Trademark Enforcement Beyond Products: Forcing a Vietnamese Company to Change Its Name and Surrender a Confusing Domain to the US trademark holder

This is a very strong outcome in Vietnam, where you often see infringers try to hide behind “but it’s just my company name”. Here, they surrendered both the brand-facing company identity and the domain.

2. Why the Case Was Legally Difficult?

(1) A pre-existing local name (“CVX Medicine Trading Co., Ltd”) muddied the waters

Before CVX’s Vietnam trademark registrations, there was already another Vietnamese company (“CVX Medicine Trading Co., Ltd”) whose company name was almost identical (or extremely close) to the name “CVX Pharmaceutical Co., Ltd.” later adopted.

That matters because:

• In Vietnam, a company name can function as a trade name.
• Trade names can have protection based on prior use, even without trademark registration.
• CVX Pharmaceutical Co., Ltd. could argue: “Look, a nearly identical company name (CVX Medicine Trading Co., Ltd) already existed here in Vietnam, and nobody claimed confusion. We’re just using something similar that’s already in the market – so how can CVX say consumers will suddenly be confused?”

That argument tries to neutralize the key test for infringement in Vietnam: likelihood of confusion.

So from the start, CVX Pharmaceutical Co., Ltd. could claim: “This type of name has co-existed peacefully here. Your trademark is “newer” than that trade name. You can’t say we’re misleading the public”. That’s a sophisticated defense.

(2) Priority timing issues in Class 05

CVX had trademark protection in Vietnam in Class 05 (pharmaceutical products) and Class 10 (medical apparatus). But CVX Pharmaceutical Co., Ltd.’s company was established before CVX’s trademark registration in Class 05 was granted in Vietnam. This weakens a direct “you’re infringing our trademark in Class 05” argument, because CVX Pharmaceutical Co., Ltd. can say “We incorporated before you secured that class here”. In other words, CVX’s timing in Class 05 was not ideal to support a pure “class-to-class” infringement claim against the company name. 

That’s a classic enforcement blocker. Many firms stop there and tell the client “it’s difficult”.

(3) Domain names and company names are hybrid problems

We weren’t just dealing with use of CVX’s mark on packaging or in ads. We were dealing with:

• corporate identity (the registered company name), and
• online identity (a domain and website confusingly similar to CVX).

These exist in two different regulatory spaces:

• corporate/business registration,
• and internet/IT / domain governance.

Vietnamese enforcement agencies tend to want “clear infringement” before telling a company “change your official name”, because that’s a serious remedy. So we had to build a theory that this wasn’t an innocent corporate name – it was an intentional attempt to appropriate CVS’s brand recognition in Vietnam. That’s where our work comes in.

3. KENFOX Strategy and Actions

Here’s how we turned a messy priority/coexistence situation into a forced name change and domain handover.

(i) We reframed the dispute as unfair appropriation of brand identity, not just “is the mark registered earlier?”

Instead of relying only on Class 05 timing arguments (which were not perfect for CVX), we focused on the overall conduct:

• CVX Pharmaceutical Co., Ltd. chose a company name that was highly similar to CVXS’s well-known U.S. retail pharmacy brand.
• CVX Pharmaceutical Co., Ltd. registered and activated a matching (or near-matching) domain name and built a website under that identity.
• Together, the company name + domain worked to project to Vietnamese consumers:
  “We are CVX in Vietnam” / “We are affiliated with CVX”.

That matters because under Vietnamese IP law and unfair competition principles, you cannot use:

• a confusingly similar sign as your commercial identifier (company name / trade name / domain),
• in a way that misleads consumers into thinking you are connected to a trademark owner.

Even if you try to argue “but someone else here (CVX Medicine Trading Co., Ltd) had a similar name earlier”, the critical question for enforcement is: Are YOU using that similarity to free-ride on the goodwill and recognition of an international brand in a way that causes confusion now? We built the case around that question.

We didn’t get trapped in a timing technicality. We reframed the case as misappropriation of brand identity and unfair indication of commercial origin, which Vietnamese administrative enforcement can act on.

(ii) We rendered the “CVX Medicine Trading Co., Ltd” defense ineffective

CVX Pharmaceutical Co., Ltd. was going to say: “Another nearly identical company (CVX Medicine Trading Co., Ltd) already existed in Vietnam before CVX registered its Class-05 mark, so names like ours have co-existed here. No confusion. We’re fine”. We approached that in two ways:

[i] We emphasized that CVX Pharmaceutical Co., Ltd.’s activities (use of similar name + confusing domain + active website) were directed at consumers in a way that could create direct association with CVX’s brand now – not historically, not in the abstract. It’s about present likelihood of confusion, not just coexistence in the registry.

[ii] We drew attention to CVS’s broader brand profile and distinctiveness in healthcare/retail pharmacy. A company positioning itself in a similar medical/pharmaceutical/services space with a confusingly similar name and a polished domain is not “coexistence”. It’s trading on CVS’s goodwill.

In other words, we framed Entity A’s conduct as opportunistic imitation targeting CVS’s reputation, not as innocent overlap with Entity B.

We dismantle “but there was someone else with a similar name first” defenses by focusing on present-day deception and unfair competition, not just formal name priority.

(iii) We escalated to IMOST (Inspectorate of the Ministry of Science & Technology)

After strategic review and legal analysis, we submitted a petition to IMOST.

Why IMOST? IMOST has administrative enforcement authority for IP infringement and unfair competition in commercial identifiers (including confusing company names and domain names). IMOST can summon the alleged infringer, conduct an on-site working session (effectively an administrative raid / inspection), and demand corrective measures.

We did not, initially, go into a civil lawsuit trying to litigate priority dates. We went to an enforcement body that could act quickly and practically.

We know which Vietnamese authority can compel immediate behavioral change in a corporate identity / domain dispute.

(iv) IMOST + working session = leverage

IMOST proceeded against CVX Pharmaceutical Co., Ltd. and held a working session (which in practice functions as an enforcement confrontation). During that session:

• CVX Pharmaceutical Co., Ltd.’s legal representative was questioned regarding its use of the confusing company name and domain.
• Faced with our petition and the likelihood-of-confusion arguments, CVX Pharmaceutical Co., Ltd.’s representative admitted infringement.

This admission is gold. Once they admit it in front of IMOST, it becomes extremely difficult for them to keep using the name or argue innocence.

(v) Forced corrective measures

As a result of that IMOST working session:

• CVX Pharmaceutical Co., Ltd. was compelled to change its company name to something not infringing / not confusingly similar to CVX.
• CVX Pharmaceutical Co., Ltd. was compelled to return / relinquish the domain name, so that CVX could register it.

What this means in practical terms:

• We shut down their attempt to present themselves as CVX in Vietnam (both offline corporate identity and online presence).
• We prevented future customer confusion.
• We protected CVS’s ability to control its brand identity and domain footprint in Vietnam.

We don’t just “win on paper”. We force name changes and domain transfers, which is exactly what global brands care about when someone clones their identity in Vietnam.

Photo of the CVX Pharmaceutical Co., Ltd’s Director working with the IMOST and Mr. Quan

4. Outcome / Impact

• Immediate cessation of misleading brand identity: CVX Pharmaceutical Co., Ltd. could no longer operate under a company name that implied affiliation with CVX.
• Domain recovery / prevention of cybersquatting”: The confusing domain was surrendered so CVX could secure it, preventing CVX Pharmaceutical Co., Ltd. from using the domain as a fake “official Vietnamese channel”.
• Public-facing confusion eliminated: Vietnamese consumers searching online or encountering CVX Pharmaceutical Co., Ltd’s “CVX-like” name would no longer be misled into thinking they were dealing with CVX.
• Avoided long, uncertain litigation based on timing issues: Instead of a slow civil fight (where CVX Pharmaceutical Co., Ltd. might argue priority / coexistence / CVX Medicine Trading Co., Ltd’s trade name), we achieved a practical remedy via administrative enforcement.
• Strengthened CVX’s position in Vietnam going forward: Now that IMOST has treated this behavior as infringement, any future lookalike “CVX-style” company name or domain in Vietnam can be confronted more aggressively, with this case as persuasive precedent.

In plain business terms: We protected the client’s brand identity in Vietnam (online and on paper) even though the timing in Class 05 and coexistence arguments were stacked against us.

5. What This Case Proves About KENFOX

• We can enforce trademark rights against confusing company names and domain names – not just on physical products:  We got a Vietnamese company to change its registered corporate name and surrender a domain that was trading on our client’s brand.
• We win even in messy priority environments: CVX Pharmaceutical Co., Ltd. tried to hide behind (a) earlier existence of a nearly identical Vietnamese company (CVX Medicine Trading Co., Ltd) and (b) timing gaps in CVX’s trademark registration. We still achieved enforcement.
• We defeated “coexistence” defenses: We reframed the issue around present-day misleading commercial impression and unfair competition, not just historical coexistence of similar trade names.
• We know how to use IMOST effectively: We went straight to the Inspectorate of the Ministry of Science & Technology, which has the authority in Vietnam to confront an infringing company, compel admissions, and order changes.
• We secure practical, not theoretical, remedies: This didn’t end in a vague warning letter. It ended in: (i) name change and (ii) domain handover. For global clients, that’s the actual win.

We defend brand presence at every layer: Trademark infringement today often happens in corporate registries and domain registrations long before it hits physical packaging. We can intervene at that layer.

QUAN, Nguyen Vu | Partner, IP Attorney

PHAN, Do Thi | Special Counsel