Law on the protection of trademarks – the actual situations and recommendations

1 TRƯỜNG ĐẠI HỌC KINH TẾ TP.HCM NGUYỄN LÊ THÀNH MINH LAW ON THE PROTECTION OF TRADEMARKS – THE ACTUAL SITUATIONS AND RECOMMENDATIONS MASTER OF ECONOMIC LAW Major code: 60 38 01 07 Instructor: Dr Lê Văn Hưng HO CHI MINH CITY, 2016 PROTESTATION My name is Nguyen Le Thanh Minh, student code No: 60380107 I’m a student of Master Class of Economic Law - Course 24, Faculty of Economic Law, University of Economics Ho Chi Minh City and also the author of this master thesis entitled “Law on the Protection of Trademark – the Actual Situation and Remedy” (herein referred to as the “Thesis”) I hereby declare that all contents of this Thesis is the result of my independent research under the instruction of Dr Le Văn Hung There are some references of opinions and points of view of some authors in this Thesis All of these references and information sources are cited specifically, accurately and can be verified All of the data, information used in this Thesis is completely objective and honest SUMMARY OF THE THESIS Trademark is a term in the field of Intellectual Property, which is a valuable asset of any Business and it should be protected and developed as any other normal assets However, nowadays in Vietnam, there are many infringement activities to the protected trademark for the purpose of profiteering These activities are still going on and the number of these incidents is increasing day by day Therefore, protection of trademarks, as well as mechanisms to protect the trademark becomes more and more important, and it shall become an effective tool which can help many enterprises to protect themselves in the harsh competitive environment of market economy Many researches show that the infringement activities regarding the trademark are currently increasing, mainly due to a combination of both subjective and objective reasons, which limit the effectiveness of law enforcement on the trademark in reality Acknowledging this situation, the authors conducted a study, researched on each situation, the specific cause of corresponding, thereby making recommendations in order to contribute to the change of the effectiveness of law enforcement, somehow improved the current status of infringement activities regarding trademark Contents Abbreviations INTRODUCTION 1 Reasons to choose the topic 2.1 Actual statement of the researching topic 2.2 The researching questions 3 Purpose, subjects and scope of studying 3.1 Purpose of studying 3.2 Subjects of studying 3.3 Scope of studying 4 Methods of studying Scientific significance and value of the Thesis Structure of the Thesis CHAPTER 1: THEORETICAL BACKGROUND OF TRADEMARK PROTECTION – COMPARING WITH REGULATION OF SEVERAL OTHER COUNTRIES 1.1 Formation and developing history of trademark 1.2 Current law on trademarks and protection of trademarks 10 1.2.1 Definitions and features of trademarks 10 1.2.1.1 Definitions of trademarks 10 1.2.1.2 Features of trademarks 13 1.2.2 Classification of trademarks 16 1.2.3 Definition on protection and enforcement of trademarks 20 1.3 Role of trademarks and trademark protection 22 1.4 Compare with regulations of several countries in the world on enforcement of trademarks 25 1.4.1 Regulations on enforcement of trademarks in the world 25 1.4.2 The mechanism on enforcement of trademarks in Vietnam 29 CHAPTER ACTUAL SITUATIONS OF LAW ENFORCEMENT ON TRADEMARK PROTECTION IN VIETNAM 34 2.1 Toward the system of competent State bodies that hold the responsibility of enforcing law on trademark protection 36 2.2 Toward the determination acts of infringement of rights to trademarks 39 2.3 Enforcement of trademarks in Vietnam through some specific cases 42 2.3.1 Some specific cases on acts of infringements of rights to trademarks 42 2.3.1.1 Cases under Verdict No 704/2004/DS-ST dated 16/4/2004 of People’s Court of Ho Chi Minh city 42 2.3.1.2 The case under Verdict No 1388/2012 / MLM-ST dated 13.09.2012 of People's Court of Ho Chi Minh city 44 2.3.2 Overall comments on the actual states of implementation and enforcement of trademarks in Vietnam 50 2.3.2.1 The archievements gaining 52 2.3.2.2 The shortcomings in implementation of the enforcement of trademarks in Vietnam 53 2.3.2.3 Subjective causes 54 2.3.2.4 Objective causes 60 CHAPTER RECOMMENDATIONS TO THE ACTUAL SITUATIONS STATED 62 3.1 Recommendations to improve IP law and other relating legal documents 62 3.1.1 Widen the definition of trademark 62 3.1.2 Limit the conflicts of protection 62 3.1.3 Specifically regulate about the apply of criteria for evaluation of whether or not a trademark is well known 64 3.1.4 Improving the criteria of evaluation the seriousness of breaches in IP rights to trademark 66 3.2 Recommendations on organzing to enforce law on trademark protecting 67 3.2.1 About the procedure of registration for trademark protection 67 3.2.2 Regarding the mechanism of dealing with breaches 67 3.2.3 Regarding the states of cybersquatting 69 3.2.4 Regarding of mechanism of cooperative between the competent State bodies 70 3.3 3.3.1 Other recommendations 70 Improving the cognition of the enterprises manager, and of community 70 3.3.2 Apply the principle ot determination of effectiveness between earnings and the levels of penalties to deal with violations, in order to build amounts of fine 71 REFERENCES 72 Abbreviations Intellectual property – IP World Trade Organization – WTO Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS Agreement World Intellectual Property Organization – WIPO Trans-Pacific Partnership Agreement - TPP INTRODUCTION Reasons to choose the topic In modern time, the world, society in which human communities are living together tend to increasingly move towards, closer together Countries, different regions of the world always try to jointly strive together more closely In that context, after the period of actively negotiations with efforts, Vietnam officially became the 150th member of the World Trade Organisation (WTO), bringing many new opportunities, along with challenges for all traders and enterprises in Vietnam In a dynamic market economy, we have to get ourself to find a competitive advantage in order to stay in the game In the race of this trade matter, intellectual property (IP) is an area bearing no less important role in the economy, as this is a very effective tool to promote, push development, contributions to the prosperity of each country According to history, although each object in the field of IP carries a certain role, but considering in relationships of trading in goods, both national and international, of Vietnam in the recent time, the category of trademarks (trademarks) take a more prominent position for the development of each enterprise This concept is closely binded to the process of goods circulation, and is one of the intellectual property assets with tremendous value, or can be considered as a major source of the business capital, in the period of extremely fierce, harsh competition from other competitors Trademark is a mean in which is recognized, protected and demonstrated the fruits of development, creating credibility, reputation, competitive advantage and other positive aspects of the business Moreover, the trademark also plays a very important part in protecting the interests of consumers and social order in general In this context, the violations related to trademarks are increasingly popular in number, with large scale and increasingly sophisticated, more complex, causing extremely serious consequences and negatives to all of the owners of the trademarks, to consumers and to society Therefore, the protection of industrial property rights on the trademark has always been a pressing issue, to be a priority concern, not only in Vietnam but also in almost any other countries in the world In the field of the protection of the law and the enforcement of law, which is currently still a new law, the work of applying the mechanism to implement and protect the trademark somewhat is effective yet completely It can be seen that to the current situations, regarding the increasing of trademarks infringements, they certainly stems from many causes and various bases Through this context, the author chose the topic " law on the protection of trademarks – the actual situations and recommendations", with the desire to study on the status of trademark laws, the underlying causes behind it, which will make the initial knowledge basis, from which the Thesis can then give out recommendations and corresponding to such situations, and to conquer, to understand the knowledge about legal protection of trademarks, as well as improve and enhance the effectiveness and efficiency of implementation these mechanisms further, in the scope of domestic and international point 2.1 Actual statement of the researching topic IP rights in general, as well as the protecting of the trademarks in particular is still a new field to exploit, which has been researching recently and relatively complicated toward the practical activities, as well as in theory in Vietnam Legal thinking on this issue has only been approached by the lawmakers of our country for around 10 years, a relatively short period of time compared to the history of formation and development of IP rights and laws on protection of IP rights in general Regardless, it is such a new land as stated, but IP rights are increasingly more concerned with time, the number of scientific projects, seminars, articles, research papers on IPR and trademarks in particular are growing in number and quality The study of trademarks is already mentioned in a number of scientific works, thesises and articles from scientific journals Some works, articles published about this issue include "Some issues about well known trademark" by Nguyen Nhu Quynh (Journal of Law, No 2/2001), "Protection of trademark in Vietnam "by Master Le Hoai Duong (Journal of the people's Court, No 10/2003), the scientific research projects such as" Some problems in the theory and practice of the protection of trademarks, service trademarks in the world and Improving methods of Vietnamese law on the protection of trademarks, service trademarks, "Dr Nguyen Thi Que Anh, master thesis, "Comparison law on trademark protection in Vietnam to international treaties and laws in some industrialized countries "by Vu Thi Phuong Lan; "Protection of trademarks under the law of Vietnam" by Tran Nguyet Minh; "Some issues of the protection of industrial property rights to the trademark in Vietnam under the provisions of civil law" by Vu Thi Hai Yen; etc Though it is an independent subject and not overlapping with such subjects, the author always willing to inherit, study the theoretical content of such scientific works, thesis, dissertations, and articles in scientific journals, and the archievements, lessons drawn from the reality that is corresponding to the topic 2.2 The researching questions While researching and studying for this topic, the author concluded and thus introduces here some basic researching issues through these respective researching questions:  What are the actual situations in respect with the mechanism of trademark protection and trademark enforcment recently?  Causes that led to the violations of laws on protecting rights to trademarks  What are the recommendations in order to improve and change the actual situations of breaches of laws on trademarks in Vietnam Purpose, subjects and scope of studying 3.1 Purpose of studying The study was made in order to provide the information about the current situations of violations of trademark law, the analysis of the causes that led to the rising of such violations From the results obtained, the Thesis will proceed to make specific recommendations to improve the effectiveness of enforcement mechanisms to protect trademarks 3.2 Subjects of studying Subjects of studying that the Thesis is intended to study are acts of infringement of law in reality, the implementation of the enterprises on selfprotection, the implementation enforcement of trademark protection mechanisms, measures to deal with violations by the relevant authorities 3.3 Scope of studying With limited understanding, in the context of the subject which is very wide and complex, with many issues to be resolved, the Thesis focuses mainly on the researching of trademark infringement situations in reality in Vietnam, the trademark infringement cases which have been occurring in provinces, cities across the country The thesis limits the scope of its researching in the trademark protection mechanisms, so the approach of the article is focused towards the trademark infringement and protection mechanisms, how to deal with trademark violations Methods of studying The thesis applies the knowledge learned on the basis of the methodology of Marxism - Leninism, the opinions on legal Government, innovation policies on international integration of the Communism Party, as well as knowledge in the legal documents of the Republic of socialist Vietnam The Thesis uses some methods such as analytical methods, comparision and aggregating of information collected in reality, historical research methods, as well as comparision to some other legal systems around the world to understand the position of the IP legal system in Vietnam Scientific significance and value of the Thesis This topic’s studying, first of all, is to equip knowledge for the author’s own, with the desire of contributing a small fraction of the knowledge to the world’s legal 61 the Law on Intellectual Property and research is still considered relatively novelty in the current period, especially when Vietnam becomes a member of the TWO, TPP The majority of those officers and employees, and the majority of enterprises, especially from small and medium-sized enterprises, the field of IP rights in general, as well as trademark protection in particular is extremely new and complex IP service network is still kind of thin, some new experts on this services are only about 200 people with over 30 companies offering this service In fact, to understand all aspects of a law on IP, it requires a period of researching, interacting and studying from time to time Economic difficulties and limitations that sow for law violations Based on a huge demand of a part of residential units without major financial conditions to purchase official well known trademark products, due to high costs, the demand for the quality of the product being pushed prices down secondary products, so in fact exists a huge contradiction between supply and demand for intellectual products Consumers tend to prefer to look for goods and services bearing well known trademarks with high prestige, but at the same time require the consuming cost at medium, low level Understanding the psychology in the market, the business entities, wanting to easily gain quick profits, consumption of its products, has violated law, specifically in the using of the violating trademarks illegally of other enterprises, which often are considered counterfeit goods, imitated trademarks 62 CHAPTER RECOMMENDATIONS TO THE ACTUAL SITUATIONS STATED From the above analysis of the protection and enforcement of trademarks in Chapter I and II, we can see that there are many to be done in the future if we want to influence to the reality of enforcment of trademark protection, in a more positive way, which mainly have to come from the causes that led to the actual current situations as mentioned in Chapter Accordingly, in order to implement solutions more effectively in establishing industrial property rights to trademarks of enterprises, depending on the resources, organization and management methods of the current state, the author shall introduce hereby some recommendations which, subjectively to the intentions of the author, carry the purpose of focusing on increasing the effectiveness in enforcement of trademark protection 3.1 Recommendations to improve IP law and other relating legal documents 3.1.1 Widen the definition of trademark One issue that yet to be put into the regulations of IP Law, are the trademarks that contain of visible signs, which has already been defined in the TRIPS Agreement, and further in the future shall be the TPP agreement, if the agreement becomes valid In fact, When participating in the TPP agreement, Vietnam shall be committed to recognize non-visible signs of the trademarks, which shall also be protected, so inadequacies of the law on this issue might be solved as a matter of time 3.1.2 Limit the conflicts of protection IP law holds the scope of protection for IP objects such as copyright, rights related to copyright, patents, industrial designs, trademarks (including goods 63 trademarks and service trademarks ), geographical indications, trade names, trade secrets, layout designs of semiconductor integrated circuits, plant variety rights Those are independent objects of rights on IP, which are protected under different provisions of IP law, with the conditions of protection, duration of protection, right contents of authors and owners are regulated tightly to each object The basis to arise, establish IP rights for these objects are also different However, in reality, an innovative results might be protected by various forms of IP rights For some objects of intellectual property rights, the protection is likely to be conflicted and overlapped We may consider cases, in which some enterprises are protected of trade names by law of IP, thereafter such enterprises register for trademark protection, using that owned trade names mentioned In this case, since the above signs, although protected under different manners of objects in IP law, but is actually owned by one single enterprise, so this shall all be considered conflicts in protection, in accordance with IP law Thus, the state of conflicts in IP law occur when with the same object, but the owner, who is a single entity, registers for protection under various objects of IP law Asides from the conflicts, overlapping protection phenomenon as stated above, in fact there have already been many cases that the trade name of a business is identical or confusingly similar to a trademark which is already protected by other entities ( as in the case of Interbrand Group mentioned) There might also be cases where identical protected trademarks are identical to geographical indications There are even cases in which the product packages protected of industrial designs containing identical or similar signs with signs to be protected as a trademark To prevent the conflicts of trademark protection to trade names, also with other IP rights, as they arise in reality, required solutions need to be comprehensive and coordinated IP law needs more specific regulations on the protection of trade names such as determining the scope of protection A mechanism should be made for closer cooperating between the State administrative bodies on intellectual property and the 64 business registration bodies, in order to limit the registration of business names identical to the protected trademarks existing 3.1.3 Specifically regulate about the apply of criteria for evaluation of whether or not a trademark is well known According to the Verdict No 03/2013/HC-ST dated 03.29.2013 of People's Court of Hanoi city, Marvel Co., initiated a lawsuit on the Department of Intellectual Property on the registration of the certification of trademark protection for the "household cosmetics" (group 03) to Household International Co., (Vietnam), providing that this act violates the well-known trademark X – men of Marvel Company To solve the above claims, it should be determined that whether the trademark X –Men is within the ownership of Marvel or not, and another futher important step, is that if the trademark shall be considered a well-known trademark associating with the iconic character X - Men in Vietnam or not Until the time that the Company “Hang gia dung quoc te” submitted the application, Marvel Characters Co., does not register for the products type of cosmetics, but only cultural products, such as films, books, games X-MEN which have been registered for protection rights Evidences that Marvel provided to the authorities have not been clearly identified X-MEN concepts of Marvel Characters Company is previously well known for its mutants, superheroes in the works of film, comic X-MEN by Marvel's company are the name of a group of X gene (mutation) human, who have the unusual ability, rather than any specific figures About the images, X - Men of “Hang gia dung quoc te” Company associated with the format of a "real man, gentlement" instead Consumers have not yet known of the cosmetic products from Marvel Characters, which led to the conclusion that there was no basis to conclude that the “Hang gia dung quoc te” company took advantage of Marvel’s well known trademark According to Article 75 on criteria for evaluation of whether or not a trademark is well known: 65 “1 The number of relevant consumers who were aware of the trademark by purchase or use of goods or services bearing the trademark, or from advertising The territorial area in which goods or services bearing the trademark are circulated Turnover of the sale of goods or provision of services bearing the trademark or the quantity of goods sold or services provided Duration of continuous use of the trademark Wide reputation of goods or services bearing the trademark Number of countries protecting the trademark Number of countries recognizing the trademark as a well known trademark Assignment price, licensing price, or investment capital contribution value of the So the point here, as we may have noticed, is that well known trademarks are different from common trademarks in its reputation in that trademark, which are recognized by a part of the community through trademarks advertising activities, through sales volume and selling goods or services to be provided However, the mentioned statutory criterias are only quantitative Specific number of how many of it remains to be decided based on the subjective evaluation of the judges in the Court We can also easily see lots of other regulation which are also quantitative in nature, such as the number of countries, the number of consumers to be determined The problem here is that when the authorities competent State bodies consider whether a trademark is well known or not, organizations and individuals need to provide the number of how many countries are registered trademarks, and similar problems follows in the case of number of consumers In other countries, under the British or America legal system, these regulations are often applied based on case law However, in the nature of the civil law system of Vietnam, no case law shall be recognized as a source of law Therefore, the law should be adjusted in this regard to be easier for the applying of law IP law and relating guiding documents should 66 regulate specific provisions on the application of levels to for evaluation of whether or not a trademark is well known, preventing the subjective will of the State authorities Besides, there is a conflict between the provisions of Clause Articles 75 of IP law on the number of nations protecting such trademarks and the provisions of Clause 20 of Article of Intellectual Property law The definition in Article requires the trademarks to only be known widely throughout the territory of Vietnam, while the mentioned criteria demands the number of nations, as stated 3.1.4 Improving the criteria of evaluation the seriousness of breaches in IP rights to trademark Pursuant to Section of the Joint Circular No.01 of the Supreme People's Court – the Supreme People's Procuracy, the Ministry of Public Security - Ministry of Justice, dated 20.02.200827, toward the producing of counterfeit trademark goods, it will be prosecuted for criminal responsibility to the level of assessment of serious, very serious and extremely serious behaviour The criminal prosecution for infringement of industrial property rights to trademarks herewith is based on the profit gained, the amount of damage caused to the trademark owner and the value of the infringing goods However, in fact, it is not easy to determine these criteria rightfully, and the profits, damages occurring has not always been honestly shown by violating entities According to the above comments, it is deemed that we should improve more on the evaluation of criteria on the seriousness of the breaches, especially in manner of a basis for criminal prosecution It is needed to set specific quantitative criterias in order to easily determinate, more objective, such as giving a specific range of profit, damage caused, the value of goods, and finally, cooperations from the State bodies are needed together to gather evidence, documents showing these criteria objectively and truthfully 27 Joint Circular No 01/2008/TTLT-TANDTC-VKSNDTC-BCA-BTP guiding the examination of penal liability for acts of infringing upon intellectual property rights 67 3.2 Recommendations on organzing to enforce law on trademark protecting 3.2.1 About the procedure of registration for trademark protection Coming from the reason stemming from the administrative procedures for the field of protection of trademark registration, which is not really favorable to trademark owners,it should be more diversified in forms of applications for protection, as well as simplifying procedures by creating better conditions for the petitioner to quickly lookup in the banking of trademarks effectively, by means of the internet or other means of media, technology Regarding the procedure for dealing with complaints, we should study, learn from the experience of those advanced countries, which have been very successful in implementation trademark protection rights, such as the United States, the European Community etc This should be done by a specialized IP Court This Court shall bring many advantages, as in the perspective of the trademark owner, this looks more of a body being capable of supporting the implementation of trademark protection, as well as recovering losses, settling complaints through the most optimal manner 3.2.2 Regarding the mechanism of dealing with breaches Regarding reasons coming from the mechanism of settling, handling violations which is not enough to deter trademark abuse behaviours; not enough to convince the damaged subject to voluntary use remedies as prescribed by law, it is needed to have changes the IP law, especially in the context of the economy, social of the country which is undergoing transformation, increasingly further integration into the global economy For details, raising the powers, especially in the powers on the administrative penalty decision by the competent State bodies Furthermore, decentralization should be implemented more sharply on each type of products, subjects Specifically, regarding the division of individuals or organizations violating, the influence from those kinds of behavior to society's general perception are different, as when a single individual violates on rights to trademarks, the nature and 68 scope of the behaviour shall not be as serious as the behavior of an entire organization working together to perform the violations Regarding the division by product, brand, all kinds of essential goods, basic human needs, such as food, agriculture, pharmaceuticals, should be raised in the the level of punishments, due to the dangerous and seriousness that such behaviours put to the society, especially to the level criminal penalty, rather than the administrative punishments, whose frame is not The level of the administrative punishment, thus is not reasonable, not enough to deter, warn the entities violating the trademark law in general So on this issue, the article gives some reccommendations as follows: Firstly, increasing the administrative fine frame in the recent time In some cases IPR laws as well as guidelines have specified the level of fines applying to individuals and organizations that commit acts of violation Accordingly, the maximum fine applicable to individuals is 250,000,000 VND, and it is times higher for the organization than to individuals - which is 500,000,000 VND However this fine level as identified by assessment of the European Commission of Commerce in Vietnam ( In order to minimize the infringement of rights to trademarks, we need to raise the bar for administrative punishment higher than the current regulations The level of fines should be calculated in proportion to the seriousness of the violations that may have done all in fact The provisions of the current maximum penalty should not be applied, because this mechanism has exposed the limitations in reality of handling infringement When penalties are not adequate, the rights and legitimate interests of trademark owners shall also not fully resolved and is not protected thoroughly Instead, we may set a specific figure which might be calculated by the legislators, or a recipe on how to compute the amount of fine to improve deterrents of this type of punishment Secondly, we should remove the provisions on warning remedy for violations of industrial property rights to trademarks in particular, since this measure does not have a high deterrents, leading to the ignorance of infringers, creating a thinking disregard 69 to the law Besides the infringement is of property, affecting production and business activities, thus there should be remedies of assets identical to apply to violators rather than just stop at the warning remedy 3.2.3 Regarding the states of cybersquatting Considering the state of protection of trademarks in the trend of growing cybersquatting cases , the author shall go over some comments, recommendations as follows: Firstly, it should be more transparent in the process of domain name registration organizations and individuals The registration of domain names with high probability of leading to major disputes later, directly with the existing trademarks respectively in reality, thus there should be a specific regulation for comparison between these subjects( between the registration of domain names and trademarks ownership of enterprises which probably can lead to disputes) This transparency can be expressed through the mass media such as news agencies, radio communications, websites of VNNIC Until then, that enterprises with infringement of trademarks can quickly realize such cybersquatting is ongoing, and thuscan choose the protection measures timely for themselves Secondly, it should be upheld of the principle of which organization, individuals applying to register for the domain names must explain the relationship of the domain name registrating with their business activities, and solely be responsible for the accuracy of the information provided to VNNIC Thirdly, enterprises should be encouraged, and given favorable conditions for the registration of domain names In fact, as mentioned, the costs and procedures, procedures for domain name registration for businesses under the current legislation is already very low and simple Therefore, the remaining issue lies in the cognition of such enterprises/ 70 3.2.4 Regarding of mechanism of cooperative between the competent State bodies The links of cooperation between the State management bodies together, in order to create effective work is always an indispensable element in all areas, let alone the field of protection of rights to trademarks There should be mechanisms and regulations on a more effective coordination between the State management bodies on IP with other relevant agencies, such as with business registration body on the subject of IP and of enterprise; with the Court to determine, assess trademarks and coordinate on dispute settlement cases; the inspectorates, police offices, customs offices to enforce the mechanism of protecting trademark rights to be effective, non-overlapping of jurisdiction 3.3 Other recommendations 3.3.1 Improving the cognition of the enterprises manager, and of community Regarding reasons come from the subjective consciousness of every individual engaging in trademark infringements, we can see that it’s the common problem of consciousness of every human themselve in the society, the community nowsaday This factor is particularly an important part and has a huge influence to the actual situations analyzed above, since considering it then, the legal issues and the application of the law , though how completed it is, however if not concretized by human actual behaviours, then it will only forever be theoretical Raising the cognition of entities violating the law will bring significant meanings to reduce the infringement in the future, in order to create a fair competitive environment, and some healthier standards of business on this competitive playground It is understood that, the main thing that led to this situation, the key is the personal interest, namely economic interests, in violation that the subject will be achieved if implementing violations, so the impact on the awareness of these subjects is one thing, while in addition, they must also affect the personal interests that this violation subject head for Particularly, regarding the author’s intention, the most basic thing to is to 71 substantially increase the administrative, criminal penalties in order to deter violators and let them consider and be aware that such violations will negatively affect their interests, rather than gaining benefit 3.3.2 Apply the principle ot determination of effectiveness between earnings and the levels of penalties to deal with violations, in order to build amounts of fine It should be considered, researched on the actual value between violations and the benefits that such behavior might be gained, in comparison with the level of penalties Currently, the value achieved when implementing violations is much larger than the fines for violations of the law (up to VND 250,000,000 remaining individuals to organizations is 2x for individuals - are 500,000,000) The adjustment of the level of penalties, on how to conform to the practice is subject to the market research, practice of violations from the lawmakers, but this level definitely should not be lower than that profits obtained when implementing, in order to avoid fact of business owners are willing to take part in infringement of trademark and also willing to pay the corresponding amount to pay penalties, to then collect the profits which are many times larger 72 REFERENCES Textbooks a Luật Sở hữu trí tuệ Việt Nam – University of Law HCM city b “Tình luật SHTT Việt Nam”, Hồng Đức – Hội luật gia Việt Nam publisher, p 241 Legal documents a Law on Intellectual property 2005, amended in 2009 b Criminal Code 1999, amended in 2009 c Civil Code 2005 d Decree No 103/2006/ND-CP September 22, 2006 detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property ( amended by Decree No 122/2010/ND-CP December 31, 2010) e Decree No 105/2006/ND-CP ngày September 22, 2006 detailing and guiding the implementation of a number of articles of the law on intellectual property on protection of intellectual property rights and on state management of intellectual property (amended by Decree No.119/2010/NĐ-CP September 30, 2010) f Circular No 01/2007/TT-BKHCN ngày 14/02/2007 of the Ministry Of Science And Technology, guiding the implementation of the governments Decree No 103/2006/ND-CP of september 22, 2006, detailing and guiding the implementation of a number of articles of the law on intellectual property regarding industrial property g Circular No 3/2010/TT-BKHCN dated 30/07/2010 on amending and supplementing a number of provisions of the Circular No.17/2009/TT- 73 BKHCN of June 18, 2009 and the Circular No.01/2007/TT-BKHCN of February 14, 2007 h Circular No 18/2011/TT-BKHCN July 22, 2011 amending and supplementing some provisions of the Circular No 01/2007/TT-BKHCN of February 14, 2007, being amended and supplemented by the Circular No 13/2010/TT-BKHCN of July 7, 31, 2010 and the circular no 01/2008/TT-BKHCN of February 25, 2008, being amended and supplemented by the Circular No 04/2009/TT-BKHCN of March 27, 2009 i Circular No 05/2013/TT-BKHCN February 20, 2013 amending the Circular No 01/2007/TT-BKHCN dated February 14th 2007, guiding the implementation of the government's Decree No 103/2006/ND-CP elaborating a number of articles of the law on intellectual property applicable to industrial property, amended in the Circular No 13/2010/TT-BKHCN dated July 30th 2010 and the Circular No 18/2011/TT-BKHCN dated july 22nd 2011 j Joint Circular No 01/2008/TTLT-TANDTC-VKSNDTC-BCA-BTP of February 29, 2008, guiding the examination of penal liability for acts of infringing upon intellectual property rights k Directive 89/104 and Regulation 40/944 of EC l Paris Convention for the Protection of Industrial Property in 1883 m TRIPS Agreement on aspects related to the trade of intellectual property rights in 1995 n Trans-Pacific Partnership Agreement (TPP) Essays on scientific magazines, articles a Cẩm nang SHTT - Tổ chức SHTT giới, p 66 74 b Nguyễn Thị Yến et al., - “Nhãn hiệu hàng hoá vấn đề pháp lý liên quan: Thực trạng Việt Nam, Viện Kinh tế Quản lý, Đại học Bách Khoa Hà Nội” c Nguyễn Xuân Quang, “Thực trạng bảo vệ quyền sở hữu công nghiệp nhãn hiệu biện pháp hành giải pháp hồn thiện pháp luật”, Tạp chí dân chủ pháp luật d Eurocham, White book 2014, p 47 e David Kitchin (2005), Kerly’s Law of Trade Trademarks and Trade Names, Nxb Sweet & Maxwell, p.13 Other documents a “Lịch sử pháp luật nhãn hiệu Việt Nam” http://www.trademarks.vn/kien-thuc-nhan-hieu-hang-hoa/lich-su-phap-luatnhan-hieu-viet-nam.html b Lê Ngọc Lâm, Phó Cục trưởng Cục SHTT “Hưởng ứng Ngày SHTT giới năm 2015”) http://www.votricong.net c “Gần 3.000 đơn đăng ký nhãn hiệu chưa xử lý năm 2014” http://dangcongsan.vn/khoa-giao/gan-3-000-don-dang-ky-nhan-hieu-chuaduoc-xu-ly-trong-nam-2014-299342.html d “Quyền SHTT bối cảnh hội nhập” http://daibieunhandan.vn/ONA_BDT e “Nhận thức người tiêu dùng nhãn hàng riêng nhà bán lẻ/hệ thống cửa hàng” http://www.nielsen.com/vn/vi/insights/2014/2014-private-label.html) f Lawyer LÊ QUANG VINH, Bross & Partner Law firm, “Coi chừng thương hiệu!”, http://nld.com.vn/kinh-te/coi-chung-mat-thuong hieu 20160723220803166.htm 75 ... Definition on protection and enforcement of trademarks Protection of trademarks is an IP right, a recognizing of law toward the function of trademarks Protection of trademarks requires the subject... law on the protection of trademarks – the actual situations and recommendations" , with the desire to study on the status of trademark laws, the underlying causes behind it, which will make the initial... Structure of the Thesis The Thesis consists of: The Opening session, Referrences and the main Chapters: CHAPTER THEORETICAL BACKGROUND OF TRADEMARK PROTECTION – COMPARING WITH REGULATION OF SEVERAL OTHER