap, or similarity to the extent that it can cause confusion for consumers. Therefore, an inspection of trademark infringement must be performed to protect the owner.
Trademark infringement inspection aims to determine whether the subject under consideration meets the conditions to be considered a trademark infringement element or not.
Whether or not there is an overlap, equivalence, similarity, confusion, difficulty in distinguishing or copying between the object under consideration and the protected object
Determine damage value. Damages due to trademark infringement are actual physical and mental losses caused directly to the rights holder by the act of infringement. The level of damage is determined in accordance with the element of infringement of the rights of the subject of trademark ownership. Determining the level of damage is based on evidence of damage provided by the parties, including results of inspection requests and damage declarations, which clarify the basis for determining and calculating the level of damage.
Subjects have the right to request a trademark infringement inspection
Pursuant to Article 116 of Decree No. 65/2023/ND-CP, organizations and individuals have the right to request trademark ownership inspection as follows:
Organizations and individuals are required to handle infringements or complaints or denunciations about trademarks;
Other organizations and individuals with rights and interests related to disputes, infringements, complaints, and denunciations regarding trademark ownership;
Organizations and individuals have the right to personally or authorize other organizations and individuals to request industrial property inspection organizations or industrial property appraisers to perform inspections.
Principles for conducting trademark infringement inspection
Comply with the law, follow the inspection order and procedures;
Nonbias, truthfully, accurately, objectively, impartially and promptly;
Only make professional conclusions on issues within the required scope;
Responsible for the inspection conclusions;
The cost of inspection is determined according to the agreement between the person requesting the inspection and the inspection organization or individual.
Procedures for inspection of trademark rights infringement
Document showing the request for inspection (Decision to request inspection/ Declaration requesting inspection); including information about the requester/requester; object of inspection; purpose; content and other specific requirements regarding the inspection;
Documents, samples representing the subject of inspection (descriptive documents, photos, drawings, transaction contracts, advertising documents…, items, products, goods, packaging… containing /carrying object of inspection);
Industrial property inspection service contract;
Proof of payment of inspection fee;
Power of Attorney for Viet An Law (if the inspection application is submitted through a representative).
In addition, the application may contain other documents if necessary for the inspection (documents explaining the arguments of the parties involved; decisions to resolve similar cases of competent authorities; other useful information for review and evaluation during inspection; testing and measurement results…).
Where is the submission of the infringement inspection dossier?
Pursuant to Article 119 of Decree No. 65/2023/ND-CP stipulating the implementation of inspection as follows: “Industrial property and plant variety rights inspection can be conducted by one or several appraisers. Industrial property, rights to plant varieties implemented. A personal inspection is an inspection performed by an appraiser. Collective inspection is an inspection performed by two or more appraisers.”
Thus, the person requesting the inspection can send the inspection request to:
Institute of Intellectual Property Science.
Address: No. 21 – Alley 67 – Do Quang Street – Cau Giay District – Hanoi.
Currently, there is only the Institute of Intellectual Property Science under the Ministry of Science and Technology – the only public service unit in Vietnam, i.e. qualified to conduct trademark inspection activities. The conditions for practicing inspection of industrial property infringement are clearly stipulated in the Intellectual Property Law. In addition, appraisers also need to meet certain standard conditions.
Trademark inspection period
The normal trademark inspection period is 1 month, corresponding to the fee stated in the inspection service price list.
Process of trademark infringement inspection in Vietnam
Step 1: Rightholders request inspection choose the form and unit of inspection.
Step 2: The person with the right to request inspection prepares and submits documents to the inspection organization.
Step 3: The trademark inspection organization receives the dossier
Check and classify trademarks/Documents;
Record as is;
Basic fee charged for applications submitted in person;
Notification of receipt/ Issuance of receipt;
Prepare inspection documents;
Record the receipt book;
Hand over inspection documents to the inspection department;
Step 4: Accept inspection documents
When the agency hands over the inspection dossier to the specialized department, the following activities will be carried out here:
Check the format of the inspection dossier
Check the field, object, purpose, and content of the inspection
Evaluate the validity and appropriateness of the inspection request
Conclusion accepting or refusing the inspection
Notice of conclusion: Conclusion of inspection contract
This includes the following minimum contents:
Name and address of the organization or individual requesting the inspection;
Name and address of the inspection organization or inspector;
Content of request for inspection;
Relevant evidence, documents, and artifacts;
Time limit for returning inspection conclusions;
Rights and obligations of the parties;
Location and time of conducting the inspection;
Cost of inspection and payment method;
Acceptance and liquidation of contracts;
Liability to compensate for damage; dispute resolution.
Step 5: Carry out the inspection content
In this inspection step, individuals/organizations will perform information lookup and measurement activities; tests, and consultation.
Check the basis for arising/establishing the trademark related to the inspection content.
Research original information about related trademarks.
Check the effectiveness and determine the scope of protection.
Position the object under consideration.
Set up a formula to determine the object under consideration.
Compare and evaluate the objects under consideration according to the inspection content.
Summary of results.
Step 6: Process the inspection results and finish.
Build inspection products
Finalization of inspection fees
Handing over products, liquidating contracts
Process inspection dossiers, and specimens, and set up archived data.
Consulting trademark infringement service of Viet An Law
Advise customers on trademark infringement issues ;
Drafting dossiers requesting inspection of violations ;
Support businesses in preparing necessary records and documents for inspection requests;
On behalf of the enterprise, contact, receive inspection results, and work with competent professional agencies.
Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration, please contact us to receive the best support.
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