KENFOX IP & Law Office > IP Practice in Vietnam > IP Practice – Trademark in Vietnam

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Mr. CAM, Nguyen Ngoc

Trademark & Copyright Manager

(84) 24 3724 5656

kenfox@kenfoxlaw.com

 

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Trademark Related Matters

Trademark Related Matters in Vietnam

Copyright © 2018 KF

 

All other rights are reserved. This document and its contents are made available on an “as is” basis, and all implied warranties are disclaimed. The contents of this document do not constitute, and should not be relied on as, legal advice. You should approach a legal professional if you require legal advice.

 

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KENFOX handles sophisticated trademark matters for small, medium and Fortune 500 companies around the world. In fact, we protect multiple valuable trademarks in the world (according to Forbes magazine and Interbrand). We are a full-service trademark group, prosecuting hundreds of trademark applications and registrations each year. Our trademark lawyers clear titles and provide opinions, handle proceedings before Department of Enforcement and Appeal Settlement (DEAS), National of Intellectual Property of Vietnam (NOIP), Ministry of Science & Technology of Vietnam (MOST).

 

KENFOX attorneys assist clients with:

 

  • Prior-filing trademark search / Availability search
  • Preparing, filling and follow-up of applications for registration of trade and service marks (Trademark prosecution) and counsel on all trademark matters
  • Trademark Watching Service
  • Opposing and defending the grant of trademark registration; AND Filing a cancellation and/or termination action against a Trademark Registration
  • Trademark Rejections and Trademark Office Actions in Vietnam
  • Trademark renewal and recordal of trademark license contracts in Vietnam
  • Enforcement:

 

     › Conducting investigations.

     › Cease & Desist Letters, a way effective or detrimental in anti-counterfeiting campaign?

     › Customs recordal of trademark rights and customs brand protection training

 

  • Anti-Counterfeiting
  • False Advertising
  • Branding and Rebranding
  • Domain Name Proceedings
  • Overcoming the NOIP’s refusal, appeal against the NOIP’s refusal decision

 

We are there for our clients in all stages of these efforts, from determining whether the mark would be effective and protectable, filing, representing clients in connection with the prosecution and registration process of their trademarks only in Vietnam, but also in Laos, Cambodia, Myanmar and other ASEAN countries, representing clients in opposition proceedings, and enforcing the mark in the relevant markets. We strive to have our clients’ marks become, and continue to be, their important assets, and use such assets to increase the bottom line.

 

Our Clients

Global industry leaders rely on KENFOX trademark lawyers to counsel them when making critical decisions regarding the protection of their trademarks, brand development and portfolio optimization. KF have handled national and international clearance, registration, maintenance and protection of trademarks for clients.

 

Want prior-filing trademark searches / Registrability searches in Vietnam?

KENFOX pre-filing search team can conduct full trademark searches based on the database of the National Office of Intellectual Property of Vietnam (NOIP) and WIPO’s online trademark database, or even on the Vietnamese national enterprise database to identify whether there are any registered or pending trademarks or company names/corporate names or trade names similar to the chosen ones of the client. Under Article 6.3(a) of the IP Law of Vietnam, trademark rights are established on ground of a decision on trademark registration or protection in Vietnam (with an exception of well-known trademarks where trademark rights can be established on use). Trade names also constitute a form of industrial property in Vietnam, with rights established through their use rather than under a formal registration system. In case the trade name has been used before the application date of KF client’s mark, use of the intended trademark in commerce may pose them to risk of infringement over the prior trade name. Because of this, KF is aware that it is economically and legally important to conduct trade mark searches to even assess the risks of infringing someone else’s rights.

 

Our firm’s trademark attorney conduct many complex prior-filing searches each year and we have extensive experience in counselling the clients on options after the trademark searches. KF attorneys can provide you with a trademark search report with our professional analysis within 02-03 working days, depending on the number of requested trademarks or the urgency of the request. Based on the client’s trademark specimen, KENFOX trademark attorneys will provide practical advice on where and what to search, arrange for searches to be conducted and furnish the clients with commercial and practical advice and analysis on the search results.

 

For a prior-filing trademark search, the clients are required to provide us with (i) a clear specimen of the mark; and (ii) the list of goods/services and the corresponding international class, if known.

 

Call or email us for our further advice on prior filing trademark search/availability search in Vietnam and for involved costs for such search.

 

Read more:

Trademark evaluation, Trademark clearance and Trademark registration in Vietnam

 

Preparing, filling and follow-up of applications for registration of trade and service marks and counsel on all trademark matters

Trademarks and service marks are used to clearly identify the source of goods and services in the marketplace.  KENFOX understands that securing trademark protection is critical not only to distinguish your business from your competitors, but also to minimize the risk of dilution of your brand by similar marks. Extensive scope of protection of the clients’ trademarks will benefit them in a way that trademark protection not only gives them the legal means to bar their competitors from using their registered mark, but also facilitate enforcement authorities in Vietnam to take actions against alleged infringers.

 

With this in mind, KENFOX lawyers thoroughly study the clients’ instruction and readily furnish them with prior-filing advice, especially on the designated goods/service and trademark samples. KF trademark attorneys have years of experience in helping businesses identify and protect the unique characteristics of words, logos, designs, and other attributes that define a brand. We strive to preserve our client’s trademark rights and provide them with powerful legal recourse if they encounter an infringement. KF trademark team will work collaboratively with the clients to evaluate investment opportunities that are well-suited for their portfolio and to optimize the scope of their brand in Vietnam. By strategically branding and developing a portfolio of valuable trademarks, you can gain a competitive edge in the marketplace.

 

Trademark Prosecution in Vietnam

In order to distinguish your marks and secure powerful legal recourse in case of infringement, we are aware that it is critical to obtain a proper registration of your trademarks with the National of Intellectual Property of Vietnam (NOIP). Obtaining approval of a trademark registration in Vietnam depends on submitting a detailed and accurate application that illustrates the distinctive features of your mark and clearly distinguishes it from other registered trademarks. Practice indicates that a trademark that is more distinctive is more likely to be approved for registration, and also less likely to be trespassed. A trademark that stands alone from other marks will ultimately separate your business from the competition.

 

KENFOX has expertise in identifying, comparing and contrasting the marks across multiple industries that are necessary for securing a trademark registration and distinguishing your brand. Our trademark attorneys know that registration is a labor-intensive process that requires working collaboratively with the NOIP to overcome technical hurdles and achieve successful outcomes for our clients. By understanding the clients’ business objectives in Vietnam, we will help them create a distinctive brand identity and obtain the maximum protection for their trademarks in this jurisdiction.

 

Read more:

Critical points: Trademark examination processes in Vietnam

 

Want Trademark Searching Services in Vietnam?

 

KENFOX works tirelessly to assist clients to monitor their registered trademark for unauthorized and potentially damaging use

Infringers are more increasingly complicated. Taking some verbal or figurative parts of others’ well-known marks to integrate their marks to generate marks for filing with the Trademark Office of Vietnam or making some minor changes of others’ well-known marks for registering it for similar goods are merely some emerging ways by complicated infringers to trade on the goodwill and reputation of well-known mark in Vietnam.

 

KENFOX understand that successful trademark registration in Vietnam just serves as a first step in the use of a chosen brand, company or product name in this jurisdiction. To ensure that our client’s valuable marks are protected and enforced, we work tirelessly to assist KF clients to monitor their registered trademark for unauthorized and potentially damaging use. Trademark watching services are an important tool in the proactive monitoring of registered marks, helping the trademark owners to identify and act against infringement and misuse of their trademarks in a timely manner in Vietnam.

 

When is a Trademark Watching Service needed in Vietnam?

Our experience shows that early detection of likelihood of trademark infringement or misuse is critically important in any trademark protection strategy. What additionally important is that the deadlines associated with submitting objections (or oppositions) to an attempted registration by a third party of a conflicting trademark is met. KF trademark attorneys conducts trademark searches almost every day and, thus, put us in a strong position to help monitor and assess all new trademark registrations at the relevant national and international trademark registers to identify potential conflicts with the client’s trademarks. Our KF team will also work with you to create, submit and substantiate oppositions where necessary.

 

Which Trademark Watching Service should you use in Vietnam?

KENFOX understands that a strategy to manage a comprehensive trademark portfolio not only includes securing rights through registration, but also includes a well-designed enforcement program, of which Trademark Watch is a first, but important step for subsequent trademark opposition or cancellation proceedings to ensure continued protection of trademarks and brands in an efficient manner in Vietnam.

 

KENFOX trademark lawyers check relevant trademark registers in Vietnam to identify identical and similar trademarks to your chosen mark. Where required, it may be accompanied by appropriate advice from our consultants. Our Trademark Watching Service can be tailored to meet any specific business needs from KF client but, in general, may fall into:

 

• Identical trademark watch: Subject to client’s goals, we may conduct the searches for newly filed trademarks to identify those marks or devices (e.g. logos) that are visually or phonetically identical;

• Similar trademark watch: Identifies identical and confusingly similar marks;

• Trademark watch with opinion: Includes the attorney’s recommendation on the results of the identical or similar trademark watch based on their consideration of your prior rights and the likely impact on your business and market share.

 

Opposing and defending the grant of trademark registration; AND Filing a cancellation and/or termination action against a Trademark Registration

KENFOX understands that obtaining trademark protection in Vietnam is just the first step in protecting your intellectual property as subsequent registrations by competitors may infringe on your trademark. Fortunately the National Office of Intellectual Property of Vietnam (NOIP) has procedures in place that provide trademark owners with recourse to protect their rights. Before a trademark is approved for registration it must be published for opposition by the holder of a prior mark who believes its trademark may be damaged by the proposed mark. In order to avoid dilution of a trademark by the application of a strikingly similar mark, it is critical to file a Notice of Opposition with the NOIP. If the application has already passed through the time period allowed for opposition and has been registered, you can then move to have the mark cancelled.

 

Opposition to trademark applications or taking cancellation actions against registered trademarks are statutorily permitted, if you believe that your right and interest would be damaged by the registration of any trademark, and you have grounds for preventing/cancelling the registration of such mark, you are entitled to file a Notice of Opposition to the grant of Protection Title for such mark or initiating a cancellation action against the registered trademarks. Trademark opposition and cancellation actions should be filed with the National of Intellectual Property of Vietnam (NOIP).

 

Opposition and cancellation proceedings against a pending or registered trademark are complex legal matters that require the attention of sharp, knowledgeable and experienced trademark attorneys. KF trademark attorneys treat each trademark opposition and cancellation proceeding as a unique matter. We analyze the specific facts and evidence of each case and set up a plan to best achieve the client’s goals. When a client is confronted with issues concerning registration of its own trademarks or of the registration of another party, we guide the client through the process of evaluating available options in an effort to resolve the matter in a way that is most beneficial to the client.

 

NOIP rules and procedures in trademark opposition and trademark cancellation proceedings are not simple and require an experienced attorney to present the proper case in order to acquire or preserve trademark rights. Our experience with trademark opposition and cancellation matters provides the skills to navigate the complex NOIP rules. KF trademark attorneys work closely with clients to guide them through every step of relevant processes. Our attorneys have experience to effectively evaluate the claims, defenses, and merits of each case, and to develop strategies that are mindful of our clients’ business goals, resources, and the merits of the case. At KENFOX, with many trademark attorney having years of practical experience, the firm has successfully assisted various clients in filing oppositions as well as defending the clients’ application against oppositions and trademark cancellation cases in Vietnam.

 

Want more insights on trademark opposition and cancellation in Vietnam? See below questions relative to trademark opposition and cancellation in Vietnam and contact us.

 

Read more:

• Questions on trademark opposition in Vietnam / Notice of Opposition/ Opposition proceedings in Vietnam / Third party’s opinion on trademarks in Vietnam

• Questions on trademark cancellation proceedings (invalidation actions) in Vietnam / Filing a cancellation/invalidation actions against a trademark registration in Vietnam

• Legislation on trademark opposition in Vietnam

• Legislation on trademark cancellation & invalidation in Vietnam

 

Trademark Rejections and Trademark Office Actions

During formality and substantive trademark examination, the National Office of Intellectual Property of Vietnam (NOIP) issues various Office Actions (i.e. Notice on formality deficiency, Notice of substantive examination result, etc.). Office Actions are a type of response you may receive from the NOIP regarding your trademark application. They outline issues with the application that need to be addressed before registration can be granted. The issues cited in an Office Action can range from simple disclaimers to very complex likelihood of confusion refusals citing multiple marks prior registered in Vietnam or designating Vietnam for protection under Madrid system. Further the response to an Office Action can affect the scope of the trademark’s final registration. It is important to respond to an Office Action with a complete understanding of the issues and response options.

 

KENFOX’s experienced attorneys understand the host of potential direct response options, and even some indirect legal options (such as attempting to cancel an opposing mark or seeking concurrent use). KENFOX IP attorneys lawyers are the best choice for business who seek success at the NOIP or Ministry of Science & Technology of Vietnam (MOST).

 

Want advice to overcome the NOIP’s Office Actions? Simply contact us.

 

Trademark renewal and records of trademark license contracts in Vietnam

 

Trademark renewal in Vietnam

 

KENFOX trademark prosecution services do not end when a trademark is successfully registered. We understand that getting your IP in place is important, but it’s just the start. Managing intellectual property is a vital ongoing task once patent protection, trade mark protection or design registration is in place. Trademarks, like any type of intellectual property, require consistent attention. To maintain IP such as trademark protection, you must pay renewals on time.

 

A company’s trademarks are the DNA that makes up its identity and sets it apart from the competition. As such, proper protection of a company’s trademarks requires focused and proactive measures. Trademark renewal is an integral part of such measures. We understand that when it comes to the safeguarding and maintenance of such valuable assets you can’t afford to cut corners or take risks. Reinstating lapsed IP rights is difficult at best, if not impossible. Because of this, it’s vital to monitor deadlines and never miss renewal dates. You need to be sure you are entrusting the safety of your IP rights to an IP agent that has the expertise and stability to protect them.

 

KENFOX attorneys provide full registration maintenance and renewal services for domestic and international trademarks. The firm’s attorneys proactively monitor the clients’ trademark portfolio and handle the filing of required documents throughout the life of each mark. We prosecute and maintain many trademark applications and registrations in various jurisdictions, such as Vietnam, Laos, Cambodia, Myanmar and other ASEAN countries every year.

 

Read more:

• Questions on trademark renewal in Vietnam

• Legislation on trademark renewal in Vietnam

 

Records of license contracts / licensing in Vietnam

KENFOX is aware that businesses with recognized brands frequently encounter opportunities to extract additional value from their trademarks by granting permission, or license to third parties to use the marks. In such regard, it is critical to formalize this arrangement in a well-thought-out trademark license that includes measures to prevent damage to your brand name and maximize the financial benefits you will derive from this arrangement. Any license agreement will include provisions that clearly identify the trademark, regions where it can be used, whether the license is exclusive, and specify royalty payments the licensee will pay to the licensor.

 

KENFOX has significant expertise negotiating and preparing trademark license agreements for a wide variety of businesses. KF trademark attorneys strive to ensure that the products sold by a licensee adhere to the highest standards by securing your right to exercise quality control in order to protect your brand and reputation. Our trademark attorneys will also advise you on specific trademark licensing requirements, infringement risks and enforcement privileges. In addition, our attorneys regularly represent licensors and licensees in international and domestic transactions involving software, patent, trademark, copyright and trade secret licenses.  We routinely negotiate a broad range of commercial contracts.  Kenfox also represents clients in negotiating system integration agreements and value added reseller, distribution and original equipment manufacturing agreements.

 

Read more:

• Questions on trademark license in Vietnam?

 

ENFORCEMENT

Protecting your company’s brand, reputation and, most importantly, market share, demands vigorous enforcement of your trademarks. Regardless of intent, third parties may seek to register or use similar marks that can cause confusion in the marketplace, dilute your brand and infringe on your intellectual property. Subject to nature and severity of IPR infringement, the IPR holders may take civil, administrative or criminal measures against the infringers. KENFOX IP lawyers are here at your disposal, starting with sending a cease and desist letter demanding that the infringing party stop using the mark. If the infringement continues, then proceedings with enforcement actions may be necessary.

 

KENFOX works closely with clients to develop an enforcement strategy to uncover and stop third parties from using or registering infringing marks. We also conduct ongoing due diligence by performing trademark searches and monitoring registration activity on behalf of clients. If additional measures are necessary, our attorneys can produce effective cease and desist letters and pursue required proceedings before Vietnamese enforcement authorities of Vietnam.

 

Readmore:

• IPR Enforcement in Vietnam

 

BORDER CONTROLS

Besides three measures as mentioned above, IPR holders have the right to request customs offices to apply border measures with the alleged infringing goods, whether imported or exported, across Vietnamese borders. Border controls are deemed to be prompt and intermediate measures that IPR holders can use to bar alleged infringing imports or exports and locate and gather evidence of infringement of their rights. However, IPR holders may be faced with a risk that their allegation is found groundless, resulting in the fact that they may be attacked by counter-claims.

 

IPR holders may request the customs offices to take the following border measures:

 

• Inspection and monitoring for the imports or the exports suspected of being the IPR infringing goods;

• Suspension of customs procedures upon the request of the IPR holder within 10 working days. This duration may be extended, but shall not exceed 20 working days in total, subject to legitimate reasons and another security provided by the IPR holder.

• For requesting the competent Customs Offices to apply border measures, IPR holders shall be obligated to:

 

  – Substantiate that that they are the IPR holders;

  – Provide adequate information to determine the import-export goods/products allegedly infringing intellectual property rights;

  – Submit a request for taking border measures and pay official prescribed fees;

  – Compensate for damages caused by taking border measures.

 

Conducting trademark investigations and market surveys on trademark to identify if the targeted trademark has been used in Vietnam or not

KENFOX represents clients at every stage of trademark disputes—pre-enforcement analysis, investigation, cease and desist, preliminary injunctions and, conducting coordinated raids with law enforcement bodies (namely, Customs authorities, Market Management Bureau, Police, specialized Inspectorates of Science & Technology or Inspectorate of Culture, Sports and Tourism), mediation, trial and appeal.

 

While there is no “one size fits all” approach to fight against counterfeit and or IP infringement goods, an effective, cost-efficient and credible internal investigation requires selecting the appropriate investigators, defining a sufficiently narrow investigation scope, preparing an action plan with achievable deadlines, and collaboratively executing the plan. And KENFOX Investigation Team is here to assist you.  Our Investigation Team is built on our associates and other outsourcing forces in case required by KF clients. In particulars, there are specialist IP investigators of KENFOX who are able to track infringing and counterfeit product from manufacturing source in Vietnam and based on the investigation’s result of other outsourcing forces, release their conclusions on the possible IPRs infringements and resolution of dispute and enforcement.

 

The enforcement team of our firm has extensive expertise and experience in fighting against IPR infringement, preventing the counterfeit/infringing goods at the customs and deterring the potential infringers. Our experience extends to all kinds of intellectual property, including patents, designs, trademarks (anti-counterfeiting), copyrights (anti-piracy), domain name, trade names, trade secrets, and unfair competition.

 

KENFOX IP lawyers rely upon strong trademark policing efforts and the judicious use of protest letters to afford clients ongoing protection against trademark dilution while relieving them from the burden of conducting their own policing investigations. Such efforts frequently enable KENFOX clients to put a halt to third party encroachment before expensive and time-consuming enforcement actions under civil, criminal or administrative route can be taken.

 

When disputes rise to necessity of taking civil, criminal or administrative actions, KENFOX IP lawyers represent clients before relevant enforcement authorities, such as Market Management Bureau, Police, specialized Inspectorates of Science & Technology or Inspectorate of Culture, Sports and Tourism or Courts. We have extensive experience handling all type of complex IP infringements as our lawyers have successfully coordinated with various enforcement authorities in Vietnam in anti-counterfeit campaigns conducted nationwide.

 

Apart from handling IPR infringement cases, we also effectively manage smaller proceedings, such as hundreds of opposition and cancellation proceedings before Department of Enforcement and Appeal Settlement, National of Intellectual Property of Vietnam, Ministry of Science & Technology of Vietnam as well as various cases in need of expert witness (or expert opinions) from Vietnam Intellectual Property Research Institute (VIPRI) annually.

 

Read more:

• Conducting trademark investigations and market surveys on trademark to identify if the targeted trademark has been used in Vietnam or not.

 

Cease & Desist Letters, a way effective or detrimental in anti-counterfeiting campaign?

Cease and Desist Letters are sent to warn alleged infringers of an IPR holder’s potential enforcement of rights if infringing activity is not stopped. While cease and desist letters may lead to enforcement actions, they can also result in cooperative relationships and licensing negotiations or be sent merely as an intimidation tactic. KENFOX has extensive experience in advising clients on whether to send Cease and Desist Letters based on their specific circumstances. We can also help clients evaluate their options in responding to Cease and Desist letters.

 

Customs recordal of trademark rights and customs brand protection training

KENFOX understands that concerns regarding counterfeiting and piracy have become increasingly acute as markets have globalized and many goods sold in Vietnam are imported.  Practically, counterfeit goods with unauthorized use of trademarks are usually sold at below market prices which erodes profits and damages the mark owners’ brand in the marketplace.

 

More progress in customs recordal has been made in Vietnam recently. More positive amendment has been made to the customs related laws, aiming at encouraging the IPR owners to vigorously fight against counterfeits at the customs. Recording trademarks with Customs Supervision Department, under General Department of Customs of Vietnam is now more straightforward and inexpensive. Thus, it can be a quick and cost-effective method of preventive enforcement of a trade mark owner’s rights However, each trade mark recorded must be constructed carefully to avoid the accidental seizure of the owner’s own goods or the goods of an authorized licensee or distributor

 

KENFOX IP lawyers have expertise not only securing national and international protection of trademark rights, but also recording registered trademarks with the customs offices in Vietnam. The process of recording a mark with customs to protect against counterfeit must be handled with care and precision. Our trademark attorneys can help you protect your brand identity from counterfeit goods that flow into domestic commerce, safeguard your profits, and preserve your reputation.

 

Read more:

• Customs recordal in Vietnam

• Filing an application for examining and supervising IP related imports/exports at the Vietnamese customs / Customs recordal / Trademark Customs Registration/ Registration of Trademark with Customs in Vietnam/ Customs Monitoring against Counterfeit

 

Anti-Counterfeiting

KENFOX IP lawyers provide brand management services to the clients, helping them to increase their exposure and marketability, while defending against counterfeits that threaten their value. KENFOX partners have worked with various well-known trademarks subject to infringement and provided intellectual property policing programs and trademark watch services that ­alert us to potential issues against which our clients may need to take action.

 

We handle everything from the preliminary research and protest of infringing uses to litigation against infringing uses before Department of Enforcement and Appeal Settlement, National of Intellectual Property of Vietnam, Ministry of Science & Technology of Vietnam. Our IP lawyers has extensive experience in assisting our clients in every aspect of their anti-counterfeiting and antipiracy efforts, including investigations, seizures of counterfeit merchandise. Most of investigation are conducted by our in-house investigators to cut down costs for our clients. For complicated infringers, at the client’s requests, we may do outsourcing. We have assisted in developing various strong anti-counterfeiting/piracy programs for our clients to optimize their brand management.

 

False Advertising & Unfair competition in Vietnam

KENFOX clients seeking to protect their intellectual property assets are not limited to patents, trademarks and copyrights. There are numerous statutes in Vietnam that protect valuable business information and competition in the business environment. KENFOX attorneys are well versed in all aspects of advertising laws. We conduct compliance reviews of advertising copy prior to publication, and provide practical advice on a broad range of advertising and marketing issues. KENFOX effectively represent clients in all types of advertising proceedings including false advertising and defamation actions, etc.

 

Protections available under the rubrics of unfair competition or unfair trade practices include, for example, (i) Misleading instructions; (ii) Infringement of business secrets; (iii) Coercion in business; (iv) Defamation of another enterprise; (v) Causing disruption to the business activities of another enterprise; (vi) Advertisement aimed at unfair competition; (vii) Promotion aimed at unfair competition; (vii) Discrimination by an association; (ix) Illegal multi-level selling of goods under Article 39 of Competition Law of Vietnam, which came into force on 01 July 2005. KENFOX attorneys have worked with clients to maximize the protection of their intellectual property and navigate the tangle of unfair competition laws. On behalf of our clients and with law enforcement assistance, KENFOX has successfully used the unfair competition laws to conduct large scale seizures of counterfeit cosmetic and medicinal products in Vietnam. These cases are taken as typical example of successful enforcement under unfair competition at various IP conferences in Vietnam. We are experienced in all aspects of unfair competition law, and regularly counsel clients on how to protect their rights and how to avoid unfair competition claims by others.

 

Since the body of unfair competition law is often intertwined with patents, trademarks and copyrights, KENFOX, as a premier provider of intellectual property legal services, is strategically placed to handle these matters. KENFOX attorneys have drafted agreements and licenses protecting the intellectual property assets of the clients and litigated on behalf of our clients to resolve questions of competitive activities.

 

We pride ourselves on leveling the playing field in the business arena and, when necessary, in the courts so that our clients are able to fairly compete in the marketplace.

 

Branding and Rebranding

KENFOX IP lawyers act as key advisors to companies in developing strategies for marketing their products and services in the abundance of laws of Vietnam and handling various aspects of development and protection for well-known brands although no trademarks are officially recognized on the Industrial Property Gazette of Vietnam. This in-depth experience makes our advice more valuable and trustworthy. Our seasoned attorneys help the clients prudently acquire trademarks owned by third parties, and investigate and resolve potentially problematic priority disputes. We also help clients maximize their portfolio value by assessing and identifying trademarks that require stronger protection (often those are less per se distinctive but registered), and advise on marks that should be discontinued.

 

KENFOX trademark practice created and perfected the “emergency rebrand,” used when our clients need expedited corporate name change clearances and registrations after such corporate name is determined to be an infringing element over a prior mark. In crisis situations, we have assisted our clients in completing strategic and confidential name changes on an emergency and expedited basis, helping our clients quickly and discretely reposition and/or reintroduce themselves in the marketplace, depending on their brand strategy and business goals. Some steps which our clients recommended for rebranding are as follows: (i) Influence and shape the brand with a series of brand promises; (ii) Obtain customer feedback; (iii) Find out what’s not working; (iv) Develop your story; (v) Permeate all your company communications with the new brand; (vi) Never stop supporting and promoting your brand and (vii) Be consistent and persistent.

 

Domain Name Proceedings

Whether representing individual domain name owners or Fortune 500 companies, KENFOX lawyers are adept at implementing domain name strategies that complement the needs of the clients. We advise clients on an array of domain name matters, including portfolio management, monetization strategies, privacy issues, reputation management, hijacking and reverse hijacking, sale, transfer and licensing, terms of service, and even liquidation, when necessary.

 

Domain names are a frequent ground for disputes. Speculative and abusive registration and maintenance of <.vn> domain names (“cybersquatting”) continues to be a growing problem in Vietnam with Vietnamese and some foreign parties. This mainly takes the form of (i) Vietnamese or foreign individuals or organizations registering <.vn> domain names that contain or closely imitate the reputed trademarks of others, or (ii) a Vietnamese or foreign company continuing to maintain a <.vn> domain name after its license or business relationship with the trademark owner expires or is terminated, or (iii) the owner of a <.vn> registration may point (or threaten to point) the domain name to the domain name) to a competitor’s website or a derogatory website. In each case, the registrant often acts in “bad faith”, seeking to exploit the good will of the foreign party’s trademark and/or seeking to extort a payment from the trademark owner and/or trying to benefit the trademark owner’s competitor.

 

KENFOX understands that competing claims to a company’s trademarks by cybersquatters and more traditional infringers can bar a business’s attempt to exploit a trademark as a domain name and market itself through the internet. Having gained extensive experience in dealing with the cyberquatting, KENFOX attorneys have successfully assisted trademark holders and domain name registrars who are faced with such disputes.

 

Internet disputes extend well beyond domain names.  As an example, creative trademark infringers use famous trademarks and service marks in meta tags and “ghost text,” a colored font on an identically colored background. Others creatively use the Internet as a way to pirate software or otherwise unlawfully trade on another’s property. KENFOX has commensurate expertise in the proactive Internet protection of intellectual property in Vietnam, the identification and location of infringement and infringers and the enforcement of our clients’ rights within this jurisdiction.

 

With over a decade of experience handling domain name issues, KENFOX Intellectual Property attorneys advise clients in all aspects of domain name acquisitions and disputes. Such services protect our clients from companies and individuals who register domain names in bad faith or create websites that are likely to cause consumer confusion. Our experience in this area includes handling pre-dispute investigations and negotiations, proceedings under administrative proceedings in Vietnam against “.vn” alleged infringing domain names or  ICANN’s Uniform Dispute Resolution Policy (UDRP) concerning generic top-level domains such as .com, .net, and .org.

 

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