Case Background
- The plaintiff, P & C.S.p.A, a leading global manufacturer of two-wheel vehicles, is the owner of Vietnamese Industrial Design Patent No. 20652, granted on 27 February 2015 for the scooter model “P.”
- The plaintiff claimed that the defendant produced and marketed electric scooters whose designs were “not significantly different” from the protected scooter design.
- The similarities included the front head section, circular headlamp, widened leg shield, spacious footrest, and tapering rear section.
- The Intellectual Property Science Institute (VIPRI) conducted an examination and concluded that the defendant’s electric scooter constituted an infringing element of the protected industrial design under Patent No. 20652.
Hanoi People's Court, where the judgement was held
Court’s Assessment
The Court held that:
- The defendant’s electric scooter design infringed industrial design rights of the plaintiff in accordance with Article 126(1) of the Law on Intellectual Property (IP Law).
- Evidence including notarized records (vi bằng), invoices, and type approval certificates showed that the defendant’s products matched the disputed design in question.
Court’s Decision
The Court fully upheld the plaintiff’s claims and ordered the defendant to:
- Cease infringement and stop using the protected “Motorbike” industrial design under Patent No. 20652.
- Pay damages of VND 217,584,500, including legal fees, purchase of a sample vehicle, notarization costs, and IP examination costs.
- Request the Vietnam Register to cancel the Type Approval Certificate of the infringing vehicles.
- Publicly apologize to the plaintiff in three consecutive issues of Thanh Niên
- Remove and destroy infringing elements on all inventory products and those at dealerships.
- Bear first-instance court fees of over VND 11 million.
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The Judgement No. 36/2018/KDTM-ST in
Legal Significance
This judgment affirms that once an industrial design is protected, the manufacture and circulation of products with a design “not significantly different” also constitutes infringement. It emphasizes the importance of timely registration of industrial designs to secure enforceable rights and effective remedies against infringements.
For detailed advice on industrial design registration and enforcement in Vietnam, please contact Á Đông IP for professional assistance.
Source: Judgment No. 36/2018/KDTM-ST, People’s Court of Hanoi City (excerpted from the Supreme People’s Court Portal: congbobanan.toaan.gov.vn)
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