How are sanctions for the act of counterfeiting of beer brand SAIGON?

1. Violation

BiVa production facility produces beer with the brand name SAIGON VIETNAM to sell to the market with designs, product marks that are likely to cause confusion about the origin of goods for the protected trademark of Saigon Beer, owned by the Saigon Beer - Alcohol - Beverage Corporation (Sabeco).

The above-mentioned act violated the intellectual property law on industrial property rights. According to Clause 1 Article 129 of the Law on Intellectual Property 2005 of Vietnam, the following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

- Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;

- Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

- Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

- Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.

Regarding the definition of industrial property rights, according to Clause 4 Article 4 of the Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property in 2009: Industrial property rights means rights of organizations and individuals to inventions, industrial designs, layout-designs of semiconductor integrated circuits, trade secrets, marks, trade names, geographical indications and trade secrets they have created or own, and the right to repression of unfair competition.

Regarding the definition of well-known mark, according to Clause 20 Article 4 of the Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property in 2009: Well-known mark means a mark widely known by consumers throughout the Vietnamese territory.

Sabeco's SAIGON beer is a famous brand that has existed for a long time and is known by many Vietnamese people. Therefore, the act of brewing SAIGON VIETNAM beer (using words, colors, logo images that coincide with the protected mark) is an infringement of the rights to a mark, specifically here an infringement of a well-known mark.

2. Legal responsibility:

With the discovery of more than 4700 cases of finished beer, of which the price ranges from VNN 130.000 to VND 160.000, the total value of infringing goods has increased to more than VND 500 million. Therefore, BiVa company is subject to the following sanctions:

- Administrative sanctions: According to Clause 12 Article 11 of Decree No. 99/2013/NĐ-CP of Vietnam’s Government, the fines are from VND 200.000.000 to VND 250.000.000.

- Criminal sanctions: According to Point b Clause 4 Article 226 of the Criminal Code 2015 of Vietnam, BiVa production facility shall be liable to a fine of from VND 2,000,000,000 to VND 5,000,000,000 or has its operation suspended for 06 - 24 months.

Legal bases:

- Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property in 2009

- Law on Intellectual Property 2005 of Vietnam

- Decree No. 99/2013/NĐ-CP of Vietnam’s Government

- Criminal Code 2015 of Vietnam

Nguyen Phu

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