The fact
According to the Vietnamese press, from August to the end of 2005, the Market Management Departements (MMD) of several provinces throughout the country have inspected series of motorcycle shops and seized a great quantity of motorbikes and spare parts suspected of infringing Japanese Honda's registered industrial designs. Later, many inspected shops and stores have been fined by the relevent People’s Committees for « putting into circulation motorbikes and spare-parts which are essential constitutive elements of Honda’s registered motorbike's designs, without the owner's permission ». In Khanh Hoa province, the total fines imposed on infringing shops amounted to about VND 167,6 million (USD1.060). The same measures have been applied in Vinh Long, Da Nang, Ha Noi and Ha Tay.
In fact, the above mentioned shops sell motorbikes manufactured by T&T Co. Ltd.. This Hanoi based company uses a number of plastic spare parts supplied by United Motor Vietnam to make motorcycles bearing different trademarks such as Noble, Majesty, Fanlim and Guida. Among them, Noble is considered as the most sold in the market place. T&T Co. Ltd. has filed with the National Office of Intellectual Property (NOIP) several design applications and design seach requests for motorbikes.
Upon inspecting and discovering alleged design infringment, local MMDs usually seal off, make inventory and take photographs of the allegedly infringing goods. A set of pictures is later sent to the NOIP for determining whethere there is infringement or not.
On October 18, 2005, the NOIP issued a Letter No. 2029/SHTT in response to Vinh Long MMD's request wherein it confirmed that the motorbike design bearing the Noble trademark as per the photographs submitted by Vinh Long MMD is not substantially different from the design being protected under Design Patent No. 4306 in the name of Honda Motor Corp. Particularly, most of the plastic spare parts are not substantially different from those of the registered design. Further, in Letter No. 2248/SHTT-TTKN dated November 17, 2005, the NOIP also confirmed that motobike designs under T&T Co. Ltd.'s search requests were different from those submitted by Vinh Long MMD.
Insisting that its motobikes do not infringe Honda's design, T&T Co. Ltd. disagrees with the NOIP's opinion. The company has therefore filed complaints to relevant local authorities arguing that the MMDs have seized the goods of its distributors without just reasons causing damage to them.
The case became more complicated as inspection organs intervened. According to « Enterprise Forum Newpaper », inspectors under Hanoi Science and Technology Service has inspected T&T Co. Ltd's premises and concluded that the company did not infringe Honda's motobike designs. Inspectors under Ministry of Science and Technology has also inspected United Motor Vietnam's premises with the same conclusion.
Comments:
Vietnamese motorcycle manufacturers usually concentrate their investments in premises and equipments and ignore investment in intangible industrial property. Lacking own designs, they often reproduce and imite those the Vietnamese consumers are already familiar with and fond of. Infringement of motorbike protected designs, especially Japanese ones, is therefore common.
Upon discovering violation of their rights, the owners of registered industrial designs usually choose administrative action, rather than civil one, as it is actually considered as the most effective way to deal with infringement of industrial property rights.
The Vietnamese Government’s willingness in the recent time to fight more effectively with the rampant infringement of motorcycle designs seems to have strengthened administrative measure. Established specially to deal with this problem, the Central Directive Committee No. 127, has immediately issued Letter No. 6234/BCDTU stating that upon discovering motorbikes suspected of infringing registered industrial designs, provisional seizure may be conducted before contacting with the owner of the suspected goods or his industrial property representative to clarify the issue, or after issuance of expert opinion by a competent organisation confirming the infringement.
Settlement of industrial design infringement by administrative action has however raised the following controversial issues:
- The owner of a registered industrial design may request the relevant MMD to inspect and provisionally seize or seal off the suspected infringing goods. However, seizure procedure is not clearly provided by current law, particularly as to the term of detention and seal off and the amount of security deposit aimed at compensating the owner of the seized goods in case no infringement is eventually found. That’s why the measure applied by the MMDs in Honda’s design case has been strongly criticised by the domestic media which in most cases presented the fined shops as victimes.
- At present, examination and determination of whether there is infringment of industrial design rights is usually made by the NOIP. According to « Enterprise Forum Newspaper », T&T Co. Ltd. does not agree with the NOIP's conlusion, and proposes to involve an independent expert organization in order to obtain a more impartial opinion. The problem is that there is actually no other organisations or specialists recorgnised to be able to give expert opinion on industrial property matters. Moreover, it is unclear whether inspection organs under Minstry of Science and Technology and local Services of Science and Technology may provide such opinion.
- To determine whether there is design infringement, the NOIP compares the suspected design with the registered one to find out if there is «substantial difference» between them. However, there is no explicit guideline for determining how two designs are considered as « substantial different ». Therefore, the criteria remains controversial and some officials critcize its use. An official of Ministry of Science and Technology (which controls the NOIP) was quoted by the press as saying that the «substantial different» criteria is not objective.
- Other problem is the practice by the NOIP of comparing the photographs of the suspected design with the registered one, rather than the real samples of the allegedly infringing goods. Some consider that comparing pictures may lead to inexact conclusion.
