Court rulings on application of civil remedies in Vietnam (Article 202 of Vietnam Intellectual Property Law)
The Court rulings in a civil lawsuit in connection with IPR infringement in Vietnam is stipulated in Article 202 of IP Law of Vietnam. More specifically, Vietnamese Courts shall apply the following civil remedies in handling organizations and individuals that have committed acts of infringing upon intellectual property rights:
1. Compelling the termination of infringing acts;
2. Compelling the public apology and rectification;
3. Compelling the performance of civil obligations;
4. Compelling the payment of damages;
5. Compelling destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and means used largely for the production or trading of intellectual property right-infringing goods, provided that such destruction, distribution or use does not affect the exploitation of rights by intellectual property right holders
Vietnamese Courts may apply on a case-by-case basis one or several or all civil remedies at the same time in the course of handling a civil case on intellectual property rights.
1. Compelling the termination of infringing acts
1.1. At the request of lawsuit initiators, Vietnamese Courts shall compel persons who commit infringements of IPRs in Vietnam to immediately terminate their infringements (for example, compelling infringers of copyright to terminate the reproduction of copyrighted works without authors’ or copyright holders’ authority; compelling persons committing infringements of industrial property rights to marks to terminate the use of signs identical to protected marks for goods or services identical to those on lists registered together with these marks).
1.2. Vietnamese Courts may rule on compelling persons committing infringements of IPRs to terminate their infringements in their judgments or rulings on the application of provisional urgent measures under Article 206 and Clause 2, Article 207 of Vietnam IP Law, and Clause 12, Article 102 and Article 115 of Vietnam Civil Procedure Code.
1.3. In their judgments or rulings, Vietnamese Courts shall specifically state infringed IPR and infringements of these rights. At the same time, Vietnamese Courts shall clearly prescribe things that must be done or may not be done by persons committing IPR infringements in order to strictly enforce these judgments or rulings.
1.4. Under Clause 1, Article 123 of Vietnam Civil Procedure Code, rulings or decisions on application of provisional urgent measures take effect immediately. Therefore, if persons against whom provisional urgent measures of compelling the termination of infringements of IPRs are applied complain about rulings or decisions on application of these measures, they shall still abide by these rulings or decisions within the time limit for lodging and settling complaints specified in Articles 124 and 125 of the Civil Procedure Code.
If Vietnamese courts rule in their judgments on the termination of IPR infringements and there are appeals or protests against these judgments, the provisions of Clause 1, Article 254 of the Civil Procedure Code, which stipulate “for appealed or protested parts of first-instance judgments or rulings the enforcement will be postponed, unless the law requires the immediate enforcement,” will apply.
Therefore, it is necessary to base on specific provisions of legal documents requiring the immediate enforcement of appealed or protested parts of first-instance judgments or rulings and the above provisions of Vietnam Civil Procedure Code to declare in judgments or rulings that “rulings on compelling the termination of infringements of intellectual property rights must be immediately enforced despite of appeals or protests.
2. Compelling public apology and correction concerning IPR infringement in Vietnam
2.1. Courts shall rule in their judgments or rulings on compelling persons who commit infringements of IPR to make public apologies or corrections in order to restore the honor, dignity, prestige or reputation of holders of infringed IPR.
For example: An infringer of copyright has modified, mutilated or distorted a work, misrepresenting the author to the public in whatever form prejudicial to the author’s honor and reputation.
The compulsion of public apology and correction aims to protect the moral rights of authors specified in Clause 4, Article 19 of the Vietnam IP Law (protection of integrity of works) and restore the honor and reputation of authors.
If involved parties can reach agreement on contents and modes of making public apologies and corrections as well as expenses for making these apologies and corrections, provided that their agreements are not contrary to law and social ethics, Vietnamese courts shall recognize their agreements.
2.2. If involved parties cannot reach agreement on contents and modes of making public apologies and corrections as well as expenses therefor, courts shall base themselves on the nature, severity and consequences of infringements to rule on contents of and time volume for public apologies and corrections as well as expenses therefor. Public apology and correction may be made directly at head offices of aggrieved parties or published on dailies of central agencies or newspapers of localities where aggrieved parties are headquartered for three consecutive issues.
3. Compelling the performance of civil obligations
Courts shall rule on compelling the performance of civil obligations by persons who commit acts breaching their obligations toward IPR holders [failing to perform or improperly perform obligations agreed upon in contracts and bearing civil liability before intellectual property rights holders (obligees)].
When this measure is applied, the relevant provisions of Sections 2 and 3, Chapter XVII, Part Three of the 2005 Civil Code must be based on.
4. Compelling the payment of compensations for damage
4.1. Persons committing infringements of IPR which cause material damage and spiritual damage to IPR holders shall pay compensations for such damage.
The responsibility of persons committing infringements of IPR to pay compensations for damage caused is determined on the bases specified in Clause 1, Article 604 of the Civil Code and the guidance in Section 1, Part I of Resolution No. 03/2006/NQ-HDTP of July 8, 2006, of the Judges’ Council of the Supreme People’s Court, guiding the application of a number of provisions of the 2005 Civil Code on payment of compensations for damage outside contracts.
4.2. Since the Civil Code and the Intellectual Property Law stipulate different principles for payment of compensations for damage, determination of damage and modes of payment of compensations for damage, the Intellectual Property Law stipulates in Clause 2, Article 5 that the provisions of Articles 204 and 205 of this Law, Articles 16, 17, 18, 19 and 20 of Decree No. 105/2006/ND-CP and the guidance in Section I, Part A of this Joint Circular must be applied to settling claims for compensations for damage
5. Compelling the destruction, distribution or use for non-commercial purposes of IPR infringing goods, and raw materials, materials and means used largely for the production or trading thereof, provided that such destruction, distribution or use does not affect the exploitation of rights by IPR holders.
5.1. Courts shall consider and rule on compelling the destruction, distribution or use for non-commercial purposes of above goods, raw materials, materials and means, regardless of whether or not rights holders so request.
5.2. The compulsion of destruction, distribution or use for non-commercial purposes must be based on the provisions of Clause 5, Article 202 of Vietnam IP Law, and Articles 30 and 31 of Decree No. 105/2006/ND-CP.
For example: Company X illegally affixed Company A’s soup seasoning (monosodium glutamate) mark “AJINOMOTO”, which sells well on the market, on its soup seasoning products for sale. Company A instituted a lawsuit against Company X, requesting a court to order Company X to terminate the act of illegally using the mark “AJINOMOTO,” destroy unused product labels printed with the mark “AJINOMOTO” and handle the volume of soup seasoning products bearing the counterfeit mark. The court based itself on the provisions of Clause 5, Article 202 of the Intellectual Property Law and Article 30 of Decree No. 105/2006/ND-CP to rule on ordering Company A to destroy confiscated labels bearing the counterfeit mark and remove the word mark “AJINOMOTO” from soup seasoning products and distributing infringing soup seasoning products to an orphanage of district B for use for the humanitarian purpose.
5.3. When compelling the destruction of IPR-infringing goods, and raw materials, materials and means used largely for the production or trading thereof, Vietnamese courts shall rule on the responsibility of persons committing IPR infringements to bear expenses for the destruction.
Question & Answer for Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of April 3, 2008, Guiding the Application of a Number of Legal Provisions to the Settlement of Disputes over intellectual Property Rights at People’s Courts
Question 1: Disputes over intellectual property rights which fall under the handling competence of people’s courts in Vietnam
- Which copyright disputes in Vietnam can be settled by the Vietnamese Courts?
- Which related right disputes in Vietnam can be settled by the Vietnamese Courts?
- Which industrial property right disputes in Vietnam can be settled by the Vietnamese Courts?
Question 2: Right to institute civil lawsuits on IPR in Vietnam
- Could you tell us who has right to institute civil lawsuits over copyright or related rights in Vietnam?
- Could you tell us who has right to institute civil lawsuits over industrial property rights in Vietnam?
Question 3: Conditions on institution of civil lawsuits over intellectual property rights in Vietnam
- Could you tell us conditions on institution of a civil lawsuit over copyright or related rights in Vietnam?
- Could you tell us conditions on institution of a civil lawsuit over industrial property rights in Vietnam?
Question 4: Application of law: IP Law of Vietnam or other Laws?
- What law shall be applied if there is a difference between Vietnam IP Law and other laws?
- Application of domestic legal documents in Vietnam
- Application of International Treaties
Question 6: Intellectual property assessment in Vietnam – Vietnam Intellectual property assessment
- How can the concerned parties in a civil proceedings request Intellectual property assessment in Vietnam?
Question 7: Claims for compensations for damage upon infringing Intellectual Property Rights in Vietnam
- If we file a civil lawsuit in Vietnam concerning IPR infringement, how can we request the Vietnamese Court to award a compensatory damage?
- How can the Vietnamese Courts determine the losses in business opportunities in an IPR related lawsuit?
Question 8: Bases for determination of compensations to be paid for damage caused by infringements of IPRs in Vietnam
- How can the Vietnamese courts determine the compensable damages caused by IPR infringement in Vietnam?
- How can the Vietnamese Court determine the spiritual damage that the infringer must indemnify the IPR holder in an IPR related lawsuit?
Question 9: Provisional urgent measures in Vietnam
- Who has rights to request provisional urgent measures (injunctive relief) under civil measure in Vietnam?
- What injunctive relief (provisional urgent measures) can be applied under civil measure in Vietnam?
- Whether the requester of provisional urgent measure in Vietnam has to deposit a security?
Question 10: The right and burden of proof of involved parties in a civil proceedings in Vietnam
Question 11: Court rulings on application of civil remedies in Vietnam (Article 202 of Vietnam Intellectual Property Law)
Question 12: Coordination in settling IPR disputes