Does Vo Tran Co.,Ltd. have the right to affirm that products bearing HP, Epson and Canon brands are genuine or counterfeit goods?
Vo Tran Co.,Ltd. is a representative of industrial property rights authorized by: (i) Hewlett-Parkard Development Company, the U.S.A. (HP), (ii) Seiko Epson Corporation – Japan (Epson), (iii) Canon Kabushiki Kaisha – Japan (Canon) to perform transactions related to implementation of industrial property rights for the protected brands of the companies mentioned above.
On March 25, 2010, Vo Tran Co.,Ltd. filed a petition to the Market Management Office of Can Tho Province for dealing with the counterfeit goods which infringed the intellectual properties of the printer inks of HP, CANON and EPSON. After an inspection at PL Information Technology – Electronics – Electro-Refrigeration Co.,Ltd., the No.6 Market Management Team of Can Tho Market Management Office had temporarily kept 44 HP printer ink boxes and 04 Canon printer ink boxes.
After taking photographs of the goods samples of PL Information Technology – Electronics – Electro-Refrigeration Co.,Ltd. which was temporarily kept by the No.6 Market Management Team, Vo Tran Co.,Ltd. introduced an official document affirming that these goods were brand-counterfeiting ones and requested the Market Management Office of Can Tho City to deal with this action of trading and storing brand-counterfeiting goods of PL Co.,Ltd.
After considering the official document of Vo Tran Co.,Ltd. and examining the temporarily kept goods, the No. 6 Market Management Team made a report of administrative violations in the field of industrial property, asserting that the action of PL Co.,Ltd. had violated Item 4; Point a Item 5; Point a Item 6 Article 15 of Decree 106/2006/NĐ-CP dated September 22, 2006 of the Government on penalties for administrative violations in the field of industrial property.
The Market Management Office of Can Tho City has requested the Inspection Office of the Ministry of Science and Technology to provide instructions and decide whether Vo Tran Co.,Ltd. has the right to affirm that products bearing HP, Epson and Canon brands are genuine or counterfeit goods or not?
After considering the irequest of the Market Management Office of Can Tho Province and the related documents and evidence, basing on the current legal regulations, on June 29, 2010, the Inspection Office of the Ministry of Science and Technology provided the instructions on the issue raised by the Market Management Office of Can Tho Province as follows:
- Vo Tran Co.,Ltd. (represented by Ms. Võ Thị Minh Tâm) is the authorized industrial property representative of SEIKO EPSON CORPORATION (Japan), the owner of the brand “EPSON” in accordance with the authorization paper formed on March 14, 2005; of CANON KABUSHIKI KAISHA (Japan), the owner of the brand “Canon” in accordance with the authorization paper formed on December 01, 2009; of Hewlett-Packard Company (the U.S.A.), the owner of the brand “HP, Invent & Logo” in accordance with the authorization paper formed on June 10, 2009.
- Point d, Item 1, Article 23 of Decree 105/2006/NĐ-CP prescribes: The person petitioning for violation handling measures must attach to the petition the following documents and evidenceand objects to prove his/her petition:
+ Evidence and objects relating to counterfeit goods violating IP laws …
- Article 6 of Decree 105/2006/NĐ-CP prescribes: The person petitioning for violation handling measures has to ensure and be responsible for the truthfulness of information, documents and evidences that he/she provides. If the person petitioning for violation handling measures abuses his right to petition for violation handling measures for the purpose of unfair competition, causing damage to other individuals and organizations, he/she has to pay damages.
- Item 2, Article 20 of Decree 106/2006/NĐ-CP prescribes: The authority dealing with violations can examine and verify evidence, request the police to examine and verify evidence proving the legitimate status of the right holder and the acts of infringement, or ask for an official assessment when necessary.
On the basis of the above regulations, Vo Tran Co.,Ltd. – as the authorized industrial property representatives of the right holders mentioned above – has the right to provide documents and evidence relating to the brand-counterfeiting goods to prove their petition rights, including its statement affirming that those products are the goods counterfeiting the brands “EPSON”, “Canon”, “HP, Invent & Logo”. However, if Vo Tran Co.,Ltd. provides false information, causing damage to other organizations and individuals, they will have to pay damages in accordance with Article 26 of Decree 105/2006/NĐ-CP.
In terms of determining brand-counterfeiting actions, the right holder or the authorized representative of the right holder is the one who can fully understand the protection scope, has enough information and measures to recognize genuine goods or goods counterfeiting their brands. Therefore, the draft of Decree amending Decree 106/2006/NĐ-CP, which will be promulgated in the forthcoming time, prescribes more clearly the responsibilities of the industrial property right holder in providing information, documents, and samples to identify of the infringing indications and distinguish between genuine and counterfeit goods. The authority dealing with the claimed infringement can base on the statement affirming the trademarkcounterfeiting goods made by the industrial property right holder to decide whether the claim of infringement is acceptable or not, but the authority who has decided the case is legally responsible for his/her conclusion of infringement and his/her decision on the case./.