Guidelines for People's Court in trademark matters to be revealed


The Supreme People's Court, the Supreme People's Procuracy and the Ministry of Science and Technology are drafting a joint circular providing guidelines to the People's Court on the application of certain provisions of the Law on Intellectual Property IP Law (IP Law). The aim is to ensure appropriate and harmonized application of the law by the People's Court.

Some highlights of the provisions relating to trademark rights include the following:

  • When filing a trademark suit with the court, the petitioner has the burden of providing evidence supporting the existence of its rights and the scope of the infringement.

  • The following documents and exhibits shall be considered as evidence supporting a claim of infringement of trademark rights:

    • original or legitimate copies of the relevant descriptions, samples or exhibits reflecting the trademark rights;

    • samples, exhibits (as relevant) and photos of objects considered to infringe the trademark rights;

    • comparisons between the alleged infringing objects and legitimate products;

    • minutes and testimonies proving that the acts complained of infringe the trademark rights; and

    • other samples, exhibits and documents.

  • The acts of infringement of trademark rights are established where all the following conditions are satisfied:

    • The issues under consideration relate to the protection of trademark rights in accordance with the provisions of the IP Law;

    • There are infringement elements in the issues under consideration;

    • The person performing the alleged infringing acts is not the holder of the relevant trademark rights, nor a person permitted by law or by competent authorities to use the mark in accordance with the IP Law; and

    • The alleged infringing acts occurred in Vietnam (infringing online acts occurring outside of Vietnam may be considered if they targeted consumers in Vietnam).

  • An assessment of infringement should include the following considerations:

    • Elements that may infringe trademark rights include signs on goods, packaging of goods, means for supplying services, signboards, means of advertisement and other means of business, which are identical or confusingly similar to the protected marks.

    • The court should base its analysis of infringement on the mark models and lists of goods/services as determined in the national or international certificate of registration.

    • To determine if a suspected sign infringes a trademark right, such sign should be compared with the marks and, at the same time, the goods/services bearing such sign should be compared with the protected goods/services.

  • Where the petitioner seeks compensation, it must prove the actual loss suffered and the basis for determining the calculation of the compensation.

Duong Le Hoai, LÊ & LÊ, Hanoi

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