This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
People’s Court of Hanoi City, Viet Nam [2018]: P & CSPA v D Technology Development Support Joint Stock Company, Case No. 36/2018/KDTM-ST
Date of judgment: October 19, 2018
Issuing authority: People’s Court of Hanoi City
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civin( �br>
Subject matter: Industrial Designs; Enforcement of IP and Related Laws
Plaintiff: P & C.S.P.A.
Defendant: D Technology Development Support Joint Stock Company
Keywords: Industrial design, Infringement
Basic facts: The plaintiff is an Italian company and a leading global manufacturer of two-wheeled vehicles. It is the owner of Industrial Design Patent No. 20652, officially granted by the National Office of Intellectual Property of Viet Nam under Decision No. 11839/QD-SHTT dated February 27, 2015, for the product design of the “P” scooter series.
The defendant has registered its business and been licensed to carry out the production of motorbikes, and to do business in the Vietnamese market. It is the registered owner of a number of trademarks relating to its motorbike business, including for product “D”, an electric motorbike. The defendant wished to expand its business to also include electric motorbikes and bicycles. However, before proceeding with the production and trading of electric motorbikes and bicycles, the defendant requested an appraisal of the industrial design of the new products that it intended to produce and sell, from the Viet Nam Intellectual Property Research Institute (VIPRI).
On September 7, 2016, VIPRI issued its industrial property assessment No. KD054-16YC/KLGD, concluding that the design of the proposed electric motorbikes, as shown in the appraisal documents submitted for inspection, are not copies of any registered industrial designs for motorbikes, mopeds, scooters, bicycles, or electric motorbikes in Vietnam.
On January 13, 2017, at the request of the plaintiff, VIPRI issued industrial property assessment No. KD001-17YC/KLGD, concluding that the electric motorbike design produced by the defendant infringes the plaintiff’s registered industrial design No. 20652.
Accordingly, the plaintiff brought an action against the defendant for infringement of its registered industrial design in the “P” scooter series.
Held: The People’s Court of Hanoi City found in favor of the plaintiff.
Relevant holdings in relation to emerging issues in industrial designs: The Court ordered,inter alia, that the defendant:
1. Cease its unlawful use of the plaintiff’s industrial design, as protected under Industrial Design Patent No. 20652, and that the defendant and its affiliates cease use of any designs that are not significantly different from the plaintiff’s protected design;
2. Pay damages in the amount of VND 217,584,500, as compensation to the plaintiff for the following amounts:
a. Legal fees of VND 200,000,000;
b. The cost incurred to buy a model car for inspection, amounting to VND 7,227,000;
c. The fee for obtaining a certificate of the bailiff, of VND 3,960,000; and
d. The fee for obtaining an industrial property appraisal, of VND 6,397,500;
3. Carry out procedures at the Registry Department to cancel the Vehicle Type Quality Certificate for the infringing product;
4. Remove the infringing parts of the motorbikes and destroy these; and
5. Publish a public apology for having infringed on the plaintiff’s intellectual property rights in three consecutive issues of the Thanh Nien newspaper.
Relevant legislation:
Article 126, Article 202, Article 204, and Article 205 of Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property