Circular No. 825/2000/TT-BKHCNMT guiding the implementation of Decree No. 12/1999/NĐ-CP dated March 6, 1999 on administrative penalties for violations in the field of intellectual property

CIRCULAR
Guidelines for Implementing Decree No. 12/1999/NĐ-CP dated March 6, 1999 on Administrative Sanctions for Violations in the Field of Industrial Property
Implementing Article 23 of Decree No. 12/1999/NĐ-CP dated March 6, 1999 on Administrative Sanctions for Violations in the Field of Industrial Property (hereinafter referred to as "the Decree"), the Ministry of Science, Technology and Environment provides specific guidance on certain points for implementing the Decree.

I. SUBJECTS OF SANCTION; APPLICATION OF RELATED PROVISIONS

1. Subjects of Sanction

The subjects of administrative sanctions in the field of industrial property are defined in Clauses 2 and 3 of Article 2 of the Decree and must comply with the provisions of Article 5 of the Administrative Violation Handling Ordinance dated July 6, 1995 (hereinafter referred to as "the Ordinance").

1.1. According to these provisions, all subjects meeting the following conditions shall be sanctioned under the Decree:

- Individuals aged 16 years or older or organizations and other subjects;

- Committing one of the administrative violations related to industrial property as stipulated in Chapter 2 of the Decree (regardless of whether such actions are intentional or unintentional) and the act does not constitute a criminal offense;

- The administrative violation mentioned above is committed within the territory of Vietnam;

- The administrative violation mentioned above is committed within the time limit prescribed in Article 4 of the Decree.

1.2. According to the aforementioned provisions, individuals aged between 14 and under 16 years who intentionally commit administrative violations related to industrial property at the location and during the period mentioned above shall also be sanctioned under the Decree.

1.3. Foreign individuals and organizations committing administrative violations related to industrial property in Vietnam shall also be sanctioned under the Decree, except where international treaties to which both Vietnam and the country of nationality of the organization or individual are parties provide otherwise. In such cases, the handling of administrative violations shall be carried out according to the said international treaty.

2. Principles of Penalty Application

Administrative sanctions in the field of industrial property must comply with the provisions and principles of sanctioning set forth in Article 3 of the Ordinance and Article 3 of the Decree. When applying these principles, the following issues should be noted.

2.1. Principle of Proper Authority

Only those persons with authority as specified in Chapter 3 of the Decree may issue decisions on administrative sanctions in the field of industrial property within the scope of their jurisdiction. It is not permitted to divide one violation into several minor violations or combine several minor violations into one major violation in order to change the authority to impose sanctions.

2.2. Principle of Proper Subject

All subjects who have committed administrative violations in the field of industrial property as stated in Point 1 of this Circular shall be sanctioned under the Decree. Those subjects not falling under the circumstances stated in that point shall not be sanctioned under the Decree.

A subject committing multiple violations shall be sanctioned for each individual violation. Multiple subjects jointly committing one violation shall each be sanctioned.

2.3. Principle of Proper Degree

The form and degree of administrative sanctions in the field of industrial property must be commensurate with the nature, degree, and consequences of the violation. However, when determining the form and level of punishment, additional consideration must be given to personal circumstances and aggravating or mitigating factors to make appropriate decisions.

2.4. Principle of Timeliness and Thoroughness

Every organization and individual has the right and obligation to promptly identify administrative violations in the field of industrial property. Such discoveries must be reported to those authorized to impose administrative sanctions. Upon receiving reports or requests to handle administrative violations in the field of industrial property, those authorized must immediately proceed with necessary procedures to ensure the immediate cessation of the violation and remediation of its consequences.

2.5. Principle of Proper Procedure

Administrative sanctions in the field of industrial property must be conducted in accordance with the procedures prescribed in Articles 45 to 56 of the Ordinance and Articles 14 to 20 of the Decree.

3. Application of Legal Provisions on Industrial Property Rights

When implementing administrative sanctions in the field of industrial property, those authorized to impose sanctions must base themselves not only on the provisions of the Ordinance and the Decree but also on the provisions regarding the content and procedures for protecting industrial property rights as stipulated in Chapter 2, Part VI of the Civil Code 1995, as well as other relevant provisions set forth in Government Decree No. 63/CP dated October 24, 1996 detailing industrial property (hereinafter referred to as "Government Decree No. 63/CP"), Circular No. 3055/TT-SHCN dated December 31, 1996, and this Circular of the Ministry of Science, Technology and Environment.

II. DETERMINATION OF VIOLATIONS RELATED TO INDUSTRIAL PROPERTY RIGHTS

4. Scope of Guidance

Articles 5, 6, 7, 8, and 9 of Chapter 2 of the Decree stipulate five types of administrative violations in the field of industrial property. These provisions are clear enough for implementation and application. Below, further guidance and explanation will be provided on the determination of violations directly related to specific industrial property rights (Articles 5, 6, and 9).

5. Type of Violation Related to the Process of Establishing, Exercising Industrial Property Rights, and Processing Permits (or Registration) for Intellectual Property Service Representation Activities (Article 5 of the Decree).

The common characteristic of this type of violation is that the violator intentionally uses dishonest measures to take advantage of the protection system for industrial property rights for profit or to conceal other illegal acts. Below are some manifestations of violations belonging to this category.

5.1. Acts of conducting procedures to establish and exercise industrial property rights to evade or carry out actions in other fields prohibited or restricted by law (Article 5.1.a of the Decree). The following acts fall under this type of violation: using the pretext of having to pay fees for registering industrial property rights abroad or paying foreign license fees to transfer funds abroad; or creating false transactions under the guise of transferring or assigning industrial property rights, etc.

5.2. Acts of conducting procedures to establish rights, exercising industrial property rights with the purpose of unfair competition, monopoly, illegal market control, eliminating industrial property objects, restricting or narrowing the scope of protection of others' industrial property rights, exploiting or lowering the commercial reputation of other production and business establishments (Article 5.1.b). The following acts fall under this type of violation:

a. Exploiting the registration of industrial property rights to make unfounded complaints or accusations aimed at hindering the production and business activities of others;

b. Unfoundedly expanding the scope of protection when conducting procedures to establish industrial property rights by intentionally not providing information that one knows or is obligated to know to the competent authority, leading to incorrect determination regarding known circumstances related to the protected object, thereby controlling and hindering the production and business activities of others;

c. Purchasing industrial property rights (such as licenses) with the aim of eliminating others' competitive capabilities to eventually achieve market monopoly control;

d. Conducting registration procedures for industrial property rights not for the purpose of use but solely to prevent others from producing or doing business related to the registered object...

6. Type of violation concerning regulations on indications related to industrial property (Article 6 of the Decree).

This type of violation contravenes the provisions of Article 54 and Article 66 of Decree No. 63/CP and causes consequences affecting consumer interests.

6.1. Acts of misleading about the owner of industrial property (Article 6.1.a)

Article 66 of Decree No. 63/CP stipulates that only the owner of the industrial property object (industrial property owner) and within the protection period may indicate that the product is protected or falls under their exclusive right (including indication in the form of symbols) on the product, in advertising, or in transactions for business purposes. If it is not the industrial property owner and such an indication is made, then making such an indication falls under this type of violation.

To determine whether an act constitutes this type of violation, it is necessary to identify the industrial property owner according to the guidance provided in Point 7.2 of this Circular.

6.2. Acts of misleading about products, services containing protected elements (Article 6.1.b)

The following acts fall under this type of violation:

Printing on goods or packaging phrases such as "registered trademark," "that trademark is protected," or "that trademark belongs exclusively to...," including printing the symbol õ (a widely used symbol indicating that a trademark has been registered); or printing similar indications on products stating that the product is a protected invention, utility model, design, including printing the symbol "P followed by numbers" (a widely used symbol indicating that a patent has been granted)... but in reality, it is not so.

To determine whether an act constitutes this type of violation, it is necessary to identify the protected object according to the guidance provided in Point 7.2 of this Circular.

6.3. Acts of misleading about products, services being produced, performed under license (Article 6.1.d)

Indicating on the product phrases such as "produced under license of...," "licensed by...," or similar phrases, regardless of whether in Vietnamese or foreign languages, while in reality, it is not so, is considered to be implementing the above violation.

6.4. Acts of failing to indicate that products, services are produced, performed under license (Article 6.2.a)

If a product is produced under an industrial property license (including cases where the product is produced under another person's manufacturing permit and bears a trademark used under license from the permitting party), or if a service is performed under an industrial property license, but there is no indication of this on the product or service delivery means, the failure to make such an indication is considered a violation of Article 66 of Decree No. 63/CP and is classified as this type of violation.

6.5. Acts of failing to clearly and fully indicate "Made in Vietnam" for cases where such indication is mandatory (Article 6.2.b)

According to Article 66 of Decree No. 63/CP, if a product manufactured in Vietnam under a foreign license or if a product bearing a trademark causing confusion that it is foreign-made or of foreign origin is manufactured in Vietnam, it must be clearly indicated as "Made in Vietnam" without abbreviation. If such an indication is not made, it is considered a violation of this type.

7. Violations concerning the protection of industrial property rights (Article 9 of the Decree)

Violations specified in Article 9 of the Decree are acts infringing upon rights over protected inventions, utility models, designs, trademarks, and geographical indications. To apply the provisions of this Article, the competent authority imposing penalties must clearly determine the legal status related to the protected object, specifically identifying: who is the industrial property owner, what is the protected object, the scope of protection, the duration of protection, and who is authorized to use the protected object without being considered an infringer. To accurately determine these contents, it is necessary to thoroughly understand and comply with the provisions of Chapters 4 and 5 (Articles 33 to 54) of Decree No. 63/CP. Below are some additional explanations and guidelines related to this type of violation:

7.1. General principle for determining an act of infringing industrial property rights

To affirm that an act is an infringement of industrial property rights, the following bases must be present:

- The act mentioned above is the implementation (conducting) of one of the acts of using industrial property objects (inventions, utility models, designs, trademarks, geographical indications) listed in Points a), b), c), d), e), g), h), i), k) Clause 1 of Article 9 of the Decree;

- The person carrying out the aforementioned act is not the industrial property owner (the method for determining the industrial property owner is provided in Point 7.2 of this Circular); in cases where the object being used is an invention, utility solution, or industrial design, the person carrying out the aforementioned act is not only not the industrial property owner but also not the prior user of the invention, utility solution, or industrial design (prior users are defined in Article 50 of Decree 63/CP).

- The aforementioned act is carried out within the protection period recorded on the Industrial Property Right Certificate issued to the industrial property owner and is implemented in Vietnam.

7. 2. Method for Determining the Industrial Property Owner

According to Clause 2 and Clause 3 of Article 1 of the Decree, "industrial property owner" may be one of the three subjects below with respect to industrial property rights: the certificate holder, the international trademark registration owner, and the lawful transferee of industrial property rights. The determination of the industrial property owner shall be conducted based on the following grounds:

a. "Certificate Holder" is an organization or individual granted an Industrial Property Right Certificate; specifically, an organization or individual named as "Owner" in the Invention Patent Certificate, Utility Solution Patent Certificate, Design Patent Certificate, or named as "Owner" in the Trademark Registration Certificate, Geographical Indication Registration Certificate, or Design Registration Certificate (issued under the Law on Protection of Industrial Property Rights in 1989).

b. "International Trademark Registration Owner" is an organization or individual from abroad that has registered internationally for trademarks according to the Madrid Agreement and such registration is accepted in Vietnam; specifically, an organization or individual named as the registrant in the publication of the World Intellectual Property Organization's International Bureau (WIPO), which includes a designation of Vietnam and confirmed by the National Office of Intellectual Property that such registration is accepted by Vietnam.

c. "Lawful Transferee of Industrial Property Rights" is an organization or individual legally transferred ownership rights over inventions, utility solutions, designs, trademarks; specifically, an organization or individual named as "Recipient" in the Registration Certificate of the Transfer Contract of Industrial Property Rights issued by the National Office of Intellectual Property.

d. "Lawful Transferee of Industrial Property Rights" is also an organization or individual legally transferred usage rights (license) over inventions, utility solutions, designs, trademarks; specifically, an organization or individual named as "Recipient" in the Registration Certificate of the License Contract issued by the National Office of Intellectual Property (including cases where the license is a non-voluntary license).

The Industrial Property Right Certificates (Invention Patent Certificate, Utility Solution Patent Certificate, Design Patent Certificate, Trademark Registration Certificate, Geographical Indication Registration Certificate, Design Registration Certificate) and the Registration Certificates of the Transfer Contracts of Industrial Property Rights mentioned above only have value as grounds for determining the industrial property owner as well as the scope and objects of industrial property rights for the application of the Decree when these documents are still within their validity period.

7. 3. Method for Determining the Violation Factor

The violation factor (Clause 4 of Article 1 of the Decree) is a specific manifestation of the results of acts infringing upon rights to inventions, utility solutions, designs, trademarks, and geographical indications, and is the most important basis for affirming such acts.

a. The violation factor for inventions/utility solutions may belong to one of the following three forms:

- A product or part of a product identical (overlapping) with a product or part of a product protected as an invention or utility solution;

- A process identical (overlapping) with a process protected as an invention or utility solution;

- A product or part of a product produced according to a process identical with a process protected as an invention or utility solution.

To affirm the identity (overlap) between the infringing product and the protected product, between the infringing process and the protected process, all technical features of the product/process must be compared with those of the protected product/process, and only if all technical features of the infringing product/process are present in the set of technical features of the protected product/process can such a conclusion be made. When conducting the comparison, it must be based on the Description of the Invention, the Description of the Utility Solution, and the Claims of the Invention, the Claims of the Utility Solution attached to the Invention Patent Certificate, the Utility Solution Patent Certificate, which have determined the technical features of the protected product/process.

b. The violation factor for designs is a product whose external shape or the external shape of a part thereof is identical with a design that is protected or identical with the basic design elements of a protected design.

To affirm whether a product is a violation factor for a design or not, all design features (lines, shapes, colors) of the product or part of the product must be compared with the design features of the design as determined in the Design Patent Certificate (or the Design Registration Certificate issued under the Law on Protection of Industrial Property Rights in 1989). Only when all features of the entire product or a part of the product are identical with the design features stated in the Design Patent Certificate or identical with the features of the basic design elements of the design stated in the Design Patent Certificate can it be affirmed that the product is a violation factor for the design.

c. The violation factor for trademarks and geographical indications may belong to one of the following two forms:

- A sign that plays the role of a trademark for goods, or

- An indication that evokes association with a trademark for goods or the origin of goods.

The infringing element in the form of a sign is any sign capable of being used as a trademark for goods (letters, numerals, images, symbols, marks) affixed to goods, packaging of goods, service means, transaction documents, signs, advertisements that are identical or similar to the extent of causing confusion with registered trademarks for goods or geographical indications for goods.

The infringing element in the form of an indication is any information presented on goods, packaging of goods, service means, transaction documents, signs, advertising objects (descriptions, notes, marks) that cause consumers to be confused about the origin or relationship between goods/services bearing such signs/indications and goods/services bearing registered trademarks for goods or geographical indications for goods.

To determine whether a sign or an indication constitutes an infringing element against a registered trademark for goods or geographical indication for goods, it is necessary to compare the sign or indication with the registered trademark for goods or geographical indication for goods and compare the products or services bearing those signs or indications with the products or services listed in the Product and Service List in the Certificate of Registration for Trademark for Goods or the Certificate of Right to Use Geographical Indication for Goods. When making comparisons, the following points should be noted:

- A sign is considered identical to a registered trademark for goods or geographical indication for goods if both of the following conditions are met:

First condition: The sign has a structure, presentation, color, pronunciation (for letter signs), meaning that is completely identical to the structure, presentation, color, pronunciation, meaning of the registered trademark for goods or geographical indication for goods; and

Second condition: The goods/services bearing the sign are included in the list of products and services registered in the Certificate of Registration for Trademark for Goods or the Certificate of Right to Use Geographical Indication for Goods.

- A sign is considered similar to the extent of causing confusion with a registered trademark for goods or geographical indication for goods if either of the following situations occurs:

First situation (identical sign and similar product):

The sign has a structure, presentation, pronunciation (for letter signs), color, meaning that is completely identical to the structure, presentation, pronunciation, color, meaning of the registered trademark for goods or geographical indication for goods; and

The goods/services bearing the sign are similar or functionally related to the goods/services registered in the Certificate of Registration for Trademark for Goods or the Certificate of Right to Use Geographical Indication for Goods.

Second situation (similar sign, identical product):

The sign has some characteristics regarding structure, presentation, pronunciation (for letter signs), color, meaning that are completely identical or similar to the extent of not being easily distinguishable from the registered trademark for goods or geographical indication for goods; and

The goods/services bearing the sign are included in the list of products and services registered in the Certificate of Registration for Trademark for Goods or the Certificate of Right to Use Geographical Indication for Goods.

8. Some special considerations when applying Article 9 of the Decree

When determining acts of infringement of industrial property rights and imposing penalties under Article 9 of the Decree, the person imposing penalties must pay particular attention to the following issues:

8.1. Exceptional cases not considered as infringement of industrial property rights

According to Article 803 of the Civil Code 1995 and Clause 3 of Article 53 of Decree 63/CP, the following actions are not considered as infringement of industrial property rights and are not subject to penalties under the Decree:

a. Using protected industrial property objects without commercial purposes (specifically, such use is not a commercial activity, for example, for testing, scientific research, teaching, for non-profit community purposes, for personal needs...);

b. Using industrial property objects on transit means or temporarily located in Vietnam solely for maintaining the operation of such means;

c. Using industrial property objects provided by a prior user (the prior user is defined in Article 50 of Decree 63/CP);

d. Engaging in commercial activities (importing, selling, storing for sale, advertising for sale) products or goods that have been put on the market by the owner of the industrial property right (including foreign markets).

The fourth exceptional case is frequently encountered during the handling of disputes, complaints, and violations of industrial property rights. Below are some situations falling under this category.

- Commercial activities with products or goods containing protected industrial property elements supplied (distributed, sold) by another party who is the owner of the industrial property right (the holder of the protection certificate, the licensee) are not considered infringements, regardless of whether the supply of goods or products takes place in Vietnam or abroad.

- Parallel imports: Importing goods or products containing protected industrial property elements from sources other than the direct owner of the industrial property right, but from licensees, distributors, subsidiaries, branches... are not considered infringements.

If the accused violator considers that the act they have performed falls within an exception, they have the right and obligation to prove that the act falls within the exceptions; otherwise, they will not enjoy the aforementioned exception rights.

8.2. Impact of changes in the validity of the Protection Certificate

The validity of a protection certificate may be changed: the scope of protection for industrial property objects may be narrowed, suspended, or revoked. Such changes affect the determination of violations as stipulated in Article 9 of the Decree. To ensure fair and appropriate handling of violations, when there is notification from the competent industrial property management agency regarding the possibility or decision to change the validity of the protection certificate, the authority responsible for imposing penalties must study and issue a decision consistent with the new scope of validity.

III. APPLICATION OF PENALTY FORMS, AMOUNTS, AND MEASURES FOR HANDLING VIOLATIONS

9. Warning Penalty

The warning penalty form prescribed in Clause 1 of Article 3 of the Decree shall only apply to cases where the regulations provide for the warning penalty form under the corresponding Articles and Clauses of the Decree and are applied to violations with the following circumstances:

- First-time violation with small scale, not causing significant damage to the industrial property owner and consumers;

- Due to backwardness, lack of understanding of industrial property laws, and not causing significant damage to the industrial property owner and consumers;

- Caused by the violation of others without the violator's knowledge and reasonable grounds to know, including cases of being deceived during the negotiation and signing, implementation of contracts in production and business, and without legal provisions requiring knowledge about related industrial property issues.

10. Fine

When it is determined that the violation does not fall under the application of the warning penalty form, the fine penalty form shall be applied. The amount of the fine shall be applied as follows:

10.1. In cases where the violation does not have aggravating or mitigating circumstances, the average level within the fine range shall be applied;

10.2. In cases where one of the following mitigating circumstances exists, the fine below the average level to the minimum level within the range shall be applied:

- Due to backwardness, lack of understanding of industrial property law regulations; - Caused by the violation of others without the violator's knowledge and reasonable grounds to know, but there are legal provisions requiring the violator to know about related industrial property issues (for example, cases where there are provisions requiring the party receiving processing or ordering production of export goods to ensure the legality of the trademark used on the product or to request the party renting processing or ordering to provide a commitment letter bearing responsibility for using the trademark on the product, but the party receiving processing or ordering has not complied with these provisions);

- The violator voluntarily ceases the violation behavior and takes measures to prevent and reduce harm such as stopping production, stopping sale of infringing goods upon request of the industrial property owner or competent state authorities;

- The violator strictly complies with the requirements of the industrial property owner or competent state authorities, voluntarily remedies consequences such as recalling infringing goods, issuing correction notices, apologizing, and voluntarily compensating losses to the industrial property owner;

10. 3. In cases where one of the following aggravating circumstances exists, the fine above the average level to the maximum level within the range shall be applied:

- Organized violation;

- Repeated violation;

- Deception, taking advantage of others' economic and social ignorance or dependence to incite, induce, or compel others to violate;

- Taking advantage of war, natural disasters, or special economic and social conditions to violate;

- Violation during the execution of criminal punishment or administrative handling decisions for criminal acts or violations in the field of industrial property;

- After the violation, there are actions to evade or conceal the violation. Determining the amount of fine within the aggravated fine range prescribed in Clause 2 of Article 9 of the Decree shall follow similar principles as determining the amount of fine within the regular fine range.

11. Revocation of License Usage Rights:

11.1. The revocation of license usage rights is a supplementary penalty form that is not applied independently and can only be applied together with primary penalty forms (warning or fine) when the competent authority determines sufficient grounds and conditions as follows:

- There are provisions allowing the application of the revocation of license usage rights for related violations at specific Articles, Clauses, or Points from Article 5 to Article 9 of the Decree; and

- The actual data of the violation falls under one of the cases specified in Clause 1 of Article 16 of the Decree. These data must be fully recorded in the violation report.

11.2. Conditions for considering the application of the revocation of license usage rights with or without a time limit must comply with the provisions of Clauses 2 and 3 of Article 16 of the Decree. The duration of the revocation of license usage rights must correspond to the nature and degree of the specific violation and fall within the permissible time limit for applying to that violation according to the corresponding Articles, Clauses, or Points from Article 5 to Article 9 of the Decree.

11.3. The authority to revoke each type of license must comply with the provisions of Article 10 and Article 11 of the Decree. Business licenses specified in the Decree may be Business Licenses, Business Registration Certificates, Investment Licenses, etc., depending on specific cases according to current laws. Service representation licenses for industrial property may be Service Representation Organization Certificates for Industrial Property or Industrial Property Representative Cards as stipulated in Decree 63/CP. For types of licenses that the authority imposing penalties does not have the authority to revoke (such as Investment Licenses issued by the Ministry of Planning and Investment), the authority imposing penalties shall prepare a recommendation letter attached to the case file requesting the issuing agency to handle it.

12. Seizure of Evidence and Means of Violation

12.1. The form of seizure of evidence and means of violation can only be applied together with primary penalty forms when the competent authority determines sufficient grounds and conditions for application, specifically:

- There is a provision allowing the application of confiscation penalties for violations related to specific articles, clauses, and points from Article 5 to Article 9 of the Decree and factual circumstances of the violation falling within one of the cases stipulated in Clause 2, Article 18 of the Decree. These facts must be fully recorded in the violation report.

- Products, goods, business means, service means cannot eliminate the elements of violation.

12.2. The form of confiscation of goods in violation as provided for in Point c, Clause 2, Article 18 shall only be applied when the competent authority has requested and set a reasonable time for organizations and individuals who violate to take appropriate measures to remove or remedy the elements of violation on the goods, business means, but they intentionally do not implement or do not meet the requirements.

12.3. The measure of confiscation of infringing goods of unknown origin as provided for in Point d, Clause 2, Article 18 of the Decree shall only be applied when the following conditions are met:

- The relevant industrial property owner has provided sufficient evidence to affirm that the infringing goods were not put on the market by themselves or with the consent of themselves.

- There is a commitment letter to compensate for losses incurred by the owner of the goods from the person requesting the confiscation measure if subsequently, the competent authority determines that the confiscated goods are not infringing goods or there is insufficient evidence to conclude that the goods are infringing.

- There has been a request to stop the violation by the competent authority but they still intentionally violate or reoffend after being warned or fined for the same type of violation previously.

12.4. In the case where the competent authority decides to confiscate suspected infringing goods without a complaint from the accuser and the conditions stipulated in Point 12.3 above, the responsibility for compensating losses to the owner of the goods belongs to the person who made the confiscation decision if subsequently, the confiscated goods are concluded not to be infringing goods or there is insufficient evidence to conclude that the goods are infringing.

13. Other measures:

13.1. Other measures for dealing with violations determined in cases where it is deemed necessary to prevent continued violations and remedy the consequences of violations, in accordance with the corresponding provisions in Articles 5 to 9 of the Decree, depending on each specific case and only to be applied together with the main penalty form, may include:

a. Removing the elements of violation by removing parts or components of the product that are elements of violation, stamping out, erasing the violation signs on the product, business means, service means so as to ensure prevention of the possibility of continued violation.

b. Correcting false information causing violation by publishing an apology, correction on the same medium, item that previously carried the violation information, on mass media or by sending an apology, correction letter to the industrial property owner, affected parties due to the false information so that the form, scope, target of the correction announcement correspond to the scale of the violation.

c. Industrial property obligations that must be fulfilled may include being compelled to register trademarks for related products, being compelled to establish and register contracts transferring industrial property rights according to regulations, using the correct trademark labels, origin names, design patents as registered, being compelled to mark products according to regulations.

d. Items bearing violation signs must be destroyed depending on the situation, which may include transaction documents, catalogues, instruction books, flyers, symbols, advertising samples, trademark samples, stickers, product packaging.

e. The measure of compelling the destruction of violating goods shall only be applied in cases where the goods have no value for use or goods that do not meet quality standards as prescribed and have the potential to harm human health or in cases where it is impossible to handle by the measures prescribed in Clause 2, Article 19 of the Decree.

g. Regarding compensation for damages, if the parties agree among themselves not to claim compensation for damages or about the amount of compensation, the competent authority imposing the fine will recognize such agreement and record it in the Decision on Fine. In cases where the parties cannot agree on the amount of compensation, if it is up to 1,000,000 VND, the competent authority will base the actual damage consequences to determine the specific amount of compensation and record it in the Decision on Fine, if it exceeds 1,000,000 VND, the competent authority imposing the fine will require the parties to initiate a lawsuit before the Court under civil litigation procedures and clearly state this in the Decision on Fine.

13.2. In cases where the statute of limitations for administrative violation penalties has expired, no penalty will be imposed, but other measures prescribed in Points a, b, d, Clause 3, Article 11 of the Ordinance may be applied.

13.3. Cases where exemption from applying or enforcing other handling measures may be allowed:

a. In cases where the industrial property owner agrees or requests not to apply or exempt from the obligation to enforce the compulsory correction, apology measures, the competent authority may allow exemption from applying or enforcing such measures if it is considered that the act mainly causes damage to the industrial property owner.

b. In cases where the violator agrees with the industrial property owner on granting a license to continue producing and trading goods, providing services concluded to be used improperly of related industrial property objects, the competent authority imposing the fine may allow exemption from applying or enforcing the measures: compel removal of violation factors, confiscation of goods, business means, service means in violation, compel destruction of violating items, goods, if the production and trading activities under the license comply with the relevant legal regulations and do not affect consumers, economic management order.

14. Seizure, sealing; temporary detention of goods, means of violation of industrial property rights

14. 1. The persons authorized to temporarily detain evidence and means of violation according to Clause 1, Article 17 of the Decree are: the Head of the Public Security Department at the district level, the Head of the Economic Police Division; the Head of the Customs Gate; the Team Leader of the Market Management Team.

Inspectors, Heads of specialized inspection teams for intellectual property rights do not have the authority to temporarily detain evidence and means of violation, but in necessary cases, they have the right to seal and seize evidence and means of violation and hand over the custody of such items to their owners, and if necessary, may request the competent authority to issue a decision on temporary detention (as stipulated in Articles 9 and 24 of the Inspection Ordinance), such sealing and seizing must be recorded in the Violation Record and Sealing and Seizure Decision.

14.2. The competent authority can only issue a decision on temporary detention when there are factual circumstances falling under the situations prescribed in Clause 2, Article 17 of the Decree, and these circumstances must be clearly stated in the Violation Record and Temporary Detention Decision.

14.3. For suspected infringing goods whose origin cannot be determined, the competent authority can only issue a decision on temporary detention when the following conditions are met:

a. The relevant intellectual property owner requests temporary detention and provides reasonable evidence and argument that the suspected infringing goods were not brought to market by that owner or by a person authorized by the owner, including foreign markets;

b. There is a commitment letter from the intellectual property owner to compensate for damages if the competent authority later determines that the detained goods are not infringing or there is insufficient evidence to determine that they are infringing;

If the competent authority decides to temporarily detain suspected infringing goods without a complaint and the conditions specified in Point 14.3 above, then the responsibility for compensating the owner of the goods for damages lies with the authority that issued the decision on temporary detention if it is later concluded that the detained goods are not infringing or there is insufficient evidence to conclude that they are infringing.

14.4. The period of temporary detention is 15 days, and in cases with many complex circumstances, it may be extended but shall not exceed 30 days from the date of issuance of the temporary detention decision.

IV. AUTHORITY TO IMPOSE PENALTIES AND PROCEDURES FOR IMPOSING PENALTIES

15. Scope of guidance on authority and procedures for imposing penalties

Authority and procedures for imposing penalties are prescribed in Chapter 3 (from Article 10 to Article 20) of the Decree. Below are some additional guidelines and notes on this matter.

16. Coordination among authorities with the power to impose penalties

16.1. Specialized inspection of intellectual property rights

Specialized inspection of intellectual property rights; Intellectual property rights inspector; Chief of the Specialized Inspection Department for Intellectual Property Rights under the Department of Science, Technology and Environment; Chief of the Specialized Inspection Department for Intellectual Property Rights under the Ministry of Science, Technology and Environment as stipulated in Article 11 of the Decree, correspondingly are the Ministry of Science; Technology and Environment Inspection; Department of Science, Technology and Environment Inspection; Intellectual Property Rights Inspector; Chief of the Department of Science, Technology and Environment Inspection; Chief of the Ministry of Science, Technology and Environment Inspection.

16.2. In cases where a violation by an organization or individual occurs in multiple different locations, the first authority to discover the violation shall prepare the record, stop the violation, and notify the authority responsible for handling the case at the main office location of the violating organization (for individuals, it is the place of permanent residence of the individual) to process the case, and this authority must inform other relevant authorities in related locations to coordinate in handling the violation ensuring the principle: all violations will be penalized and each violation will only be penalized once.

16.3. In cases where multiple organizations or individuals jointly commit a violation with close interrelation, and the violation occurs in multiple different locations, the first authority to discover the violation shall handle the administrative violation at its own location while simultaneously notifying other relevant authorities in related locations to coordinate in handling the violation ensuring the principle: all violations will be penalized and each violation will only be penalized once.

For organized violations of large scale but not reaching the level of criminal prosecution, the central authority with jurisdiction shall take the lead and coordinate with localities to handle the situation.

16.4. In cases where it is deemed necessary to apply fines and measures within the jurisdiction of industry management agencies or administrative unit management agencies (territorial) at higher levels, a report along with the case file must be submitted to the higher-level agency with the authority to resolve the matter. In cases where it is deemed necessary to apply fines and measures outside the scope of their own jurisdiction, industry management agencies may prepare a report and transfer the case file to the local administrative unit management agency with the authority to resolve the matter.

16.5. In cases where violations prescribed in Clauses 1, 3, 4, and 5 of Article 9 of the Decree involve complex circumstances related to intellectual property expertise, the authority handling the case shall transfer the file to the specialized inspection team for resolution if the act falls within the penalty jurisdiction of that inspection organization, or must issue a request for a specialized intellectual property expertise appraisal according to Clause 3, Article 14 of the Decree and Section V of this Circular to serve as one of the bases for issuing a decision on penalizing the violation.

17. Distinguishing between administrative handling procedures and litigation procedures before court.

17.1. For serious violations concerning the protection, obligations, and guidelines regarding industrial property rights, copyright, patents, utility models, and industrial designs, such as large-scale infringements (in terms of production scale, quantity, and value of infringing goods), infringements causing severe economic and social consequences (regarding health, environment, consumer interests, national reputation...), repeated offenses, the authority handling the case file must exchange opinions with the People's Procuracy at the same level on the direction for handling before deciding on administrative penalties. If the violation is suspected of constituting a criminal offense under the Penal Code (such as counterfeiting, selling counterfeit goods, deceiving customers, infringing industrial property rights), the case file must be transferred to the competent People's Procuracy to request prosecution of that criminal act according to criminal procedure.

17.2. For industrial property right infringements resolved through civil litigation procedures, the administrative penalty authority shall not accept and handle them according to the provisions on administrative penalties. In cases where a single infringement is simultaneously being litigated in court through civil litigation procedures and reported through administrative handling procedures, the infringement will be resolved through civil litigation procedures at the competent court, and the administrative penalty authority that has accepted the case shall transfer the case file to the competent court if requested by the court, while also issuing a written notice to the complainant about this within the time limit for handling the complaint as prescribed.

17.3. In cases where disputes arise over compensation amounts exceeding VND 1,000,000 for violations concerning the protection of industrial property objects (infringement) as stipulated in Article 9 of the Decree, and as provided in Clause 3 of Article 3 of the Decree, the authority handling the case shall guide the industrial property owner to initiate a lawsuit against the infringement act through civil litigation procedures. If the industrial property owner initiates a lawsuit against the infringement act at the court, the authority handling the case shall transfer the case file to the competent court for resolution. If the industrial property owner only initiates a lawsuit at the court for compensation but does not sue for the infringement act, the authority still issues an administrative penalty decision for the infringement act according to the provisions of Article 14 of the Decree, but must clearly state in the penalty decision that the compensation amount will be resolved through civil litigation procedures.

V. REQUIREMENTS FOR TECHNICAL APPRAISAL OF INDUSTRIAL PROPERTY

18. Persons Requesting Appraisal

18.1. The following persons have the right to request an appraisal of industrial property:

a. The authority handling the violation case.

b. The industrial property owner and other parties related to the violation case.

c. The person requesting the appraisal may directly or authorize another person to carry out the request. The authorization follows the provisions set forth in Point 4 of Circular 3055/TT/SHCN dated December 31, 1996 of the Ministry of Science, Technology, and Environment.

19. Documentation for Requesting Appraisal

19.1. The request for appraisal must be in writing, specifying the specific content of the request for appraisal and attaching relevant evidence (documents, photos, samples of infringing products...) available to the requester.

19.2. The request for appraisal includes the following contents:

a. The legal status of the industrial property object involved;

b. Conclusions on the suspected object containing elements of infringement.

20. Authority and Responsibility for Appraisal

The State agency with the authority and responsibility for appraising industrial property is the National Office of Intellectual Property and provincial Science, Technology, and Environment Departments. The appraisal is classified as follows:

20.1. The provincial Science, Technology, and Environment Department where the suspected object containing elements of infringement is located or where the violating organization's headquarters or the residence of the individual violator is situated has the authority and responsibility to receive and respond to appraisal requests from the following entities:

a. The authority handling the case of the State agency at the local level on the same territory;

b. The industrial property owner and parties related to the violation case.

20.2. In cases involving many complex circumstances, if the provincial Science, Technology, and Environment Department considers itself unable to provide a conclusion due to lack of capability and conditions, it must forward the request along with a letter requesting the National Office of Intellectual Property to conduct the appraisal within three working days from the date of receipt of the request for appraisal documentation.

20.3. The National Office of Intellectual Property has the authority and responsibility to receive and respond to appraisal requests from the following entities:

a. The authority handling administrative penalties belonging to central-level State agencies.

b. The industrial property owner and parties related to the violation case.

c. Provincial Science, Technology, and Environment Departments.

21. Documentation for Appraisal Conclusion

21.1. Content of the Appraisal Conclusion Documentation

- The appraisal conclusion documentation must clearly state the opinion on each content of the request for appraisal based on current industrial property laws;

- For content with sufficient evidence and basis for a conclusion, the appraisal conclusion and the basis for making that conclusion must be clearly stated;

- For content without sufficient evidence and basis for a conclusion, the appraisal conclusion documentation must present several hypotheses about possible scenarios based on existing evidence and basis. Contents without sufficient basis for a conclusion must also be clearly stated in the appraisal documentation.

21.2. Legal Value of the Appraisal Conclusion Documentation

The appraisal conclusion documentation must be signed by the head of the agency or a legally authorized representative and stamped with an official seal.

The content of the appraisal conclusions serves as one of the legal bases for authorities to make decisions on administrative penalties as well as appropriate decisions on infringing items and acts.

The person signing the appraisal documentation is responsible for the legality of the appraisal conclusions and the legal consequences of those conclusions.

22. Time Limit for Appraisal

The agency requested to conduct an appraisal shall base its opinion and conclusion in writing on the contents required within the ten-day appraisal period from the date it receives all case files and evidence provided, according to current laws.

The time allocated for the requesting party to provide evidence or explanations does not count towards the prescribed appraisal period.

23. Re-appraisal

In cases where the requesting party disagrees with part or all of the appraisal results of the Department of Science, Technology, and Environment, or when there are differing opinions among such Departments regarding the same case, the requesting party may request a re-appraisal at the National Office of Intellectual Property within three days from the date of receipt of the appraisal conclusion document. The National Office of Intellectual Property will conduct a re-appraisal of all requested contents within ten days from the date of receipt of the re-appraisal request and complete case files.

If new evidence related to the previously requested appraisal is available, the requesting party may request the appraisal agency to conduct a new appraisal based on the supplementary evidence following the procedures applicable to the initial appraisal request rather than the re-appraisal procedure.

If the parties disagree with the appraisal result of the National Office of Intellectual Property, they have the right to request the Ministry of Science, Technology, and Environment to establish an Appraisal Council in accordance with the provisions governing appraisals.

24. Request for Evidence and Explanations

During the appraisal process, the competent appraisal authority may require the requesting party to provide necessary evidence or explanations within a specified timeframe. The requesting party must comply with this requirement within the designated period. Upon expiration of this period, the appraisal authority has the right to issue a conclusion based on the existing evidence.

The provider of evidence is responsible for the authenticity of the evidence provided to the appraisal authority in accordance with current laws.

25. Appraisal Fees

The requesting party must pay the appraisal fee as stipulated.

Where an organization or individual is concluded to have violated intellectual property laws, that violating organization or individual must bear the appraisal fee if the requesting party is not the violator; otherwise, the violating organization or individual must reimburse the requesting party for the appraisal fee already paid.

VI. REPORTING VIOLATIONS OF INTELLECTUAL PROPERTY LAWS

26. Reporting Violations of Intellectual Property Laws

26.1. Any organization or individual, including producers, traders, consumers, and state agencies, social organizations, have the right to report violations of intellectual property laws to competent authorities handling such violations. The reporter has the obligation to provide specific evidence and information about the violation to the competent state authority and is responsible under the law for the report. The authority receiving the report must handle it in accordance with the provisions set forth in Chapter IV of the Law on Petitions and Reports.

Foreign individuals not residing in Vietnam and foreign legal entities without legitimate representatives and without genuine production and business bases in Vietnam must file reports through the Vietnamese Intellectual Property Service Organization.

26.2. The reporter has the obligation to:

a. Provide documents and certificates (certified copies by the National Office of Intellectual Property or a notary public - in the case of the owner) confirming the subject, object, scope, and content of the protected intellectual property rights related to the violation case;

b. Provide evidence confirming the infringement acts against the protected intellectual property objects and other violations of intellectual property laws.

26.3. The reporter must fully assume responsibility for the content of the report and the evidence provided to the competent authority handling the violation. If the content of the report or the evidence is found to be incorrect by the competent state authority, the reporter must compensate for the damage caused to the reported party and related parties; in cases of intentional misconduct, administrative or criminal penalties may also apply depending on the severity of the violation.

27. Notification to the Intellectual Property Owner and Request for Evidence

27.1. For cases of infringement of intellectual property rights, the competent authority imposing penalties must notify the relevant intellectual property owner and request them to provide protection certificates, documentation confirming the rights holder, status, and scope of protection of the infringed intellectual property objects, as well as other necessary information to determine the violation and appropriate measures to address the violation and infringing items.

27.2. The intellectual property owner has the obligation to provide necessary documents, evidence, and information for the handling of the violation as requested by the competent authority imposing penalties and has the right to make explanations and suggestions on appropriate measures to ensure their lawful rights and interests.

28. Cases Not Accepted for Report and Non-application of Penalty Provisions

Competent authorities handling violations will not accept reports of violations in the following cases:

28.1. The violation reported was committed outside the statute of limitations for punishment.

28.2. The intellectual property right over the infringed object is outside the protection term and scope recorded in the protection certificate or license agreement.

28.3. Cases where the reporter simultaneously initiates litigation before the Court, the report has been accepted by the Court for resolution, or there is a final judgment issued by the Court.

VII. EFFECTIVE DATE OF IMPLEMENTATION

Article 29. This Circular shall take effect fifteen days from the date of signature. Matters not yet resolved on the date this Circular takes effect shall be handled in accordance with the provisions of this Circular. Pending the issuance by the Ministry of Finance of regulations on the level of fees for intellectual property ownership appraisal, the National Office of Intellectual Property and the Departments of Science, Technology, and Environment shall temporarily collect such fees at the rate applicable to complaints about infringement rights as stipulated in Circular No. 23/TC-TCT dated May 9, 1997 on the system of collection, payment, and use of fees and charges for intellectual property.