Intellectual Property Law Firm in Vietnam
Kenfox IP & Law Office
Thanh Xuan District
Hanoi 10000
Vietnam
Other Offices: Phnom Penh Vientiane Yangon
Free Consultation
Kenfox IP & Law Office Overview
KENFOX IP & Law Office is a full-service firm based in Hanoi with additional offices in Laos, Myanmar, and Cambodia that serves clients around the world, with a special emphasis on intellectual property (IP) law. The firm’s IP practice includes trademarks and copyrights, patents and industrial design, geographical indication, and related matters. Additional practice areas consist of investment and enterprise, licensing and technology transfer, registrations, and civil litigation cases.With the attorneys’ and lawyers’ broad knowledge, expertise, and experience in a variety of sectors, KENFOX IP & Law Office is well positioned to help clients achieve their goals. More flexible than traditional big law offices, the firm works to meet each client's needs in a productive and cost-effective manner.
KENFOX IP & Law Office serves clients of all sizes, from start-up visionaries, governments, and state-owned entities to widely recognized and well-established international businesses. Guided by the global business principles of quality, unity, and integrity, the firm aims to provide the highest standards of legal services while focusing on clients’ objectives and reaching the best results.
Kenfox IP & Law Office Areas of Law
- Bankruptcy
- Business Law
- Banking & Finance
- Business Formation
- Industry
- International Law
- Litigation
- Tax
Additional Areas of Law: Industrial Designs; Geographical Indication; Invention & Utility Model; Domain Name Registration; Investment Procedures & Enterprise Registration; Food Criteria Registration; Food Laws; Labelling Requirements; Packaging & Container Regulations; Food Additive Regulations; Import Procedures; Veterinary Registration; Franchising Registration; Licensing & Technology Transfer; Plant Protection Products; Medicine Registration for Circulation; Cosmetic Registration; Domain Name Proceedings; IPR Enforcement; Customs Recordal; Bad Faith Trademark Filing & Registration; Trade Secret; Trademark Registration Cancellation; Protection of Property Rights.
Kenfox IP & Law Office Areas of Law Description
- Intellectual Property in Vietnam
Patent & Utility Solution;
Industrial Design;
Trademark;
Copyright and Related Right;
Plant Variety Protection;
Transfer of IP right;
Management & Evaluation of intellectual assets;
Enforcement of IP right (watching service, handling IP infringement, customs recordal).
Filing an application for examining and supervising IP related imports/exports at the Vietnamese customs
- Business Matters
Business Registration
Registration of a domain name
Investment procedures
Food Criteria Registration
Medicine registration for circulation in Vietnam
Registration of product quality
Veterinary registration
Cosmetic Registration
Medicine registration for circulation in Vietnam
Renewal of medicine registration
Plant protection products
Licensing & Technology Transfer
- Other Services
Translating documents from foreign languages into Vietnamese and vice versa;
Design trademark, website;
Importing food products, functional food products into Vietnam or procedures for obtaining food import permit/certificate;
Importing cosmetic products into Vietnam or procedures for obtaining cosmetic import permit/certificate;
Importing plant protection products into Vietnam or procedures for obtaining Pesticide Registration Certificate;
Importing pharmaceutical products into Vietnam or obtaining pharmaceutical product license.
Laos
Patent / Petty patent;
Industrial Design;
Trademark.
Cambodia
Invention / Utility Model;
Industrial Design;
Trademark.
Myanmar (Burma)
Patent;
Industrial Design;
Trademark.
Partners
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Ngo Thu Huong
Partner Copyright, Intellectual Property, Patents, Trademark |
 |
Mr. Duong Phuc Kha
Partner Commercial Law, Copyright, Intellectual Property, International Law, Litigation |
 |
Mr. Chu Thanh Tu
Partner Commercial Law, Intellectual Property, International Law, Litigation |
Associates
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Ms. Dao Thi Thuy Nga
Associate Copyright, Intellectual Property, Patents |
Kenfox IP & Law Office Affiliations
- Vietnam Bar Federation
- Hanoi Bar Association
- Vietnam Intellectual Property Association
- International Trademark Association (INTA)
More Information on Kenfox IP & Law Office
Trademark Law Firm in VietnamVietnam Patent Lawyers
Copyright Law Firm in Vietnam
Vietnam Industrial Design Lawyers
Investment Procedures & Enterprise Registration Law Firm in Vietnam
Vietnam Franchising Registration Lawyers
Domain Name Registration Law Firm in Vietnam
Kenfox IP & Law Office News and Publications
Articles Published by Kenfox IP & Law Office
What Factors Should You Keep in Mind When Filing a Trademark Opposition in Myanmar?
In Myanmar's dynamic and evolving business landscape, trademarks play a pivotal role in differentiating brands and establishing consumer trust. The country's recent enactment of the Trademark Law provides a robust framework for intellectual property protection, empowering businesses and individuals to safeguard their brand identities. A key aspect of this process is the ability to file an objection or opposition to a trademark application, ensuring that only eligible and deserving marks are granted registration. In this comprehensive guide, we explore the procedures, important considerations, and legal aspects of filing an objection to a trademark application in Myanmar.
Read ArticleHow Are Border Control Measures Enforced to Safeguard Trademark Rights in Myanmar?
Intellectual property rights are essential for fostering innovation, creativity, and economic growth. In an effort to safeguard these rights, Myanmar has implemented a customs recordal procedure, as stipulated in the new Trademark Law under Sections 68-76. In addition, Myanmar’s Ministry of Planning and Finance issued Notification No. 50/2023, which sets out the rules, requirements, and procedures for registered trademark owners to protect their intellectual property rights through customs recordation. This procedure empowers right holders to take swift action against counterfeit goods entering the country's trade routes. By providing a clear framework for examination and decision-making, the law aims to protect the interests of intellectual property rights holders and foster a conducive environment for legitimate trade.
Read ArticleWhat Are Key Considerations for International Trademark Registrations Designating Vietnam?
Over 9,000 international trademark applications designating Vietnam were filed annually from 2020-2022 has partly reflected the convenience and efficiency of the Madrid system in assisting IPR holders to secure protection for their brands in Vietnam. The Madrid System offers efficiency, cost savings, and a simplified approach to international trademark registration. These advantages make it an increasingly preferred option for businesses seeking to protect their brands in multiple countries, including Vietnam, as it streamlines the process and provides a cost-effective means of securing global trademark rights.
Read ArticleAn Overview and Implications for Patent Dispute Resolution Under Myanmar Patent Law 2019
In Myanmar, as in many other countries, the ownership of inventions created during the course of employment can lead to complex legal questions. When employees develop new innovations related to their employer's work or using the employer's resources, the determination of patent ownership becomes crucial for fostering innovation, protecting intellectual property rights, and maintaining a fair balance between employers and employees.
Read ArticleFiling a Patent Application in Myanmar – 10 Noteworthy Considerations
Filing a patent application in Myanmar is a crucial step in securing protection for innovative inventions. The process requires meticulous attention to detail and adherence to the relevant provisions outlined in Sections 18 to 29 of the Myanmar Patent Law. This guide provides a comprehensive overview of the patent registration requirements, along with other important points to assist applicants in navigating the application process successfully.
Read ArticlePatent Registration and Protection in Myanmar
Eligibility for Patent Protection in Myanmar In Myanmar, patent protection is officially recognized under the Patent Law 2019. A patent is a form of intellectual property right granted to protect an invention, which is defined as any product or creation related to a production process that can solve a particular problem in a technical field, including minor inventions. Minor inventions are considered as technical creations that encompass new forms of a product, new structures of the parts of a product, or parts of a product that enhance its utility or performance.
Read Article10 Key Points From Vietnam's New IP Decree No. 65/2023/ND-CP
In line with new regulations under the amended 2022 Intellectual Property Law (IP Law), on August 23, 2023, the Government issued Decree No. 65/2023/ND-CP (Decree) to detailing a number of articles and measures to implement the IP Law on industrial property, protection of industrial property rights, rights to plant varieties and state management of intellectual property. This Decree supersede Decree No. 103/2006/ND-CP and some parts of Decree No. 105/2006/ND-CP as amended and supplemented. KENFOX would like to provides 10 salient aspects of the Decree, shedding light on the changes and new mechanisms so that industrial property rights holders should grasp and adjust their strategies to effectively safeguard their intellectual property assets in Vietnam.
Read ArticleEffective Legal Routes to Tackle Trademark Infringement in Myanmar
Myanmar's commitment to safeguarding intellectual property rights (IPR) and fostering innovation-driven growth is evident in its comprehensive Trademark Law, which provides a robust framework for right holders to protect their trademarks against infringement. Sections 77-86 of the law outline the options, responsibilities, and measures available to right holders seeking to take action against trademark violations in the country. In this article, we delve into the key provisions of these sections, shedding light on the procedural aspects and civil remedies available to protect trademark rights in Myanmar.
Read ArticleTrademark Invalidation and Cancellation in Myanmar – Critical Considerations
Myanmar, a nation with a rich cultural heritage and a burgeoning economic landscape, has made remarkable strides in strengthening its legal framework for trademarks. With the enactment of the Trademark Law, the country has demonstrated a commitment to protecting and preserving the integrity of registered marks. At the heart of this legislation lie Sections 50, 51, and 52, pivotal provisions that tackle crucial aspects like invalidation, cancellation, and the prohibition of the use of canceled or refused marks. Together, these sections play a pivotal role in empowering stakeholders, fostering fair competition, and ensuring transparency within Myanmar's trademark system. In this article, we will focus on the details of each section and examine their significance in safeguarding trademark rights in Myanmar.
Read ArticleTrademark Licensing in Myanmar – What You Need to Know
In the dynamic world of intellectual property, trademarks play a crucial role in distinguishing products and services from one another. Myanmar's Trademark Law, in its Sections 45 to 49, introduces the concept of licensing for registered marks, providing trademark owners with a mechanism to grant permission to other individuals or legally formed organizations to use their marks. This legal framework not only facilitates the responsible use and commercialization of trademarks but also ensures the protection of all parties involved.
Read ArticleHow to Renew Trademark Registrations in Myanmar?
In the dynamic landscape of intellectual property rights in Myanmar, trademarks play a pivotal role in safeguarding brand identities and establishing consumer trust. Myanmar's Trademark Law provides a solid legal framework for trademark registration, granting an initial term of 10 years from the submission date of the registration application. Upon the expiry of this term, trademark owners have the opportunity to renew their registration for subsequent 10-year periods. This article delves into the essential aspects of trademark renewal in Myanmar, highlighting the process, requirements, and the Registrar's responsibilities in ensuring brand continuity and intellectual property protection.
Read ArticleHow Does Myanmar's Trademark Law Facilitate Ownership Transfers?
In Myanmar's rapidly evolving business landscape, trademarks play a crucial role in establishing brand identity and protecting intellectual property assets. The Myanmar Trademark Law grants comprehensive rights to trademark applicants and owners, enabling them to transfer ownership to other individuals or legally formed organizations. Sections 42, 43, and 44 of the Trademark Law outline the process and requirements for the transfer of ownership rights for both pending trademark applications and registered marks. This article explores the legal provisions governing trademark transfers in Myanmar and highlights the significance of proper documentation and transparency in maintaining the integrity of the trademark registration system.
Read ArticleTrademark Appeal Process in Myanmar: How to Exercise Your Right to Appeal?
In Myanmar, the appeal process for intellectual property (IP) subject matters, particularly trademarks, is governed by Sections 65 and 66 of the Trademark Law. These sections outline a hierarchical structure with two levels of appeal, time limits for lodging appeals, and the scope of authority vested in each appeal authority. This article aims to provide an overview of the critical considerations that stakeholders should be aware of when seeking to challenge decisions made under Myanmar's Trademark Law. Hierarchical appeal process The appeal process is organized hierarchically, providing a well-defined route for dissatisfied individuals to challenge decisions related to trademarks. The first level of appeal involves appealing to the Intellectual Property Rights Agency (“Agency”) from any decision made by a Registrar. The Agency serves as an intermediate authority that reevaluates the Registrar's decision based on the appellant's arguments and evidence.
Read ArticleResolving Disputes Between Trade Names and Trademarks in Vietnam: How to Proceed?
Disputes between trademarks and trade names are commonplace and present considerable challenges for businesses. Establishing rights for trade names under Vietnamese law is relatively straightforward. If a trade name is shown to have been legally used in Vietnam and does not infringe upon existing trademarks, business names, or geographical indications, its rights are established. On the other hand, the process of revoking trade name rights can be intricate and challenging. The following dispute serves as an expensive lesson for foreign businesses engaging in commercial activities in Vietnam, particularly through franchising endeavors. It underscores the importance of understanding the local legal landscape and ensuring proper trademark protection to avoid such costly predicaments.
Read ArticleTrademark Law in Myanmar: Understanding Exclusive Rights and Legitimate Uses
In Myanmar's dynamic business landscape, trademarks serve as invaluable assets for businesses seeking to establish brand identity and consumer trust. The Myanmar Trademark Law grants trademark owners comprehensive rights to maintain the exclusivity of their marks and protect their brand reputation. However, it also introduces essential exceptions to strike a balance between trademark owners' rights and legitimate uses in the market. In this article, we explore the provisions outlined in Sections 38, 39, 40, and 41 of Myanmar's Trademark Law, shedding light on the rights granted to trademark owners and the exceptions to these rights.
Read ArticleTrademark Registration in Myanmar Under New Trademark Law: 10 Things to Know
Myanmar's new Trademark Law marks a promising chapter for intellectual property protection, offering businesses a valuable opportunity to secure their brand identities in this emerging market. To make the most of this exciting development, understanding the key provisions outlined in the law is essential. In this guide, we, at KENFOX, would like to equip businesses with the essential knowledge needed to successfully navigate the trademark registration process.
Read ArticleTrademark Registration in Myanmar: Understanding First-To-File and Right of Priority
Myanmar's burgeoning market presents a wealth of opportunities for businesses looking to expand their brands and protect their intellectual property. Among the crucial steps in this process is trademark registration, a vital measure to safeguard brand identity and reputation. Understanding the provisions under Section 19 of the Trademark Law of Myanmar is essential for any entity seeking to secure trademark rights in this dynamic landscape. This article is to delve into the significance of the "first-to-file" principle and the concept of the "right of priority" in Myanmar's trademark registration process.
Read ArticleThe Trademark Law in Action in Myanmar
In a momentous stride towards intellectual property protection, Myanmar enacted its landmark Trademark Law in 2019, setting the stage for a new era of brand safeguarding in the country. On April 26, 2023 which coincides with the World IP Day, the Myanmar Intellectual Property Department (IPD) celebrated this significant milestone with a special "grand opening" event. Since the commencement of this event, the IPD has been receiving new trademark applications.
Read ArticleBlack-and-White or Color Trademarks in Vietnam
In the fast-paced world of commerce, trademarks serve as powerful assets that distinguish one business from another. They are the face of a brand, carrying with them the goodwill and reputation built over time. Registering a trademark is a strategic move that bestows exclusive rights to its owner, providing a shield against the use of confusingly similar marks. However, the decision of whether to register a mark in black and white or its specific colors can be a complex and crucial one. To shed light on this matter, we delve into the reasons why applying for both versions may prove to be a prudent choice, particularly for trademark owners seeking protection in Vietnam.
Read ArticleAnnual Fees and Patent Term for Patents in Laos
In the dynamic landscape of intellectual property rights, protecting inventions through patents is crucial for businesses and inventors alike. When it comes to obtaining and maintaining patents in Laos, it is essential to comprehend the calculation of annual fees and the patent term. At KENFOX, our firm specializes in providing comprehensive patent services in Laos, assisting clients throughout the entire patent lifecycle, from application to maintenance. In this article, we will delve into the calculation of annual fees for granted patents in Laos, explain the patent term, and emphasize the importance of paying these fees promptly.
Read ArticleShould Descriptive Marks Be Allowed for Registration in Vietnam and China
For trademark applicants venturing into the vibrant and ever-evolving markets of Vietnam and China, the acquisition of a profound understanding of the prevailing practices in examining trademarks classified as descriptive takes on a paramount significance. In these dynamic landscapes, where competition thrives and consumer demands constantly evolve, the fate of a trademark hinges on its ability to stand out amidst a sea of descriptive terms. A nuanced comprehension of the examination process becomes instrumental in charting a successful course, enabling applicants to navigate the intricacies of registrability and maximize the potential of their trademarks. Failure to grasp the intricacies of descriptive marks' assessment may not only impede registration prospects but also lead to missed opportunities and potential obstacles in establishing a distinctive brand presence.
Read ArticleTrademark Squatting: A Concerning Trend in Vietnam
The loss of a trademark can result in a loss of market access. Genuine products produced by the rightful trademark owner may turn out to be “counterfeits” if the trademark falls into the hands of a competitor. Furthermore, trademark speculators (squatters) also exploit registered trademarks as a legal tool to undermine the true trademark owner. The following case serves as a typical example, highlighting the ongoing relevance and practical value, while also emphasizing the costly lesson for all business entities in Vietnam. Intellectual property theft and brand infringement are becoming increasingly sophisticated and complex.
Read ArticleCopyright Infringement Fined Nearly VND 5 Billion in Vietnam
The copyright infringement case involving a substantial amount of nearly 5 billion VND (approx. USD 218,000) has garnered significant public attention and caught the interest of intellectual property rights holders. The trial took place in August 2022 at the People's Court of Binh Duong province. In this case, the defendant was ordered to compensate a substantial amount of nearly 5 billion VND. The compensation stemmed from the defendant's unauthorized installation of design software by their employees, thereby infringing upon the plaintiff's copyright ownership. The first-instance judgment ruled in favor of the plaintiff, who was the rightful owner of the copyright. This article presents key details of the case, including the arguments presented by both parties, the legal grounds applied, and some observations on the case.
Read ArticleCambodian Customs and IPR Enforcement
Cambodia's lack of a customs recordal system means that the customs authorities have not yet received any requests for customs supervision regarding intellectual property rights (IPR) infringement. But what does this mean for intellectual property rights holders who are looking to protect their interests in Cambodia? Is there any recourse available to them? In fact, there are still ways to engage Cambodian customs to enforce IPR infringement, and one of these ways is by filing a request for recordal of exclusive distributorship. In this article, we will explore this option in more detail and discuss the implications for intellectual property rights holders operating in Cambodia.
Read ArticleCo-Owned Patent Disputes in Vietnam: What to Do?
A co-owned patent arises when two or more parties jointly create an invention and seek patent protection for it. How if an invention is created by two parties, but just one party is named as inventor and owner while the other is only named as “inventor”? Can it cause any legal consequences? What can the other inventor do in such a case if the inventor who filed the patent application does not reach an amicable agreement on a co-owned patent? In recent news, the Intellectual Property Offices of Vietnam (IP VIETNAM) have been dealing with a case regarding “the right to file a patent application” in case of co-owned patent, highlighting the importance of understanding the legal requirements for patent filing and ownership. This article will focus on the specifics of this case and examine its implications for intellectual property rights in Vietnam.
Read ArticleProvisional Rights to Patents and Industrial Designs in Vietnam
Vietnam's emergence as a leading destination for innovation and investment has resulted in a significant increase in patent and industrial design filings. One of the most important features of the Vietnamese IP system is the availability of provisional rights to patents and industrial designs. Provisional rights can provide patent or design owners with significant benefits even before their applications are fully examined and granted. In this article, we will explore what provisional rights are, how they work, certain requirements and limitations to provisional rights, and what patent and industrial design owners need to know to maximize their benefits as well as avoid legal risk in using such rights in Vietnam.
Read ArticleOvercoming Trademark Rejection in Cambodia
As foreign investment in Southeast Asia continues to surge, Cambodia is emerging as a top destination for businesses looking to expand their reach. However, obtaining trademark registration in this market is no walk in the park. With a vast number of trademark applications filed annually, it’s easy for a mark to be deemed too similar to an earlier one or refused altogether by the examiner. This is where IP attorneys with extensive experience and knowledge of IP law can provide effective strategies for winning the trademark battle to obtain registration in Cambodia. KENFOX IP & Law Office, with nearly 20 years of expertise in intellectual property solutions, has successfully won the refusal to protect the world-renowned milk tea brand “DING TEA” in Cambodia. In this article, we’ll delve into the complexities of obtaining trademark registration in Cambodia and share key takeaways if your trademark faces a refusal.
Read ArticleHow to Cope With Patent Infringement Allegations in Vietnam
As businesses continue to operate in Vietnam, the possibility of being accused of patent infringement is a looming threat. The mere accusation can cause uncertainty and worry for alleged infringers, who may face a range of negative consequences such as product seizures, lawsuits, and negative media attention. To mitigate these risks, various approaches can be taken, such as accepting the allegation, signing an undertaking letter, removing infringing products, or negotiating for a license. However, hastily accepting an IPR holder's request after an infringement accusation can result in greater legal risks. Anyone, whether a plaintiff or a defendant, should have their true rights and interests protected as long as they are just and legitimate. In many instances, the defendant or accused individual turns out to be not the perpetrator. When accused of patent infringement, it is critical to maintain your composure.
Read ArticleCustoms Recordal for IPR Protection in Laos
Customs recordal, also known as customs registration or customs watch or customs supervision, is a procedure that allows trademark owners to request customs authorities to monitor imports bearing infringing or counterfeit trademarks to be imported into a country. Customs recordal aims to prevent the entry of counterfeit goods into the market and protect the trademark owner’s rights. Customs recordal in Laos can be an effective tool for trademark owners to detect and prevent the importation of trademarked counterfeit goods. However, it is not explicitly provided under the Laos laws on whether infringing goods for export are subject to any penalties imposed by the Laos authorities or not. By recording a registered trademark with the Laos Customs Department, the owner can provide customs officials with information about his registered trademarks, enabling them to identify and seize counterfeit goods that infringe on his trademark.
Read ArticleGoods and Service Relevancy Affect Trademark Registration in Vietnam
The nature of goods/services is one of two prerequisite factors (together with trademark itself) in determinging the registrability of an applied-for mark. Before applying for a trademark registration, it is important to consider the goods or services that the trademark will be used for. Through a practical trademark case that KENFOX IP & Law Office has successfully overcome the provisional refusal issued by the Intellectual Property Office of Vietnam (IP VIETNAM), this article will explore the concept of goods/services relatedness and its importance in the trademark registration process in Vietnam. The factors that determine whether two goods or services are considered related or not, and how these factors are applied in practice will be delved into.
Read ArticleUse Evidence in IP Infringement Cases in Vietnam
The principle of “burden of proof” is essential to any legal dispute, and intellectual property infringement litigation is no exception. However, recent cases in Vietnam suggest that plaintiffs face significant challenges in meeting this burden, particularly when it comes to presenting evidence in support of their claims. In a large number of IP lawsuits, the plaintiff’s claims for damages are rejected by the court because the evidence establishing the damage is deemed flimsy. Typically, in one case, the first instance court rejected the plaintiff’s documents as evidence of the violation, while the appellate court accepted them as admissible evidence. In another case, the plaintiff’s document is accepted as evidence in the first instance, but is deemed unfounded at the higher trial level.
Read ArticleHandling IPR Infringement Under Criminal Route in Vietnam
Counterfeiting is one of the most lucrative and expansive illicit industries in the world. Counterfeiters are becoming more sophisticated in their methods and practices, as well as in their use of counterfeiting technology to produce counterfeit products that are easier to pass off as genuine products to Vietnamese consumers. In Vietnam, criminal sanctions are available for counterfeiting offenses, including those related to intellectual property rights (IPR) infringements. However, in practice, these sanctions are rarely imposed. Nevertheless, a recent criminal case involving counterfeit goods is an applaudable effort by Vietnamese enforcement authorities to impose deterrence effects in curbing IPR infringement.
Read ArticleTrademark Registration in Vietnam What You Need to Know
Registering a trademark in Vietnam is a crucial step for any business or individual seeking to protect their brand and prevent unauthorized use by others. However, the process of registering a trademark can be complex and involves various steps that must be carefully followed. In order to successfully register a trademark in Vietnam, it is important to understand the availability searches, required documents for filing, the trademark examiner's steps and practices, how to respond to an office action, and the current protection of unconventional trademarks such as sound and smell marks. Additionally, understanding the implications of disclaimers in the trademark protection scope is also critical. In this article, we will explore these important aspects of trademark registration in Vietnam to help you navigate the process with confidence and ensure the best possible protection for your brand.
Read ArticleIP Assessment and Dispute Resolution in Vietnam: VIPRI
The Vietnam Intellectual Property Research Institute (VIPRI) is a specialized research institution that operates under the Ministry of Science and Technology in Vietnam. The primary mission of VIPRI is to provide expert opinions and assessments related to industrial property infringement cases. In particular, VIPRI focuses on industrial property subject matters such as inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, and geographical indications. As a specialized research institution in Vietnam, VIPRI provides expert opinions and assessments to concerned parties such as Vietnamese enforcement authorities, IPR holders, and alleged infringers.
Read ArticleVietnam: Handling IP Applications Under the Amended IP Law 2022
The Amended Intellectual Property Law 2022 (“Amended IP Law 2022” or “the prevailing law”) has been in effect since 1 January 2023, offering the expected benefits of of comprehensiveness and harmonization. This Amended IP Law 2022 promises to be a helpful tool for IPR holders and practitioners, with more than 100 amended and added articles covering a wide range of IP subject matters, including inventions, designs, trademarks and copyrights. As a matter of principle, following the amendments made to a law in Vietnam, pertinent sub-law documents such as government decrees and ministerial circulars need to be amended or replaced in order to provide sufficient regulations and guidelines for the effective implementation of the promulgated amendments.
Read ArticleCo-Owned Patent Disputes in Vietnam: What to Do?
A co-owned patent arises when two or more parties jointly create an invention and seek to obtain patent protection for it. How if an invention is created by two parties, but just one party is named as inventor and owner while the other is only named as “inventor”? Can it cause any legal consequences? What can the other inventor do in such a case if the inventor who filed the patent application does not reach an amicable agreement on a co-owned patent? In recent news, the Intellectual Property Offices of Vietnam (IP VIETNAM) have been dealing with a case regarding “the right to file a patent application” in case of co-owned patent, highlighting the importance of understanding the legal requirements for patent filing and ownership. This article will delve into the specifics of this case and how it impacts intellectual property rights in Vietnam.
Read ArticleASPEC Programme to Expedite Patent Granting in Vietnam
1. What is ASEAN Patent Examination Co-operation (ASPEC) programme? The ASEAN Patent Examination Cooperation (ASPEC) program is a regional patent cooperation program in Southeast Asia that allows patent applicants to request accelerated patent examination in participating ASEAN member states (“AMS”). It aims to improve the efficiency and quality of patent examination among participating ASEAN member state's intellectual property Offices (“AMS IP Offices”) by sharing search and examination (S&E) results.
Read ArticleUnderstanding Trademark Infringement Laws in Vietnam
Despite selling their branded goods and services for decades in Vietnam, many businesses are at risk of losing their trademarks due to a lack of awareness and disregard for trademark registration. In most cases, trademarks are lost either because business owners are unaware of the need for registration, or because they prioritize market development over legal protection. Even those who do register their trademarks may face difficulties in enforcing them against infringing competitors. As a result, not a few businesses had to pay a high price for their negligence and lack of knowledge in the field of intellectual property. This article will explore the reasons behind trademark losses in Vietnam and offer guidance on how businesses can protect their valuable intellectual property assets.
Read ArticlePatent Invalidation in Vietnam: How to Proceed?
1. Introduction Patents are widely regarded as a “crutial” instrument for intellectual property (IP) rights holders seeking to establish a unique market position for their patented products. Patents grant the owner exclusive rights to market their product, license their invention to third parties to recoup investments, and prevent competitors from infringing on their patent rights. Given the huge competitive advantages that the patent brings, it is not surprising that the occurrence of patent disputes is on the rise.
Read ArticleHow to Effectively Enforce IPR Infringement in Cambodia
Cambodia’s lack of a customs recordal system means that the customs authorities have not yet received any requests for customs supervision regarding intellectual property rights (IPR) infringement. However, IPR holders still have options to engage Cambodian customs to enforce IPR infringement. One way is to file a request for recordal of exclusive distributorship.
Read ArticleVietnam: The Fine Line Between Descriptive and Suggestive Trademarks
Trademark registration is an essential step for any business seeking to protect its brand identity and intellectual property. However, the process of trademark registration can be challenging, particularly when a mark falls into the gray area between being descriptive or suggestive. In Vietnam, Laos, and Cambodia, as in many other countries, trademarks that are deemed purely descriptive are not eligible for protection under trademark law but a suggestive mark may be eligible for registration and protection. However, determining whether a mark is descriptive or suggestive can be a challenging and subjective task, and there is often a thin line between the two. Therefore, it is important to understand the examination practice of determining the eligibility of trademarks and the factors that examiners consider when making such a determination.
Read ArticleSuccessfully Argue Wide Use Evidence in Vietnam
Trademark opposition and cancellation serve as crucial legal remedies for legitimate trademark owners to safeguard their intellectual property rights. In Vietnam, genuine trademark owners are entitled to employ their prior evidence of wide use to file a Notice of Opposition or a cancellation action against a trademark squatter. As such, it is critical to understand how National Office of Intellectual Property of Vietnam (IP VIETNAM) evaluates the evidence of prior use and the extent to which a mark must be used to succeed in an opposition or cancellation based on unregistered rights.
Read ArticleIs Use of Trademark on the Website Considered Evidence in Vietnam?
Any third party may file a request with the Intellectual Property Office of Vietnam to cancel the registration of a trademark if it has not been utilized by its owner for five years from the date of registration. This procedure serves to cancel trademarks that exist in the register but are not used in practice, and also to prevent trademark squatting that aims to block identical marks from entering the market. However, the absence of clear guidelines on the "use of trademark" in Vietnam's intellectual property law may hinder the institution's ability to invalidate trademarks based on non-use grounds stipulated in the law. As a result, this may render the institution ineffective or paralyzed in canceling trademark registrations.
Read ArticleHow to Expedite Cambodian Patent Examination?
The process of patent examination can be complex, time-consuming, and often leads to unpredictable outcomes. In order to provide greater predictability and streamline the process, Cambodia has implemented programs to expedite the examination of patent applications. These programs are the result of bilateral agreements between Cambodia and foreign countries, including the latest agreement with the United States on October 23, 2020. Under this agreement, Cambodian patent applications can be accelerated by relying on US patents during examination. Similar agreements with China, Singapore, Korea, Japan, and Europe have also allowed foreign patent owners to efficiently extend their patent rights to Cambodia. This move highlights Cambodia’s commitment to promoting innovation and attracting foreign investment by creating a more favorable environment for intellectual property protection.
Read ArticleAvoiding Trademark Descriptiveness Refusal in Laos
A trademark is a source identifier denoting that a product/service belongs to a certain company or person, and distinguishes it from the products/services of others so that is it eligible to be protected by law. Thus, a sign that has no source-indicating significance must be refused registration to ensure that all other individuals or entities are free to use such it.
Read ArticleProtecting Your IPR in Vietnam: Guide to VIPRI’s Services and Expertise
1. What services does Vietnam Intellectual Property Research Institute offer? The Vietnam Intellectual Property Research Institute (VIPRI) is a research institution under the Ministry of Science and Technology that provides expert opinions on IP infringement cases concerning industrial property subject matters such as inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names, and geographical indications. IPR holders who suspect that their IP rights have been violated may request VIPRI to provide assessments or expert opinions on the scope of protection of their IP rights, assess similarity, determine infringing elements, and determine damages. However, at present, VIPRI’s services are limited to providing assessments and opinions on inventions, industrial designs, geographical indications, and trademarks, due to limited human resources. It does not provide opinions on matters of unfair competition, trade name, or copyright.
Read ArticleVietnam: Key Takeaways From the Trademark Assessment Conclusion
Background: HOA SEN Vietnam Co., Ltd, a company engaged in design, art design, advertising, and communication. In 2013, HOA SEN Company registered a mark including the verbal element “HOA SEN” in combination with a number of other elements (HOA SEN, device) at the Intellectual Property Office of Vietnam (“IP Vietnam”) for 04 classes of services including: Trademark: HOA SEN, device Class 35: Advertising services, presentation/display of goods on communication media for sales. Class 40: Printing services. Class 41: Television program production activities; photography; organizing cultural, artistic and sports events Class 42: Print product design service
Read ArticleAmending Patent Specifications in Vietnam
Even after a patent specification has been filed to the Intellectual Property Office of Vietnam (IP VIETNAM), it may be amended at the applicant’s initiative (also known as voluntary amendment) or at IP VIETNAM’s request. If an amendment or supplement to a patent application expands the scope of the subject matter disclosed or stated in the application or alters the nature of the claimed subject matter stated in the application, there is a risk that the patented product or process could be invalidated at the request of a third party. To mitigate such legal risks associated with patents, it is essential to have a thorough understanding of Vietnam’s intellectual property laws concerning the amendment process during patent applications, particularly given the recent increase in patent infringement disputes in Vietnam.
Read ArticleVietnam: Trademark Appropriation to Attack The Trademark Owner
HWASUNG is a trade name and trademark used by HWASUNG Company for their electric wire products. HWASUNG, a Korean company, together with 2 other Korean companies, SEOUL and SIMEX, contributed capital to establish SH-VINA Company, 100% foreign owned enterprise of Korea, in Vinh Phuc province. Thien Phu Company, based in Hanoi Vietnam, applied to register the trademark “HWASUNG” for products of electric wires, cables and electrical products in Class 09 and was granted the Certificate of Registration Certificate in 2005.
Read ArticleVietnam: Owning a Trademark But Unable to Address Infringement
There are a number of reasons why Vietnamese businesses may lose their trademarks, despite the fact that they have been selling their branded goods and services for decades. Mostly, trademarks are lost for two reasons: (i) ignorance on the part of trademark owners and (ii) disregard of trademark registration for the goods/services they trade. Many firms are ignorant that they should and must register a trademark, while others prioritize business and market development over trademark registration. Even businesses that have registered their trademarks may be unable to take action against competitors who infringe their trademarks. This situation results in Vietnamese businesses paying a high price for their negligence, delay, and ignorance in the field of intellectual property.
Read ArticleHow to Register a Geographical Indication in Vietnam?
Geographical indications (GIs) are categorized as a type of industrial property right in Vietnam and protection of GIs are regulated under the Law on Intellectual Property. A GI identifies a product as originating from a specific geographical location and possessing unique qualities or characteristics that are attributable to that location. GI protection can help build confidence among customers by providing assurance of the product’s authenticity and quality, as well as its cultural and traditional value. For producers, GI protection can enhance the reputation of their products and increase their market value, as customers are willing to pay a premium for products with a recognized GI status. This can lead to increased income and job opportunities for local producers, as well as support for the development and promotion of regional economies.
Read ArticleCustoms Recordal for IPR Protection in Laos
1. Overview Customs recordal, also known as customs registration or customs watch or customs supervision, is a procedure that allows trademark owners to request customs authorities to monitor imports bearing infringing or counterfeit trademarks to be imported into a country. Customs recordal aims to prevent the entry of counterfeit goods into the market and protect the trademark owner’s rights. Customs recordal in Laos can be an effective tool for trademark owners to detect and prevent the importation of trademarked counterfeit goods. However, it is not explicitly provided under the Laos laws on whether infringing goods for export are subject to any penalties imposed by the Laos authorities or not. By recording a registered trademark with the Laos Customs Department, the owner can provide customs officials with information about his registered trademarks, enabling them to identify and seize counterfeit goods that infringe on his trademark.
Read ArticleConducting a Trademark Search in Cambodia: Why and How?
1. Why should a trademark search in Cambodia be conducted? Before filing a trademark application in Cambodia, it is advisable to conduct a search based on the trademark database of the Department of Intellectual Property of Cambodia (DIP) to determine the registrability of a proposed mark. Conducting a trademark search prior to filing is highly advised for a number of reasons:
Read ArticleConducting a Trademark Search in Laos: Why and How ?
Before filing a trademark application in Laos, it is advisable to conduct a search based on the trademark database of the Department of Intellectual Property of Laos (DIP) to determine the registrability of a proposed mark. Conducting a pre-filing trademark search is highly recommended for several reasons:
Read ArticleCease & Desist Letter in IPR Infringement in Vietnam
Cease & Desist Letter (C&D Letter) on infringement of intellectual property rights (IPR) is considered a “soft” measure that is flexibly used by various rights holders to cope with alleged IPR infringements. In some cases, sending a C&D Letter instead of requesting intervention from the Vietnamese enforcement authorities seems to be effective as the infringement is immediately terminated. But all this may still be just the top of the iceberg. Sending a C&D Letter to the alleged infringer can sometimes put the right holder into unforeseen difficulties. From the perspective of the party that is alleged to be infringing on IP rights, failure to understand the provisions and protection mechanisms of IP Law may lead to the acceptance of requests from the IP rights holders set out in the C&D Letter and deprive them of legitimate rights and interests that they should not have given up.
Read ArticleWhy Should Figurative Marks Be Registered as Copyright in Vietnam?
Surprise, shock, bewilderment, anxiety, pessimism and a scenario that all doors are closed is a common state/feeling that many foreign trademark owners fall into when they discover that their trademarks, even their product packagings have been filed for trademark or industrial design registration by a third party in Vietnam. Other holders are desperate that the risk of business strategy in Vietnam will be broken down/jeopardized when they detect that their trademarks and/or their product labels being copied in their entireties, or only some minor changes thereof are made by the third parties for the purpose of business exploitation.
Read ArticlePatent Divisional Application in Vietnam: What You Need to Know
I. Overview of patent divisional application in Vietnam 1. Definition: A divisional patent application is not defined under the Vietnam IP Law. However, it’s widely construed that a divisional patent application is a type of patent application which is divided from an original application (known as the parent application) when the original patent application does not meet unity requirements (e.g. contains multiple inventions), as stipulated in Article 101 of Vietnam IP Law.
Read ArticleUse Your Registered Trademark in Vietnam or You Will Lose It
Obtaining a trademark registration does not mean a guarantee for the maintenance of the trademark validity, because the trademark holders are obliged to use their registered trademarks in commerce and renew the validity before it expires. The purpose of this regulation is to allow the removal of marks that exist on the trademark register but are not in genuine use and/or to block the phenomenon of trademark squatting which unreasonably prevent similar marks from entering the market. This mechanism helps to reduce the number of trademark disputes and reduce registrations acquired only for the purpose of unfair competition and trademark resources depletion/waste for organizations and individuals who are in need. Essentially, the obligation of trademark use promotes transparency and commercial protection for the free market. However, in practice, it is difficult for trademark owners to fulfill such obligation of use.
Read ArticleIndustrial Designs in Laos
LEGAL BASIS Law on Intellectual Property No. 38/NA dated 15 November 2017; Decision on Industrial Design No. 35/MOST dated 20 January 2021. DEFINITION 1. What is an industrial design in Laos? The Law No. 38/LA on Intellectual Property (amended) dated 15 November 2017 (Lao IP Law) defines an industrial design as the form or shape of a product that needs to be created (including patterns, lines, colors, etc.). Specifically, an industrial design certificate protects a product’s special appearance which covers a pattern, a form, or an external feature of a novel product developed in Lao PDR, or elsewhere in the world, that includes a shape, motif, line, color or an ornamental form used in an object or attached to an object.
Read ArticleCopyright Defeats Trademark Rights – Two Cases to Better Understand the Benefits of Copyright Registration in Vietnam
First-to-file is not an absolute and immutable principle in establishing trademark rights. In a broader sense, it is not at default that when you are the first filer of the trademark, you will automatically be the trademark owner in perpetuity in Vietnam. A trademark registration certificate issued by the IP Office of Vietnam (IP VIETNAM) is not automatically a legal tool to protect you from allegations of intellectual property infringement. We provide two typical copyright-trademark conflict cases, one in China and one in Vietnam to demonstrate significance of copyright in winning trademark disputes. If not for earlier copyright, the legitimate owner would not be able to reclaim their trademarks.
Read ArticleRestoration of Priority Rights for Patent Applications in Vietnam – What You Need to Know
A Chinese patent with 12 months priority deadline passed, but the patent applicant still wants to patent his invention in Vietnam. Is it possible to request for a restoration of priority right in the international patent application and then enter into Vietnam under PCT route?
Read Article5 Questions to Assess Whether Your Product Infringes Patents in Vietnam
You are a patent holder who suspects that a competitor's product is being manufactured in violation of your patent rights. In a different context, you wish to bring a product to market but are unsure whether it infringes on a protected patent in Vietnam. Of course, regardless of what context, whether you are a patent owner or a manufacturer of an unpatented product, the simplest way to determine patent infringement is to file a patent infringement assessment with the Vietnam Intellectual Property Research Institute (or "VIPRI" for short). However, this assessment will cost a considerable amount of money, so it is critical to comprehend the fundamental principles and laws for evaluating patent infringement in Vietnam before submitting a request for patent infringement assessment with the VIPRI.
Read Article5 Questions to Assess Whether Your Product Infringes Patents in Vietnam
You are a patent holder who suspects that a competitor's product is being manufactured in violation of your patent rights. In a different context, you wish to bring a product to market but are unsure whether it infringes on a protected patent in Vietnam. Of course, regardless of what context, whether you are a patent owner or a manufacturer of an unpatented product, the simplest way to determine patent infringement is to file a patent infringement assessment with the Vietnam Intellectual Property Research Institute (or "VIPRI" for short). However, this assessment will cost a considerable amount of money, so it is critical to comprehend the fundamental principles and laws for evaluating patent infringement in Vietnam before submitting a request for patent infringement assessment with the VIPRI.
Read ArticlePatent and Petty Patent in Laos
Legal grounds: (i) Lao IP Law No. 38/NA of 2017, which replaced the Law on Intellectual Property of 2011; (ii) Decision No. 1714/MOST of 2020 on Patents and Petty Patents. International IP Agreements to which Laos is a Contracting Party Laos has been a Contracting Party to the Paris Convention for the Protection of Industrial Property (Paris Convention) since October 8, 1998. It has also been a Contracting Party to the Patent Cooperation Treaty (PCT) since June 14, 2006. Under the Paris Convention to which Laos is a member, patent applicants are entitled to a right of priority if the same filing has been made within 12 months in any other other nation that is also a member of the Paris Convention. This is extremely advantageous for patent owners since, after filing the initial application in their home country, they have a year to pick which other countries they wish to register in prior to initiating international filings.
Read ArticleThree Options to Accelerate Patent Examination in Vietnam
The examination of a patent application's patentability in Vietnam is time-consuming. A typical examination would necessitate access to databases of prior art for novelty and inventiveness comparisons against what has already been disclosed or practiced. Despite recent advancements in conducting substantive examination for patent applications, the Intellectual Property Office of Vietnam (VNIPO) tends to grant patents based on the grant of the corresponding patent from countries with more developed IP systems or examination results of the corresponding patent application from more established Patent Offices such as those of the United States, Japan, South Korea, and the European Patent Office.
Read ArticleVietnam's 2022 Amended IP Law: What Do New Trademark Provisions Mean for Your Brand Protection Strategy?
Intellectual property is regarded as a company's most important and valuable asset. In particular, it cannot be denied that a trademark is the industrial property object with the highest commercial exploitation value. Numerous amendments and additions have been made to Vietnam's 2022 Intellectual Property Law in order to improve the effectiveness of the intellectual property protection mechanism and fulfill Vietnam's legal obligations under International intellectual property agreements to which Vietnam is a signatory, including CPTPP, EVFTA, and RCEP...
Read ArticleStrategies to Deal With IPR Infringement in Vietnam: Protecting IPRs for Korean Businesses in Vietnam
Bilateral working visit between KENFOX IP & Law Office and Mr. Yim Dong Sook, Korea, in order to reach an agreement on Intellectual Property Right (IPR) enforcement cooperation Mr. Yim Dong Sook, one of the experts in IPR enforcement executing his work mainly in Korea, paid a working visit to KENFOX IP & Law Office in Hanoi during the final days of September in an effort to discuss strategies to deal with IPR infringement in Vietnam in order to best protect Korean enterprises’s IPR in Vietnam. During this working visit, what Mr. Yim Dong Sook said deeply touched us: “We have worked with 3 IP service providers in Vietnam, but we choose KENFOX as our strategic partner because we feel the professionalism, dedication in each case you do for our customers”. All of us at KENFOX can’t thank Mr. Yim enough for recognizing the value we bring to his clients, especially, his trust in our services performed by our experienced team.
Read ArticleHow to Register Copyright in Vietnam?
You do not need to apply for copyright registration to enjoy copyright protection in Vietnam. In compliance with the Berne Convention to which Vietnam is a signatory, Vietnam Copyright Law As such, statutorily, copyright is an automatic right that does not require registration, which means that the author or creator acquires copyright immediately upon completion of the original work. However, IPR holders who conduct business in Vietnam or intend to do so are strongly advised to prioritize copyright registration in Vietnam. Copyright registration is deemed a strong and effective tool to repress trademark and industrial design in Vietnam.
Read ArticleTo Copyright or to Patent a Computer Program in Vietnam: 4 Important Considerations
Computer programs are increasingly utilized and play a crucial role in numerous fields in order to effectively serve and fulfill a variety of needs and objectives. Like other intellectual property (IP)assets, computer program rights holders seek to optimize all protection measures for the computer programs they develop to ensure exclusivity, effective enforcement against piracy and IPR infringement, and commercialization of intellectual property assets. Article 4.12 of the Intellectual Property Law 2005, as amended in 2009 and 2019 (IP Law) defines an invention as "a technical solution in the form of a product or process intended to solve a specified problem by applying natural laws."
Read Article8 Important Tips in Mind From a Recent Cybersquatting Case in Vietnam
Facts OSRAM GmbH (“the plaintiff”) is a worldwide lighting manufacturer with headquarters in Munich, Germany. The plaintiff is the proprietor of a Vietnam-protected series of OSRAM trademarks for lighting apparatus, particularly electric lamps and luminaires; parts of the aforementioned items; light-emitting diode lamp modules. The plaintiff discovered that the disputed domain names and osram . vn> (“Disputed Dsomain Names”) were registered in 2014 by a natural person in Vietnam, N. D . T . ("the defendant") and resolved to the defendant's active websites. The websites under the Disputed Domain Names promoted and offered for sale the plaintiff's "OSRAM"-branded products.
Read ArticleFive Key Takeaways for Enforcement of Industrial Design Infringement in Vietnam
Consumers always choose products with sophisticated and aesthetically beautiful designs because industrial design establishes an emotional connection with them and adds value to the product. Thus, copying and imitating the industrial design of other products has become commonplace in many fields in Vietnam. Moreover, the protection of intellectual property rights ("IP") for product designs is crucial for all businesses because it increases the perceived value of their brand's distinctiveness in the eyes of consumers. In recent years, this has become even more crucial as counterfeiting has increased. From the below case, we have provided 5 key takeaways for IPR holders when determining to enforce against industrial design infringement in Vietnam.
Read ArticleIndustrial Design Protection for Products Under The Hague System - Key to Business Success in Vietnam
Copying and mimicking the presentation and packaging design of other people's products has become a pretty typical occurrence in many fields. Meanwhile, protection of intellectual property rights (“IP”) for product designs is critical for all businesses since it helps to increase the perceived value of their brand distinctiveness among consumers. This has become even more critical in recent years, as counterfeiting has increased. Establishing intellectual property rights over industrial designs is not straightforward; therefore, before filing an application for protection of an industrial design ("ID"), manufacturers and businesses should consult with IP experts to grasp and comprehend the provisions of the law governing industrial design protection, as well as the nature of the industrial designs to be protected, particularly now that Vietnam has joined the Hague system for industrial design registration (“The Hague System”).
Read ArticleA Patent Infringement Case in Vietnam Adjudicated Under Civil Proceedings – Some Key Takeaways
Facts Bayer SAS, a French company, engages in manufacturing agrochemicals and chemicals used in agriculture (“the plaintiff”). The plaintiff was granted a patent in Vietnam. The subject matter protected under the patent is new agrochemical combinations of two known insecticides and other agrochemical products. The plaintiff discovered through market research that a Vietnamese company named "Công ty TNHH Thuong m?i Nông Phát" ("Nong Phat") manufactured pesticides named "SESPA GOLD" and "HUMMER" that contained the active ingredients "Fipronil" and "Imidacloprid" - the combination protected by several claims of the plaintiff's patent.
Read ArticleCopyright-A Powerful and Effective Weapon to Repress Trademark and Industrial Design Infringements in Vietnam
In many cases, a logo may qualify for protection as a trademark and/or copyright, while a product packaging may qualify for concurrent protection under all three types of Intellectual Property (IP): trademark, industrial design (ID) and copyright. Numerous rights holders register trademarks and IDs in the belief that anti-infringement enforcement based on trademark and ID rights will be stronger and more effective than copyright. Therefore, for a long time, copyright has been only viewed as a source of supporting documents/arguments in IPR protection strategies. As a result, the establishment/protection of copyright in Vietnam has been undervalued and ignored.
Read ArticleCoping With Counterfeit Trading on Vietnamese E-Commerce Websites/Platforms
Currently, Vietnam dominates the top-ten Southeast Asian e-commerce platforms. 5/10 e-commerce platforms have the highest average traffic in 2020 in Southeast Asia are Vietnamese enterprises [1]. The e-commerce market is growing in Vietnam. As of January 2021, Vietnam had approximately 69 million internet users out of a total population of over 96 million. In the last five years, the number of Vietnamese ecommerce shoppers has increased significantly, reaching 32,7 million in 2016, 33,6 million in 2017, 39,9 million in 2018, 44,8 million in 2019, and 49,3 million in 2020 [2]. E-commerce has now proven itself as an inevitable business and consumption trend in Vietnam.
Read ArticleNotice and Takedown Regime Against Online IPR Infringement in Vietnam
Online IPR infringement is a serious issue in Vietnam, where a large number of offending rogue websites continue to operate and grow in popularity. This results from various reasons, firstly, the lack of adequate legislation or the current ineffective statutory regulations, and secondly, the weak enforcement.
Read ArticleAdministrative IPR Enforcement Authorities of Vietnam
If you're thinking of enforcing against an infringement of your intellectual property rights in Vietnam under administrative proceedings, a thorough understanding of functions, tasks, and capacities of a law enforcement authority in Vietnam will enable you to choose an authority that is competent to handle IPR infringement, to avoid unexpected delays and to maximise the authority’s strength in subsequent enforcement actions. 1 The Inspectorate of Science and Technology
Read ArticleA Practical Guide for Copyright Related Matters in Vietnam
I. Vietnamese Legislation on Copyright and Related Rights 1. Constitution dated 28/11/2013 of the Socialist Republic of Vietnam.
Read ArticleStrategies to Reclaim Unregistered Trademark Rights in Vietnam
Introduction: Vietnam follows “first to file” principle in establishing industrial property rights, whereby industrial property rights are granted to the first filer. This principle, on one hand, encourages IPR holders to register their intangible assets at the soonest time, but on the other hand, together with a “very open” and “very free” regime on "the right to register a mark" without imposing certain conditions like many countries in the world triggers rampant "trademark squatting" in Vietnam.
Read ArticleClaiming Damages in IPR Lawsuits in Vietnam – Key Takeaways
1. Since intellectual property rights (IPRs) constitute a civil right, civil enforcement plays a critical role in IPR enforcement. However, our analysis of statistics on IPR infringement and enforcement in reports from enforcement agencies reveals that the vast majority of IPR infringement cases in Vietnam have been resolved under administrative route over the past time. While thousands of IP infringement cases are handled administratively each year, only a few cases are tried by courts.
Read ArticleIndustrial Design Protection in Cambodia
What Is An Industrial Design In Cambodia? An Industrial Design is protected under the Law on Patents, Utility Model Certificates and Industrial Designs dated 22 January 2003. An industrial design in Cambodia means “any composition of lines or colours or any three-dimensional form, or any material, whether or not associated with lines or colors”. For an industrial design to be protected in Cambodia, it must be “new” or “novel”. An industrial design is considered new “if it has not been disclosed to the public, anywhere in the world, prior to the filing date or the priority date”. In addition, an industrial design in Cambodia must “give a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft, and appeals to and is judged by the eye”.
Read ArticleInventions & Utility Models in Cambodia
1. What Is An Invention In Cambodia? An invention is protected under the Law on Patents, Utility Model Certificates and Industrial Designs dated 22 January 2003 (“Cambodia Patent Law”). The procedures for the grant of Patents and Utility Model Certificates are detailed in Cambodia Prakas (Declaration) No. 766 MIME.DIP.PRK dated 28 May 2007. An invention is defined as “the idea of an inventor which permits in practice the solution to a specific problem in the field of technology”. The Cambodia Patent Law further clarifies that an invention may either be, or relate to, both a product and a process. • A product patent (e., a patent giving protection to the product as such) gives the patent holder the exclusive right to make, import, sell, offer for sale, use, and stock the product for the purpose of sale or use. • A process patent (e. a patent granted for a process or a method) gives the patent holder an exclusive right to prevent others from using that process/form.
Read ArticleIncentives for Patent Filing for Foreigners in Vietnam
In a common sense, “incentives for patent filing” may be construed as: (i) privileges under the governmental-level policy adopted to encourage/stimulate or attract applicants, especially foreign applicants, to file their patent applications in Vietnam; and/or (ii) supports or advantages which the competent authority gives to the applicants for the same purposes, among other things.
Read ArticleCambodian IPR Enforcement: From Right Understanding to Effective Action
1. Overview Cambodia is a civil law country, and as such, written laws contain all of the rules and procedures governing intellectual property enforcement. Under the laws of Cambodia, an IPR holder can enforce their rights against an alleged infringement through 03 avenues: (i) civil proceedings; (ii) criminal proceedings; and (iii) border control measures. Notably, although not expressly provided for in Cambodian laws, the Cambodia Department of Intellectual Property (“DIP”) may act as a mediator in cases involving IPR infringement in Cambodia. As such, mediation by DIP may be used as an alternative to resolve an alleged IPR infringement in Cambodia. Mediation by DIP may also serve as an administrative proceeding to deal with an alleged IPR infringement although DIP is not competent to issue sanctions against the infringers. In other words, an IPR infringement may be also addressed through administrative proceedings DIP.
Read ArticleCopyright Protection in Laos
1. Overview of IP related framework in Laos Intellectual Property Rights (“IPR”) in Laos are governed by the Law on Intellectual Property No. 038/NA of 15 November 2017 (the “Lao IP Law”), protecting copyright and related rights, patents, petty patents, industrial designs, trade marks, trade names, layout designs of integrated circuits, geographical indications, trade secrets, and plant varieties. Lao IP Law replaces the Law on Intellectual Property No. 01/NA, dated 20 December 2011. Lao IP Law is based on the World Intellectual Property Organisation (WIPO) model law and the requirements of the Trade-Related Aspects of International Property Rights Agreement (TRIPs). Laos became a party to the Berne Convention for the Protection of Literary and Artistic Works effective from 14 March 2012.
Read ArticleWhether "ST25" Is a Cultivar Name or a Brand in Vietnam: The Battle Between Names Has Not Yet Ended
Introduction 1. Well-known Vietnamese brands registered by overseas competitors are largely seen nowadays. Some typical cases such as Trung Nguyen coffee, Vinataba tobacco, Vifon instant noodles, Ben Tre coconut candy, Duy Loi foldable hammock, Sa Giang shrimp chips, Phu Quoc fish sauce, etc. ... all of which were illegally registered in foreign countries are unforgetable in the mind of Vietnamese people. Recently, the sign “ST25”, the name of a Vietnamese rice variety, produced a delectable and premium rice product that garnered international recognition and received the "World's Best Rice" award, but it has been registered as a trademark by four US companies and one Australian. This has sparkled up a warning bell for a strategy for brand protection for Vietnamese business.
Read ArticleTo Register or To Lose: A Costly Lesson From a Typical Industrial Design Dispute in Vietnam
Established in 1884, Piaggio Group is an Italian vehicle manufacturer, which produces a variety of motorized two-wheeled vehicles under various brands such as Piaggio, Vespa, Gilera, Aprilia, Moto Guzzi, Derbi, and Scarabeo. Since establishing a company (“Piaggio Vietnam”) in Vinh Phuc Province, Vietnam in 2007, Piaggio Group has developed a strong commercial presence in the country. After 2 years, Piaggio Vietnam officially put its first factory in operation, which manufactures and assembles two–wheeled motor vehicles on a scale of 50,000-100,000 motorcycles/year. Despite their high price, LX Vespa scooters have quickly adored by Vietnamese motorcycle enthusiasts, especially, the high-income and young people, due to high quality and the good aesthetic design thereof. Vespa LX is seen as a symbol of luxury and the class of motorcyclists. Thus, the Vespa LX has always reached the top of the best-selling motorcycles in the Vespa series in Vietnam.
Read ArticleInvalidating a Bad-Faith Trademark Registration in Vietnam
Bad-faith trademark registration has largely seen in Vietnam nowadays, especially when foreign investors are shifting production from China to Vietnam following a recent US-China trade war. Trade marks in Vietnam are generally awarded on a “first to file” basis, resulting in floods of trademark applications, many of which imitate/ mimic foreign reputed brands that have yet to expand into the Vietnamese market. Invalidating a trademark registered in bad faith in Vietnam is not always easy as Vietnam IP Law does not define or contain specific provisions on bad faith. However, Snap Inc., a US-based company, has won a significant victory in an unwanted battle with a local individual who took advantage of “first to file” principles to register the mark “Snapshot” in his name.
Read ArticleTime-Limit for Responding to Office Action Concerning IP Applications in Vietnam
Time-limit for responding to Office Action concerning IP applications in Vietnam 1. Is there any time limit regulated in laws from filing to finish the following processes: (1) Registration application: (2) Response toward OA (3) Invalidation (4) Cancellation based on non-use
Read ArticleWhat to Do If a Trademark Faces a Refusal Decision Issued by the IP Office of Vietnam
If the trademark is finally rejected to register in Vietnam, is there any remedy procedure? If Vietnam IP issues a final decision to reject a trademark application, there are 02 (two) remaining options for recourse. In detail, the applicant may either file an appeal with the with the Science and Technology Minister (“MOST”), the supervising body of the IP Vietnam or initiate lawsuits at court.
Read ArticleTrademark Examination Principles Newly Adopted by IP Office of Vietnam as of December 2020
To be more compatible with the recent signed trade pacts, including European Vietnam Free Trade Agreement (“EVFTA”), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”), and most recently the Regional Comprehensive Economic Partnership (“RCEP”) and the UK Vietnam Free Trade Agreement (“UKVFTA”), some new critical trademark examination principles/practices have been introduced/adopted by the IP Office of Vietnam (“IP Vietnam”). KENFOX IP & LAW OFFICE provides below several important takeaways.
Read ArticleStricter Requirements Adopted for Documents Submitted to Vietnam IP Office
In various ASEAN countries, under current practice, documents submitted to the national IP Offices signed by a person (e.g. Deputy Director, Trademark Administrator, etc.) of an entity/organization may be accepted as legitimate ones. The IP Office of Vietnam (“IP Vietnam”) used to accept such documents for IP filings in this country. Previously, documents signed by any representative internally approved by IP holders were all accepted without any requirements to prove the signing authority of the signatory. However, after IP Vietnam released its Notice No. 13822/TB-SHTT of 23 November 2020 which tightened requirements of the signing authority, things are not easy as they were. What needs to be remembered?
Read ArticleMain Takeaways for Seeking Protection for Industrial Designs in Vietnam
Industrial designs serve as an valuable tool for any manufacturer who relies on the outward appearance of their products to attract customers and entice potential buyers to choose their offering over the competition. As such, features protectable as industrial designs can be used both purely as a form of aesthetic enticement, as well as a way to distinguish your products, helping them stand out from a multitude of similar goods.
Read ArticleNotification on Re-Filing Trademark Applications to Keep Trademark Rights Effective in Myanmar
As you aware, Myanmar used to have no Trademark Law. Thus, in the past, all trademarks were registered in Myanmar by way of filing a Declaration of Ownership of Trademark with the Myanmar Registrar. Of note, all trademarks registered previously have not undergone substantive examination. In 2019, a new Trademark Law in Myanmar has been issued, but it has not been come into force until a specific Notification issued by a relevant Ministry in Myanmar. For trademarks which have been registered under the old system, in case the trademark owners wish to keep their registered marks effective in Myanmar, they must re-file applications for registration of their marks for substantive examination at the Myanmar Registrar during a 6-month period called the “Soft Opening Period”.
Read ArticleExpertise Opinions - IP Assessment in IPR Enforcement Proceedings in Vietnam and Several Notable Obstacles
1. Expertise opinions/IP assessment in IPR enforcement in Vietnam
Read ArticleVietnam: Notice on Receipt of Request for Accelerating Examination of Patent Applications Under The PPH Program in 2020
On 22 May 2020, the Intellectual Property Office of Vietnam (IP Vietnam) issued Notice No. 7108/TB-SHTT regarding its receipt of request for accelerating examination of patent applications under the PPH program (PPH request) between the IP Vietnam and Japan Patent Office (JPO) in 2020.
Read ArticleVietnam’s Intellectual Property Strategy With a Vision to 2030 – What Should Be Noted?
Intellectual property (“IP”) is a key concern for every business, regardless of where it operates. In an attempt to strengthen the protection of IP Rights, maximizing the benefits of innovation and innovation activities, in August 2019, the Vietnamese government has released Decision No. 1068/QD-TTg on National IP Strategy on Intellectual Property Strategy with a Vision to 2030 with the following main policies: Policy 1: Completing policies and laws on IP Policy 2: Improving the effectiveness and efficiency of the state management on IP Policy 3: Focusing on promoting and improving the effectiveness of IP rights enforcement
Read ArticleHandling of Trademark Infringement Found in an E-Commerce Website in Vietnam: Some Noteworthy Points
1. What kind of legal action can be taken in cases where the trademark rights of our client is infringed, e.g. seeking a preliminary injunction, bringing an infringement suit, bringing a criminal lawsuit, filing a complaint (under competition law) etc. (Subject to our client having a trademark in Vietnam)?
Read ArticleSupport by IP Vietnam for Domestic PCT Applicants, a Useful Tool to Raise PCT Applications of Vietnam Origin
In the framework of the Intellectual Property Development Program for the period of 2016-2020, the Intellectual Property Office of Vietnam (“IP Vietnam”) in its Official Letter No. 5360/SHTT-NDHT dated 15 April 2020, announces the assistance for Vietnamese individuals in filing international (PCT) patent applications.
Read ArticleSimilar Trademarks in Vietnam, but Whether a Likelihood of Confusion May Exist, It Is a Question
A civil case brought by Ngan Anh Enterprise at the Hau Giang Provincial Court against the Intellectual Property Office of Vietnam (“IP Vietnam”) is an interesting challenge to the government's approach to the determination of trademark similarity.
Read ArticleOvercoming Trademark Refusal Arising from Various Grounds of Rejection, Difficult but Not Impossible in Vietnam
Our firm, KENFOX IP & LAW OFFICE has succeeded in a trademark case which confronted two times of refusal based on two grounds of subjection (i.e. absolute and relative ground) from the Intellectual Property of Vietnam (“IP Vietnam”), under which our client’s applied-for trademark has been accepted for registration in Vietnam via appeal proceedings.
Read ArticleBorder Control Measures Against IPR Infringement in Vietnam: What’s New Under Circular No.13/2020/TT-BTC
Customs have a very significant role to play in enforcing intellectual property rights at the border. Once the goods are sold abroad, they must go through the customs to leave one country for another. Thus, border controal measures serve as a useful tool in tackling the trade of counterfeit or infringing products in the world, including Vietnam.
Read ArticleHearing IP Related Complaints in Vietnam Under Advisory Council Mechanism
Vietnam Law No. 02/2011/QH13 on complaints offers a valuable framework for streamlining the complaint process, allowing the Complaint Settlement Authority to form a separate advisory board to help in the second stage of the resolution of complaints (2nd complaint).
Read ArticleWhat Should Be Noted for Re-Registering a "Registered" Trademark Under 2019 New Myanmar Trademark Law 2019?
The New Trademark Law in Myanmar was passed into law on 30 January 2019. However, the Law is still pending to enter into force. The regulations for trademark registration are currently drafting and Web-based registration system is also under construction. As known, Myanmar government (IP Section) will introduce procedure and implement Trademark application in the very near future. It is expected that around by first week of January 2020, Trademark Office of Myanmar will introduce soft opening period. Said period will start from 1st week of January 2020 to last day of June, 2020. Myanmar Trademark Office will be mechanized trademark registration process by utilizing of online e-filing system (IPAS), provided by WIPO. The following information should be noted under new Trademark Law by the Myanmar Trademark Office yet:
Read ArticlePatent Infringement Brought to a Court in Vietnam: What Should Be Noted?
Bay SAS, a French company, engages in manufacturing agrochemicals and chemicals used in agriculture (“the plaintiff”). The plaintiff was granted a patent in Vietnam on 20 March 2001. The subject matter protected under the patent is new agrochemical combinations of two known insecticides and other agrochemical products.
Read ArticleCyber-Squatting Case Brought to Court for Hearing in Vietnam
Background: O.S GmbH is a multinational lighting manufacturer headquartered in Munich, Germany (“the plaintiff”). The plaintiff is the owner of a series of OSRAM trademark for lighting apparatus, especially electric lamps and luminaires; parts of the aforesaid goods; light-emitting diode lamp modules, being protected in Vietnam
Read ArticleMore Paperwork Required Before Outbound Shipments – A New Way to Control Branded Products in Vietnam?
There have been recent policy/procedural changes at the Vietnamese Customs that may be causing customs issues for foreign businesses and/or trademark owners who engage manufacturing vendors in Vietnam for their products.
Read ArticleWhy patent search is critically needed in Vietnam?
It would be standard practice that patent search for the sake of substantive examination to evaluate the patentability of technical solutions is a part of examination work during the process of patent applications. In the meatime, applicants may optionally have patent search conducted prior to filing to take the patentability of the relevant invention/utility solution into account and decide on or against filing of their patent applications or for other purposes. Besides, patent searches may help investors to avoid patent infringement.
Read ArticleBad Faith Trademark Filing or Registration in Vietnam
“Bad faith” most commonly arises in the context that a trademark is used in one or more jurisdictions, but is not registered in those jurisdictions, and someone (other than the trademark owner) applies for an identical or confusingly similar trademark in a jurisdiction where the trademark is not registered.
Read ArticleCancellation, Termination of a Trademark Registration in Vietnam
Many individuals and big companies in the world want to protect their trademarks Vietnam, Laos, Cambodia and Myanmar.
Read ArticleTrademark Opposition in Vietnam
1. Are oppositions filed before the Vietnam IP Office? KENFOX: Article 112 of the IP Law of Vietnam provides that "As from the date an industrial property registration application is published in the Official Gazette of Industrial Property till prior to the date of issuance of a decision on grant of a protection title, any third party shall have the right to express opinions to the concerned state management agency in charge of industrial property rights on the grant or refusal to grant a protection title in respect of such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information".
Read ArticleExamination Process of Trademark in Vietnam
Formality examination: The trademark application will undergo formality examination within 01 month as from its filing date; However, in practice, it may be extended to further 01–02 months if there is shortcomings on formality of the application.
Read ArticleFiling Guidance for Trademark Registration in Vietnam
In Vietnam, multi-class applications are acceptable i.e. an application can be filed for more than one class of goods or service with payment of additional fee for each additional class.
Read ArticleWhich Vietnamese Bodies Protect Intellectual Property Rights in Vietnam?
In accordance with prevailing legal regulations at Article 200, IP Law of Vietnam governing authority for dealing with acts of infringement of Intellectual Property rights, the following bodies shall, within the scope of their respective duties and powers, have authority to deal with acts of infringement of Intellectual Property rights: courts, inspectorates, market management offices, customs offices, police offices and people's committees at all levels.
Read ArticleOpposing and Defending the Grant of Trademark Registration
The prosecution and enforcement of trademarks are particular strength of the firm.
Read ArticleFiling a Cancellation and/or Termination Action against a Trademark Registration
The prosecution and enforcement of trademarks are particular strength of the firm.
Read ArticleCustoms Recordal of Trademark Rights and Customs Brand Protection Training
Many trademark owners come to us and complains that they are losing millions of dollars, their market and even the trust of the consumers due to counterfeit goods. Needless to say, the counterfeit goods has been causing mass economic, prestigious loss and damages not only to trademark owners but also the society.
Read ArticleWhat are the Border Measures in Cambodia?
A trademark owner can request the customs authorities, or a civil court, to suspend customs clearance and destroy counterfeit goods. As Cambodia’s manufacturing base is relatively narrow, most infringing goods are imported from abroad.
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