CIRCULAR No.825/2000/TT-BKHCNMT OF MAY 3, 2000 GUIDING THE IMPLEMENTATION OF DECREE No. 12/1999/ND-CP OF MARCH 6, 1999 ON SANCTIONING ADMINISTRATIVE VIOLATIONS IN THE DOMAIN OF INDUSTRIAL PROPERTY In furtherance of Article 23 of Decree No.12/1999/ND-CP of March 6, 1999 on sanctioning administrative violations in the domain of industrial property (the Decree for short), the Ministry of Science, Technology and Environment hereby guides a number of concrete points for the implementation of the Decree. I. OBJECTS AND PRINCIPLES OF SANCTIONS, APPLICATION OF RELATED REGULATIONS 1. Objects of sanctions Objects of sanctions for administrative violations in the domain of industrial property are stipulated in Clauses 2 and 3, Article 2 of the Decree and are subject to the stipulations in Article 5 of the Ordinance on Handling of Administrative Violations promulgated on July 6, 1995 (hereafter called the Ordinance for short). 1.1. Under these stipulations, all subjects gathering all the following conditions shall be sanctioned under the Decree: - Individuals aged full 16 years and older or organizations and other entities; - Committing any of the acts of administrative violation related to industrial property stipulated in Chapter 2 of the Decree (whether intentional or unintentional) and such act does not include elements constituting a crime; - The said act of administrative violation is committed on the Vietnamese territory; - The said act of administrative violation is committed in the statute of limitations provided for in Article 4 of the Decree. 1.2. Under the above stipulations, individuals aged from 14 to under 16 years who intentionally commit an act of administrative violation in industrial property in the above said locality and within the above said time limit shall also be sanctioned under the Decree. 1.3. Foreign individuals and organizations that commit acts of administrative violation related to industrial property in Vietnam shall also be sanctioned under the Decree, except otherwise provided for by the international agreement to which both Vietnam and the country of which this organization or individual bears the nationality have acceded to. In this case, the handling of the administrative violation shall comply with the above-said international agreement. 2. Principle of sanctioning The sanctioning of administrative violations in the domain of industrial property must comply with the stipulations and principles on sanctioning in Article 3 of the Ordinance and Article 3 of the Decree. When applying these principles, attention must be paid to the following issues: 2.1. Principle of right competence Only persons with competence stipulated in Chapter 3 of the Decree can issue a decision to sanction an administrative violation in the domain of industrial property with the form and level of sanction within their prescribed competence. It is not allowed to split a violation into several small violations or to group several small violations into a major violation with the aim of changing the sanctioning competence. 2.2. Principle of right object All objects that have committed acts of administrative violation in the domain of industrial property mentioned in Point 1 of this Circular shall be sanctioned under the Decree. All other objects that do not fall into the cases stated at that Point shall not be sanctioned under the Decree. One object that commits several acts of violation shall be sanctioned for each act. Many objects that commit together an act of violation shall each be sanctioned. 2.3. Principle of right extent The form and level of sanction against an administrative violation in the domain of industrial property must be compatible with the nature, seriousness and consequence of such act of violation. Nevertheless, when determining the form and level of sanction, the personal record of the violator and the aggravating or extenuating circumstances must also be considered in order to take an appropriate decision. 2.4. Principle of timeliness and thoroughness All organizations and individuals have the right and obligation to detect in time acts of administrative violation in the domain of industrial property. These findings must be notified to the persons competent to impose administrative sanctions. When receiving the notice or when requested to handle an administrative violation in the domain of industrial property, the competent person must immediately proceed with necessary procedures to ensure that such a violation be stopped immediately and its consequences be overcome. 2.5. Principle of conformity with procedures The sanctioning of administrative violations in the domain of industrial property must be effected according to the procedures stipulated in Articles from 45 to 56 of the Ordinance and Articles from 14 to 20 of the Decree. 3. Application of prescriptions of the legislation on industrial property When imposing a sanction against administrative violations in the domain of industrial property, the person with sanctioning competence shall not only have to base himself/herself on the provisions of the Ordinance and the Decree, but also on the stipulations on the contents and procedures of protecting the industrial property rights stipulated in Chapter 2, Part VI of the 1995 Civil Code as well as related provisions mentioned in Decree No. 63/CP of October 24, 1996 of the Government providing in detail for the industrial property (hereafter called Decree No. 63/CP for short), Circular No. 3055/TT-SHCN of December 31, 1996 and this Circular of the Ministry of Science, Technology and Environment. II. DETERMINING ACTS OF VIOLATION RELATED TO INDUSTRIAL PROPERTY RIGHTS 4. Scope of guidance Articles 5, 6, 7, 8 and 9 of Chapter 2 of the Decree provide for five types of acts of administrative violation in the domain of industrial property. These stipulations are clear enough for the implementation and application. The following are only further guidance and explanation for determining different types of violation directly related to the specific industrial property right (Articles 5, 6 and 9). 5. Acts of violation related to the process of establishing and exercising the industrial property rights and filling in the procedures for granting permits (or registration) for industrial property representation service activities (Article 5 of the Decree) The common characteristic of this type of violation is that the violator deliberately uses dishonest measures aimed at misusing the regime of protection of industrial property rights for personal benefits or to conceal other acts of violation of law. Following are some examples: 5.1. Act of carrying out the procedures to establish and exercise industrial property rights to evade or conduct acts in other domains prohibited or restricted by law (Article 5.1a). The following acts fall into this type of violation: on the pretext of the payment of fees when registering industrial property rights in foreign countries or the payment for foreign licenses to transfer money abroad, or create false payments under the cover of transfer or assignment of industrial property rights, etc. 5.2. Act of carrying out the procedures for establishing or exercising industrial property rights in order to conduct unfair competition, monopoly, unlawful market manipulation, destroying the industrial property objects, restricting or narrowing the scope of protection of industrial property rights of others, misusing or lowering the commercial prestige of other production and business establishments (Article 5.1.b.). The following acts belong to this type of violation: a/ Misusing the registration of industrial property rights to complain or denounce groundlessly aimed at impeding production and business activities of others; b/ Expanding groundlessly the scope of protection when filling in procedures for establishing industrial property rights by intentionally not supplying the information of one?s knowledge or the information that one has the obligation to know to the competent agency, leading to incorrect determination of the known situation related to the object of protection, thereby to control and impede production and business activities of others; c/ Buying industrial property rights (e.g. license) aimed at nullifying the competitiveness of others and eventually seizing monopoly in controlling the market; d/ Filling in procedures for registration of industrial property rights not for use but to impede others from producing or doing business in relation to the registered object... 6. Acts of violating the stipulations on indications related to industrial property (Article 6 of the Decree). These acts violate the stipulations in Article 54 and Article 66 of Decree No. 63/CP and cause consequences that damage the interests of consumers. 6.1. False indications on the industrial property owner (Article 6.1.a). Article 66 of Decree No. 63/CP provides that only the industrial property object owner (industrial property owner) can use indications and only within the time-limit of protection can indications be used to indicate that the product is protected or under his/her/its exclusive right (including symbolized indications) on the products while making advertisement or during transactions for business purpose. If such indications are used when one is not an industrial property owner, it is a violation of this type. To determine whether an act is a violation of this type or not, it is necessary to identify the industrial property owner as guided in Point 7.2 of this Circular. 6.2. False indication on products or services bearing elements under protection (Article 6.1.b). The following acts belong to this type of violation: Printing on goods or goods packages the words "Registered trademark" or "This is a protected trademark" or "the exclusive trademark of..." including the symbol â (which is widely used to indicate that the trademark has been registered); or other similar indications to claim that such goods are protected as inventions, utility solutions or industrial designs including the printing of the word "P accompanied with numerals" (P being the symbol used widely to indicate that the product has been granted an invention patent) which in fact is not the case. To determine whether an act is a violation of this type or not, it is necessary to identify the object of protection according to the guidance at Point 7.2 of this Circular. 6.3. False indication that the products are manufactured or services are provided under license (Article 6.1.d) The printing on the products the words "manufactured under license of..." or "provided under license of" or terms with similar meaning whether in Vietnamese or in foreign languages, while in fact it is not the case, shall be regarded as a violation of this type. 6.4. Failing to indicate that the product is manufactured or the service is provided under license (Article 6.2.a) If a product is manufactured under industrial property license (also if it is manufactured under the production license of another person and carries the use trademark under the license of the person who authorizes the manufacture), or if the service is provided under an industrial property license but on the corresponding product or the corresponding service there is no indication of this, this failure shall be regarded as a violation of Article 66 of Decree No. 63/CP and shall be classified as a violation of this type. 6.5. Failing to indicate or unclearly and/or inadequately indicate on the product that it is "Made in Vietnam" for those products that must bear such indication (Article 6.2b). Under Article 66 of Decree No. 63/CP, if the product is manufactured in Vietnam under a foreign license or if the product is manufactured in Vietnam and bears a trademark that may cause the misunderstanding that the product comes from a foreign country or of foreign origin, the inscription "Made in Vietnam" must be written in full, not in abbreviation. Failing to make such an inscription shall be considered as a violation of this type. 7. Acts of violating the regulations on protection of industrial property rights (Article 9 of the Decree) Violations described in Article 9 of the Decree are acts of violating the rights regarding inventions, utility solutions, industrial designs, trademarks, appellations of origin of goods under protection. In application of the stipulations at this Article, the person with sanctioning competence must clearly determine the legal status related to the protected object, more concretely: who is the owner of the industrial property, the object of protection, the scope of protection, the time-limit of protection and who is permitted to use the protected object without being considered infringing upon the protected rights. To properly determine the above contents, it is necessary to grasp firmly and abide by the stipulations in Chapter 4 and Chapter 5 (Articles from 33 to 54) of Decree No. 63/CP. Following are some additional explanations and guidance related to this type of violation: 7.1. General principle to determine that an act has infringed upon industrial property rights: To affirm that an act has infringed upon industrial property rights, there must be all the following factors: - The said act is the execution (performance) of one of the acts of using the object of industrial property (invention, utility solution, industrial design, trademark, appellations of origin of goods) mentioned in Points a, b, c, d, e, f, g, h, i, Clause 1, Article 9 of the Decree; - The performer of such act is not the industrial property owner (the method of determining the industrial property owner is mentioned in Point 7.2 of this Circular); in case the used object is an invention or a utility solution or an industrial design, the performer of the above act of using is neither the industrial property owner nor the prior-user of such invention, utility solution or industrial design (prior-user is stipulated in Article 50 of Decree No. 63/CP). - The above act is performed in the protection time-limit inscribed on the title of protection issued to the industrial property owner and is performed in Vietnam. 7.2. Method of determining the industrial property owner Under Clause 2 and Clause 3, Article 1 of the Decree, the "industrial property owner" may be one of the three following entities with regard to industrial property rights: owner of the title of protection, owner of the international registration of the trademark and the lawful transferee of industrial property rights. The determination of the industrial property owner shall be made on the following bases: a/ "Owner of the title of protection" is an organization or individual that is granted a title of protection, more concretely: this individual or organization is recorded as "title owner" in the patent of invention, patent of utility solution, patent of industrial design or is recorded as "certificate owner" in the certificate of registered trademark, certificate of the right to use the appellation of origin of goods, certificate of industrial design (granted under the 1989 Ordinance on Protection of Industrial Property Rights). b/ "International trademark registration owner" is a foreign organization or individual that has internationally registered the trademark under the Madrid Agreement and such registration has been accepted in Vietnam; more concretely, the organization or individual has been registered as owner of registration in the announcement of the International Office of the World Intellectual Property Organization (WIPO) in which Vietnam is indicated and, with certification by the Industrial Property Office that such registration has been accepted by Vietnam. c/ "Legal transferee of industrial property rights" is an organization or individual that has been legally assigned the property right over the invention, utility solution, industrial design, trademark. More concretely, such organization or individual has been recorded as "Receiving party" in the certificate of registration of the contract on transfer of ownership right over the industrial property object granted by the National Office of Industrial Property. d/ The "legal transferee of industrial property right" may also be the organization or individual that has been legally transferred the use right (license) of the invention, utility solution, industrial design, trademark. More concretely, this organization or individual has been listed as "Receiving party" in the certificate of the license contract registration granted by the National Office of Industrial Property (including non-voluntary license). The titles of protection (patent of invention, patent of utility solution, patent of industrial design, certificate of trademark registration, certificate of the right to use the appellation of origin of goods, certificate of industrial design) and certificates of registration of contract on transfer of industrial property rights are only valid as grounds to determine the industrial property owner as well as the scope and object of industrial property rights in application of the Decree so long as these papers are still within the effective time limit. 7.3. Method of determining violation elements: Violation element (Clause 4, Article 1 of the Decree) is the concrete manifestation of the result of the acts of infringing upon the right over an invention, utility solution, industrial design, trademark, appellation of origin of goods, and is the most important ground to determine such an act. a/ Violation elements against inventions or utility solutions may come under one of the following three forms: - Product or part of product is identical to a product or part of product being protected as an invention or utility solution; - Product-manufacturing process is identical to product- manufacturing process which is being protected as an invention or utility solution; - Product or part of product is being manufactured according to a process identical to the process being protected as an invention or utility solution. To determine the identity between the infringing product and the protected product, between the infringing process and the protected process, it is necessary to compare all the technical specifications of the product/process with the specifications of those being protected and only if all these technical specifications of the infringing product/process are present in the grouping of, technical specifications of the protected product/process, can such a conclusion as above be made. The comparison must be based on the description of the invention and the description of utility solution and the request for protection of the invention and the utility solution attached to the invention patent and the utility solution patent which have determined the technical specifications of the product or process under protection. b/ The violation elements against an industrial design is a product, the outer appearance of which or of a part of which is identical to an industrial design being protected, or identical to the basic shaping components of the industrial design being protected. To determine if a product is a violation element against the industrial design or not, a comparison must be made between all shaping features (figure, mass, colors) of the product or part of the product and the shaping features of the industrial design in the industrial design patent (or the certificate of registration of industrial design granted under the 1989 Ordinance on Protection of Industrial Property Rights). Only when all the features of the whole product or part of the product are identical to the shaping features mentioned in the industrial design patent or to the features of the substantial shaping component of the industrial design mentioned in the industrial design patent can it be affirmed that this product is a violation element against the industrial design. c/

Thông tư 825/2000/TT-BKHCNMT