New law on IP rights enforcement implemented

On September 22 2006 the Vietnamese government issued Decree 105/2006/ND-CP on the enforcement of IP rights. A decree implementing the new law was published on October 6 2006 and entered into force on October 21 2006.

The new law provides welcome guidelines on, among other things, what constitutes an IP right infringement; how to determine the nature and seriousness of such an act; and how levels of damages will be assessed.

Highlights of the provisions relating to trademark enforcement include the following:

• Trademark rights may be enforced through civil, administrative and/or criminal actions. Civil remedies will be available to deal with acts of trademark infringement even if the infringement has been dealt with or is being dealt with by administrative or criminal measures. The competent state authority shall have the right to apply provisional, border or preventative measures where necessary.
  
  
• An element that infringes a mark can include a sign affixed to goods or their packaging; a means of providing a service; transaction documents; signboards; advertising material; and other business instruments which are identical or confusingly similar to a trademark being protected. The legal basis for determining an infringing element shall be the scope of trademark protection, including the trademark specimen and the list of goods and services mentioned in the registration certificate or the certificate of international registration of the trademark being protected in Vietnam.
  
  
• Under the new law, enforcement of a trademark is possible against:
  
  
  • identical or confusingly similar trademarks for identical goods/services;
    
    
  • identical or confusingly similar trademarks for similar goods/services;
    
    
  • identical or confusingly similar trademarks for goods/services that are related in function or use to those covered by the infringed mark and which go through the same distribution channels; and
    
    
  • identical or confusingly similar trademarks for any type of goods or services (including those that are neither identical nor similar nor related to the mark owner's goods or services) if the earlier trademark is well know in Vietnam and where such use is likely to cause confusion as to the source of goods or services, or the business affiliation or connection between the later user and the owner of the well-known trademark.
    
    
• Damages caused by the infringement of a trademark shall be the actual loss (both immaterial and moral) directly caused to the trademark holder. Actual loss will be based on, among other things, the following evidence: (i) the immaterial or moral loss is real and affects the aggrieved person; and (ii) the loss of income of the aggrieved person occurs as a direct result of the act of trademark infringement.

Le Hoai Duong, LÊ & LÊ, Hanoi