KENFOX IP & Law Office > Articles posted by Ly Dinh

Bad faith (Malicious) – a legal basis for trademark opposition or invalidation in Vietnam

"Bad faith" is a legal term that was added to Articles 96 and 117 of Vietnam's amended IP Law in 2022 in order to address the following issues: (i) to close legal loopholes that had been identified from the "first-to-file" principle – a mechanism that grants protection titles to the those earliest filed trademark applications, including those made in bad faith and (ii) effectively curbing trademark squatting – a growing trend in emerging economies like Vietnam. With the provision of "bad faith," a legitimate trademark owner has an additional important legal basis to challenge the validity of a trademark filed or registered by a third party...

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How to Effectively Enforce IPR Infringement in Cambodia

Download  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. Parallel imports in Cambodia – Permissible or trademark infringement? Per article 11 of Cambodian Law concerning Marks, Trade Names and Acts of Unfair Competition of the Kingdom of Cambodia (2002) which provides for “Registration and Rights Conferred by Registration”, the owner of a protected trademark has the exclusive right...

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How to Successfully Argue Wide Use Evidence in Trademark Opposition and Cancellation Cases in Vietnam?

Download 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. Facts: A recent case that exemplifies the above mentioned principle...

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How to use US patents to expedite Cambodian patent examination: A step-by-step guide

Download 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...

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Avoiding Descriptiveness Refusal in Laos: Key Considerations for Trademark Owners

Download 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. In Laos, not a few trademark applications are denied on the grounds that the proposed trademarks fail to meet the protection requirement as they are considered descriptive of the goods or services in question or common names the designate...

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Protecting your IPR in Vietnam – A Guide to VIPRI’s Services and Expertise

Download 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...

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Key takeaways from the recent trademark assessment conclusion issued by the Vietnam Intellectual Property Research Institute

KENFOX IP & Law Office

Download Background: HOA SEN Vietnam Co., Ltd is 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 In 2017, the distributor and sales agent...

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Amending Patent Specifications In Vietnam – Best Practices for Applicants

This patent must be invalidated

Download 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...

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Owning a trademark but cannot address trademark infringement in Vietnam, why?

Vietnam Intellectual Property Research Institute

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...

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Appropriating the trademark “HWASUNG” of Korean company to attack the genuine trademark owner

Download 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. After registering the trademark "HWASUNG", Thien Phu Company petitioned Marke Management Agency in Hanoi to seize a large number of goods including...

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