6 Takeaways from Claims for Damages Due to Intellectual Property Right Infringement at Vietnamese Courts | 6 Takeaways from Claims for Damages Due to Intellectual Property Right Infringement at Vietnamese Courts

6 Takeaways from Claims for Damages

Due to Intellectual Property Right Infringement at Vietnamese Courts

Attorney Le Quang Vinh – Bross & Partners

Tort claims in IP-related civil cases are the lawsuits filed with a competent court to claim compensation for the loss the IP right holder (plaintiff) has suffered from the infringement of patent, trademark, or copyright committed by the IP infringer (defendant). Ranked Tier 1 by Legal 500 Asia Pacific with diversified IP litigation experience, Bross & Partners has drawn 6 takeouts from IP lawsuits claiming for damages in Vietnam.

1. Wide Scope and Subjects of Actionability. Infringement of any intellectual property rights that are protected by Vietnam may lead to the establishment of a right to claim damages. Thus, scope of IP subjects as legal bases for claiming damages is very wide. In particular, a petition may be replied upon exclusive rights that are granted protection titles such as patents for inventions/utility solutions/industrial designs; certificates of layout-design of integrated circuits, plant varieties protection certificates, certificates of trademark registration, certificates of registration of geographical indications; or a claim may be also based on exclusive rights that do not require registration, namely well-known trademark, trade names, business secrets (trade secrets), anti-unfair competition, copyright and related rights (neighboring rights).

2. Burden of proving shall be made by the injured party. The actual loss and the extent of damage rest with plaintiff or even defendant (if an accepted counterclaim is filed by defendant). But it should be noted that the extent of damage must be determined in accordance with the infringement elements applicable for each IP subject. Evidence of damage must be provided, which may include expert opinion and declaration of damage wherein bases for determining and calculating damages must be clearly identified.

3. Damages subject to a claim must be actual loss calculable under one of three methods.[1] The IP law requires that damages subject a claim be calculated as monetary value on the ground of actual loss and causal relationship between the actual damage and the infringement. Three methods of damage calculation may be chosen by a claimant comprise:

(a) Total material damage in monetary value plus profits earned by the defendant due to IP infringement, if the plaintiff's reduced profits have not been included in the total material damage.

(b) Royalties payable for licensing the right to use an IP subject assuming that the defendant is transferred the right to use such IP subject by the plaintiff under the license agreement to the extent corresponding to the infringement committed.

(c) Where compensation amount for material damage cannot be determined by one of two methods above, damage amount 500 million VND ($22,000) at maximum may be decided by the court depending on the extent of damage.

4. Compensation for mental loss does not exceed 50 million VND. With respect to compensation for mental loss, the plaintiff can also ask the court to force the defendant to pay compensation for mental loss within the range of 5 million to 50 million VND ($220-$2,200) depending on the extent of the spiritual damage.

5. Compensation for material loss is not limited to the maximum amount. The damage incurred pertaining to tort liability shall be actual loss or mental loss caused directly by the IP infringement. That is, actual loss is only accepted if all three of the following grounds are met:

(a) The material or spiritual benefits are real and belongs to the aggrieved person; and

(b) The aggrieved person is able to obtain the benefits in point (a) above; and

(c) There is a decrease or loss of benefits of the aggrieved person after the infringement occurred in comparison with the possibility to obtain such benefits when there was no infringement, and the violation is the direct cause of reduction or loss of the benefits.

6. Lawyers’ fees are claimable. Both plaintiff and/or defendant (with submitted counterclaims) can ask the court to compel the other party to pay the attorney's fees, and other costs such as expert opinion, preservation, storage, provisional emergency measures, rectification of information in the mass media, costs for remedying and preventing infringements.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has litigation experience regarding tort liability for IP infringement before Vietnamese courts.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.

[1] According to point c, clause 1, Article 205 of the IP Law 2022, in fact, the fourth method of damage calculation is that the right holder can apply another calculation by himself as long as it is consistent with the provisions of law.