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HOW TO HANDLE COUNTERFEITURE OF A REGISTERED TRADEMARK?

In this day and age, the presence of counterfeit goods on the market causes considerable confusion for consumers. By “borrowing” the influence of registered trademarks, individuals and organizations are engaging in trademark counterfeiting, more dangerously on a large scale with tightly linked networks to conceal their actions. Therefore, such actions must be handled promptly to minimize their negative impact on normal life and enhance the effectiveness of management by relevant authorities.

In the following article, Law Plus will provide our Valued Clients with signs of trademark counterfeiting and ways for owners and competent authorities to handle trademark counterfeiting.

I. WHAT IS TRADEMARK COUNTERFEITING?

A trademark is a sign used to distinguish goods and services of different organizations and individuals. According to Article 77 of Decree No. 65/2023/ND-CP, the term “counterfeit trademark goods” includes not only goods but also services.

According to Clause 2, Article 213 of Intellectual Property Law 2005, amended and supplemented in 2009, 2019, and 2022 (hereinafter referred to as “Intellectual Property Law”): “Counterfeit trademark goods are goods, packaging of goods bearing a label or sign or mark that contains signs identical with or confusingly similar to a trademark that is protected for such goods without the permission of the trademark owner.”

Trademark counterfeiting makes it difficult for consumers to distinguish genuine goods and services from counterfeit ones. This can lead to the purchase of low-quality products, affecting the purpose of use. Furthermore, trademark counterfeiting seriously impacts the reputation of the trademark owner. For example, the Market Management Agency discovered a network producing thousands of cans of counterfeit Ensure and Glucerna milk powder in Ho Chi Minh City and Binh Duong, directly affecting consumers’ health and the brands’ reputation.

II. FORMS OF HANDLING TRADEMARK COUNTERFEITING

The administrative and criminal legal framework for handling trademark counterfeiting violations is quite solid, aimed at preventing intellectual property law violations and protecting registered trademarks. Depending on the level of danger to society, the violation may be subject to administrative sanctions or criminal handling.

2.1. Administrative sanctions

Clause 2, Article 211 of Intellectual Property Law stipulates: “The Government shall specify acts of intellectual property rights infringement subject to administrative sanctions, forms, fines and sanctioning procedures.”

For the act of Manufacturing goods with counterfeit labels, packaging according to point dd, clause 7, Article 3 of Decree 98/2020/ND-CP
The minimum fine is 2.000.000 VND and the maximum fine is 50.000.000 VND, according to Article 12 of Decree 98/2020/ND-CP and clause 8, Article 3 of Decree 17/2022/ND-CP.

For the act of Trading goods with counterfeit labels, packaging according to point dd, clause 7, Article 3 of Decree 98/2020/ND-CP
The minimum fine is 1.000.000 VND and the maximum fine is 50.000.000 VND, according to Article 11 of Decree 98/2020/ND-CP and clause 7, Article 3 of Decree 17/2022/ND-CP.

In addition to the fines mentioned above, there are also double fines (in case the counterfeit goods are food, food additives, food preservatives, etc.), supplementary fines and measures to remedy the consequences.

Note: These fines apply to administrative violations committed by individuals. In case administrative violations are committed by organizations, fines are double the prescribed fine for individuals.

2.2. Criminal handling

Article 212 of Intellectual Property Law stipulates: “Individuals and commercial legal entities committing acts of intellectual property rights infringement that have all elements constituting a crime shall be prosecuted for criminal liability.”

The Criminal Code 2015, as amended and supplemented in 2017 (hereinafter referred to as the “Criminal Code”), provides for two crimes related to trademark counterfeiting, with the following sanctions:

(i) Crime of manufacturing and trading in counterfeit goods (Article 192 of Criminal Code)
The minimum fine is 20.000.000 VND, and the maximum fine is 1.000.000.000 VND. The minimum imprisonment term is 01 year, and the maximum is 15 years. Additional sanctions include prohibition from holding certain positions, practicing certain professions or doing certain jobs for 01 to 05 years, and confiscation of part or all of the property. Commercial legal entities committing this crime shall be penalized according to Clause 5, Article 192 Criminal Code.

(ii) Crime of infringing upon industrial property rights (Article 226 of Criminal Code)
The minimum fine is 20.000.000 VND, and the maximum fine is 1.000.000.000 VND. Non-custodial reform of up to 03 years. Imprisonment from 06 months to 03 years. Additional sanctions include prohibition from holding certain positions, practicing certain professions or doing certain jobs for 01 to 05 years. Commercial legal entities committing this crime shall be penalized according to Clause 4, Article 226 of Criminal Code.

III. WHAT SHOULD TRADEMARK OWNERS DO WHEN DETECTING COUNTERFEITURE OF TRADEMARK GOODS? 

According to Article 198 of.Intellectual Property Law, some measures that trademark owners.can take when they.detect their trademarks.being counterfeited include:

  • Applying technological measures.to protect rights, provide rights management information or apply.other technological measures to prevent.intellectual property rights infringement.
  • Requesting the organization or individual infringing.intellectual property rights to stop the infringement, remove and delete.infringing content on telecommunications networks.and the Internet, apologize, publicly correct, and compensate for damages.
  • Requesting competent state.agencies (Courts, Inspectorates, Market Management, Customs, Police, People’s Committees at all levels) to handle acts.of intellectual property rights infringement.according to the provisions of this Law and other relevant laws.
  • Filing a lawsuit with the court or.arbitration to protect their legitimate rights and interests.

Note:

The person requesting the handling of the.infringement must submit a request for handling.the infringement along with documents and evidence.to prove his/her request. The request for handling the infringement.must contain the main contents specified in Clause 1, Article 89 of Decree No. 65/2023/ND-CP. Additionally, organizations and individuals.suffering damage.due to acts of intellectual property rights infringement.or discovering acts of intellectual property rights infringement causing.damage to consumers or society have the right to request competent state agencies.to handle acts of intellectual property rights infringement.according to the provisions of Intellectual Property Law.and other relevant laws.

Counterfeiting a registered trademark is an act of intellectual property rights infringement under current law. Timely and strictly handling violations of the law on trademark counterfeiting helps protect the maximum legitimate rights and interests of protected trademark owners while ensuring social order and safety.

For any inquiries, please contact Law Plus via email at info@lawplus.vn or website, hotline 02862 779 399 / 0965 052 039 / 0966 008 030 (WhatsApp, Viber, Zalo).

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