Necessity Of Intellectual Property Court (part 1)25/09/2021 admin
According to Clause 1, Article 99 of the current Law on Intellectual Property, depending on the nature and extent of the violation of intellectual property rights, the person who infringes may be dealt with civil, administrative, or criminal remedies. The application of civil and criminal remedies is subject to the jurisdiction of the Court, the application of administrative remedies is subject to the jurisdiction of the Inspection Agency, Police Office, City Market Management Office, Customs Office, People’s Committees at all levels.
Within the scope of this essay, the writer focuses on civil remedies that an individual, organization, legal entity can do at the People’s Court to protect their intellectual property rights. When a dispute related to intellectual property occurs, the intellectual property owner shall base on the provisions of the civil litigation law to initiate a lawsuit to the court to protect their legitimate rights and interests. Civil remedies applied to handle organizations and individuals that engaged in acts of infringing upon intellectual property rights specified in Article 202 of the Law on Intellectual Property 2005, including: forced to apologize, public correction; forced to perform a civil obligation; forced to compensate for damages; forced to destroy or distribute of the non-commercial use of goods, raw materials, materials, and method mainly used for production and trading of goods infringed upon intellectual property rights provided that they do not affect the ability to exploit the rights of the intellectual property right holder.
Enforcement mechanism at the People’s Court
1. Competence to settle the Intellectual Property dispute of the People’s Court.
According to the provisions of the Civil Procedure Code 2015, competence to settle the Intellectual Property dispute of the People’s Court is determined as follows:
- If the Intellectual Property dispute is purely a civil dispute, it is subjected to the jurisdiction of the District People’s Court;
- If the Intellectual Property dispute is purely a civil dispute, but the civil parties or the Intellectual Property object are abroad, it is subjected to the jurisdiction of the Provincial People’s Court;
- If an Intellectual Property dispute arises between individuals, organizations and has the purpose of making a profit, it is considered as a commercial and business dispute and falls under the jurisdiction of the Provincial People’s Court.
2. Civil remedies to handling intellectual property right infringement at the People’s Court
As mentioned above, civil remedies specified in Article 202 of the Law on Intellectual Property 2005, including:
- Forced to stop the infringement;
- Forced to apologize, public correction;
- Forced to perform a civil obligation;
- Forced to compensate for damages;
- Forced to destroy or distribute the non-commercial use of goods, raw materials, materials, and methods mainly used for production and trading of goods infringed upon intellectual property rights, provided that, they do not affect the ability to exploit the rights of the intellectual property right holder.
The civil remedies mentioned above are remedies that the People’s Court may enforce on a party if that party engaged in acts of infringing upon the Intellectual Property Rights of which the petitioner is the subject of that right.
3. Evidence and prove
According to the provisions of Clause 4, Article 1 of Decree 119/2010/ND-CP, to prove the holder status of Intellectual Property Rights, the party requesting protection of Intellectual Property Rights must provide one of the following documents:
- A copy of the invention, utility solution or industrial design patent; the layout design, mark or geographical indication registration certificate; the plant variety protection title; the copyright or related right registration certificate; enclosed with the original for comparison, unless the copy has been duly authenticated;
- An excerpt from the national register of industrial property; an excerpt from the national register of copyright and related rights; an excerpt from the national register of rights to protected plant varieties, issued by a competent agency that has registered those subject matters;
- For an internationally registered mark, the evidence to prove the right holder status is a copy of the certificate of protection in Vietnam of such internationally registered mark issued by the state management agency in charge of industrial property, enclosed with the original for comparison, unless the copy has been duly authenticated.
After proving the holder status of Intellectual Property Rights, the requesting party must provide evidence and prove that its requests for enforcement of civil remedies are grounded and lawful under the provisions of the Civil Procedure Code. Where evidence is under the control of the requested party and the requested party refuses to provide, the People’s Court shall have the right to force the requested party to provide such evidence. In case the civil remedy that is requested is the compensation for damage, in addition to the general principles of law related to compensation for damage, the Law on Intellectual Property also clearly provides provisions on determining acts of infringement and determine the extent of damage, because Intellectual Property is a specific field and the factors mentioned above are not always clearly defined.
4. Applying for injunctive relief
The injunctive relief may be applied when a requesting party has grounds to believe that the evidence or the current state of the object is likely to be changed or because of a genuine urgent need, a party shall have the right to request for an application of injunctive relief under the provisions of the Law on Intellectual Property, including Retention; Seizure; Sealing; prohibiting any alteration of the original state; prohibiting any movement; Prohibiting the transfer of ownership, other measures as prescribed by the Civil Procedure Code.
The proceedings for the enforcement of injunctive relief must comply with the provisions of Articles 208, 209 and 210 of the Law on Intellectual Property, and will generally comply with the provisions of the Civil Procedure Code.