In 2018, PIAGGIO & C. S.p.A. (“PIAGGIO”), the holder of Design Patent No. 20652 for protection of motorbike industrial design, filed a suit against a Vietnamese company named “DETECH Technology Development Supporting Joint Stock Company” (“DETECH”). ...
Continue readingThe 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 ...
Continue readingBad-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...
Continue reading1. 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....
Continue readingRegistration 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...
Continue readingIf 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), ...
Continue readingTo 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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On 07 October 2020, Intellectual Property Office of Vietnam (IP Vietnam) has issued Decision No. 4010/QĐ-SHTT on granting Geographical indication registration certificate no. 00086 for “Hàm Yên” orange. People’s Committee of Tuyên Quang province is the organization in charge of managing this Geographical indication (GI)....
Continue readingA draft of the amended IP Law of Vietnam has been released recently by the Ministry of Science and Technology of Vietnam and published in its website in November 2020 for public comments. The recent signing of big trade pacts, such as the European Vietnam Free Trade Agreement (“EVFTA”), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”), the Regional Comprehensive Economic Partnership (“RCEP”), the world’s largest trading bloc have triggered the comprehensive amendment of Vietnam’s IP Law that enacted in 2005. While a lot of progressive provisions have been introduced to this third amendment of Vietnam IP Law, some...
Continue readingHow the goods and/or services bearing this trademark are deemed related/relevant to those under an earlier mark is very important to determine registrability of similar trademarks in Vietnam. Whether Nice Classification is the only basis for making an assessment on relatedness/relevance of the goods/services bearing trademarks? Of course, it is not....
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