To 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...

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Measures To Deal With Industrial Design Infringement In Vietnam

Subject to the nature and severity of IPR infringement, when an industrial design infringement occurs, the holder may resort to administrative, civil or border control route to fight thereagainst. If the alleged infringing products are found to be imported into Vietnam via customs, priority should be given to recordal of customs supervision for the design patent in Vietnam....

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Coping with counterfeit trading on e-commerce websites/platforms in Vietnam

The e-commerce market is growing in Viet Nam, but it is also used to trade counterfeit goods with increasingly sophisticated activities online. Counterfeit trading on e-commerce websites/platforms is largely seen nowadays in Vietnam. The consumers who have changed their traditional shopping habits recently and switched to online more over the past years, especially after the outbreak of the COVID-19 pandemic has resulted in floods of fake websites and/or online counterfeiting ...

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Invalidating 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...

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Amendments to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in force as from February 1, 2021

1. At its fifty-third (23rd ordinary) and fifty fourth (31st extraordinary) sessions, the Madrid Union Assembly adopted amendments to Rules 3, 9, 21, 25 and 36 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as “the Regulations”) that will enter into force on February 1, 2021....

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Time-limit for responding to Office Action concerning IP applications in Vietnam

Registration application: Under Vietnam IP Law, the time period from application to registration for a straightforward application is 12 months. Response toward OA: For a Notice of Formality Deficiencies/Shortcomings: The IP Vietnam issues a Notice of Formality Deficiencies/Shortcomings, requiring the applicant to file a response within 02 months from the date of the Notice. If the response is satisfactory, a Notice of Formality Acceptance must be issued within 02 month after the filing date of the response (See Point 13.8b, Circular No. 01/2007/TT-BKHCN, as revised).  For a Notice of a third party’s opposition: The IP Vietnam issues a Notice of a third...

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What to do if a trademark faces a refusal Decision issued by the IP Office of Vietnam

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. If an applied-for mark is finally rejected to register by the MOST or a competent court in Vietnam, assuming that such refusal is based on absolute ground (e.g. a merely distinctive mark or weakly distinctive mark), ...

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Trademark 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....

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