Infringement of industrial design rights and remedies
An industrial design is a product protected by current Intellectual Property laws. However, at present, there are more and more infringements of the rights to industrial designs. So then, is there any measures that can be taken to prevent these behaviors? In the article below, Lincon Law Firm will give preliminary advice on this matter. Infringement of industrial design rights
I. Industrial design overview
1. Definition Infringement of industrial design rights
An industrial design is the appearance of a product represented by shapes, lines, colors or a combination of these elements. Thus, the industrial design is what helps customers distinguish one product from another. For example, the appearance of an automobile is the industrial design of the car product.
An industrial design will be protected if it meets the following three criteria:
- New; nfringement of industrial design rights
- Be creative; nfringement of industrial design rights
- There is a possibility of industrial application.
2. Why is it necessary to register for protection of rights to an industrial design
An industrial design is a product of intellectual property, and registration of rights to an industrial design helps its owner to protect and take advantage of their rights, in particular rights such as:
- Using and allowing others to use an industrial design. For example: to manufacture the product or allow someone else to manufacture the product of the industrial design; selling, advertising or importing products bearing such industrial designs; etc.
- Prevent others from using their industrial designs illegally;
- Transfer the ownership of an industrial design to another organization or individual.
In addition, the registration for protection of an industrial design is necessary because it will prevent unauthorized infringements, when there is such infringement, the owner will be protected by law.
II. Acts of infringing upon the rights to industrial designs
When performing one of the following acts, an individual or organization will be regarded as an infringement of the rights of the industrial design owner:
- Use of a public design The protected industry or industrial design is not significantly different from that design during the term of validity of the protection title without the consent of the owner. For example, the design of the Toyota Camry 2020, however, if another enterprise uses a design that is almost identical to the Toyota Camry 2020 model, that business has committed an infringement of the rights to Industrial Designs.
- Using an industrial design without paying the provisional compensation. Specifically, the owner of the industrial design is in the process of filing an application for registration of the industrial design and knows that someone else is using the design for commercial purposes and that he or she has no prior use right. Then, the owner has the right to demand that the user of the industrial design pay a compensation equivalent to the licensing price of the industrial design.
When infringements occur, owners and authorities will take appropriate measures to prevent such infringements.
III. Handling measures for infringement of industrial design rights
1. Civil remedies Infringement of industrial design rights
When an individual or organization commits acts that infringe upon the rights of the industrial design owner mentioned above, the court shall have The following measures may be taken to prevent:
- Forcing such individual or organization to cease an infringement of industrial design rights;
- Forcing individuals or organizations to publicly apologize or make corrections;
- Forcing individuals and organizations to perform their civil obligations;
- Compelling individuals and organizations to pay damages;
- Forcing individuals or organizations to destroy or force distribution or use for non-commercial purposes of products that infringe upon the rights to industrial designs and do not affect the owner’s ability to exploit rights rights to industrial designs.
In order for the Court to take the above measures against the infringer, the right holder must prove that he is the right holder of the industrial design by one of the following evidences:
- Copy of Title protection; excerpts of the National Register of Industrial Designs;
- A copy of the contract to use the industrial design in case the right to use is transferred under the contract;
- Other necessary proofs; Infringement of industrial design rights
- Evidence of the defendant’s infringement of the rights to industrial designs or unfair competition;
- If the plaintiff requests compensation for damage, the plaintiff must prove the actual damage happened and state the basis for determination.
The level of compensation is determined as follows:
- Total monetary damage plus the amount of profit the defendant has earned from the infringement of industrial design rights, if the profits are the claimant’s decrease has not been included in the total physical damage;
- Price of licensing of the industrial design with the assumption if the defendant is assigned the right to use the object under the contract by the plaintiff within the scope corresponding to the infringing act committed;
- Material damage by other ways of calculation given by the right holder of the industrial design and in accordance with the provisions of law;
- If the compensation for material damage cannot be determined on the above grounds, the compensation will be determined by the Court, depending on the extent of the damage, but not exceeding five hundred million VND;
- In case the plaintiff proves that the infringement of the right has caused mental damage to him, he / she has the right to request a court to decide the amount of compensation within the limit of between five million and fifty million dong, depending on extent of damage;
- In addition, the right holder can request the Court to force an infringing organization or individual to pay a reasonable cost to hire a lawyer.
2. Administrative measures
Organizations and individuals that commit one of the following acts of infringing upon the rights to industrial designs shall be administratively sanctioned if they infringe the rights to industrial designs and cause damage. for the author, the owner, the consumer or the society.
Fines for administrative violations will be applied when organizations or individuals to perform acts for the purpose of trading goods and services infringe on industrial designs, namely the following acts: \
- Buy; offer; transportation, including transit; keep; display for sale goods or services infringing upon the rights to industrial designs;
- Ordering, assigning, or hiring another person to commit the above violation.
The fine will be based on the value of the infringing goods or services, specifically:
- A warning or a fine of between VND 500,000 and 2,000,000 for the value of infringing goods or services up to VND 3,000,000;
- A fine of between VND 2,000,000 and 4,000,000 shall be imposed if the infringing goods or service is valued at between over VND 3,000,000 and 5,000,000;
- A fine of between VND 4,000,000 and VND 8,000,000 shall be imposed if infringing goods or services are valued at between over VND 5,000,000 and 10,000,000;
- A fine of between VND 8,000,000 and VND 15,000,000 shall be imposed if infringing goods or services are valued at between over VND 10,000,000 and VND 20,000,000;
- A fine of between VND 15,000,000 and VND 25,000,000 shall be imposed if infringing goods or services are valued at between over VND 20,000,000 and VND 40,000,000;
- A fine of between VND 25,000,000 and 40,000,000 for one case in case infringing goods or services are valued at between over VND 40,000,000 and VND 70,000,000;
- A fine of between VND 40,000,000 and VND 60,000,000 shall be imposed if infringing goods or services are valued at between over VND 70,000,000 and VND 100,000,000;
- A fine of between VND 60,000,000 and 80,000,000 shall be imposed if infringing goods or services are valued at between over VND 100,000,000 and VND 200,000,000;
- A fine of between VND 80,000,000 and VND 110,000,000 shall be imposed if infringing goods or services are valued at between over VND 200,000,000 and VND 300,000,000;
- A fine of between VND 110,000,000 and VND 150,000,000 shall be imposed if infringing goods or services are valued at between over VND 300,000,000 and VND 400,000,000;
- A fine of between VND 150,000,000 and VND 200,000,000 shall be imposed if infringing goods or services are valued at between over VND 400,000,000 and VND 500,000,000;
- A fine of between VND 200,000,000 and VND 250,000,000 shall be imposed in case where infringing goods are valued at over VND 500,000,000;
In addition, the fine will be 1.2 times higher than the above fine level if the individual or organization commits the following acts, however, it will not exceed 250,000,000:
- Design, manufacture, process, assembling, processing and packing goods bearing signs of infringement of the rights to industrial designs;
- Printing, pasting, sticking, casting, stamping or otherwise forms stamps, labels or other articles bearing signs of infringement of the rights to industrial designs;
- Importing goods bearing signs of infringement of the rights to industrial designs;
- Place orders, assign jobs or hire other people to perform the above acts.
In addition to the above fines, infringing individuals and organizations may also be subject to additional sanctions: Suspension of trading in infringing goods or services for between 01 and 03 months.
3. Criminal measures
Individuals who commit acts of infringing upon the rights to industrial designs with criminal elements shall be examined for penal liability in accordance with the criminal law.
The above are the basic provisions on sanctions that can be applied to individuals or organizations that violate industrial design rights. If you need more detailed advice on this issue as well as other related issues, please contact Lincon Law Firm at the information below.
Legal basis: nfringement of industrial design rights
- Law on Intellectual Property 2005, amended and supplemented 2019;
- Decree No. 99/2013/ND-CP; nfringement of industrial design rights
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