KENFOX IP & Law Office > Case Studies

Fighting Trademark Squatters in Vietnam: How Copyright Can Be a Powerful Weapon for Foreign Brand Owners

[vc_row triangle_shape="no"][vc_column][vc_column_text] For many foreign businesses entering the Vietnamese market, one of the most frustrating discoveries is that their trademark has already been registered or applied for by a third party with no legitimate connection to the brand. Professional trademark squatters frequently exploit Vietnam's first-to-file system by seeking protection for well-known foreign marks before the genuine brand owner enters the market. While trademark-based arguments remain important, recent cases demonstrate that copyright can be an equally powerful tool for defeating bad-faith trademark applications in Vietnam. [/vc_column_text][vc_empty_space height="13px"][vc_column_text] A Practical Solution Beyond Traditional Trademark Rights Trademark squatters often target foreign brands that have not yet secured trademark...

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Can a Copyrighted Logo Defeat a Trademark Application in Vietnam?

[vc_row triangle_shape="no"][vc_column][vc_column_text] No trademark registration in Vietnam? You may still be able to stop a trademark squatter. For foreign brand owners, having your logo stolen in a new market is a nightmare. But a recent case involving Maurten, a Swedish sports nutrition brand, shows how copyright can become a powerful legal weapon. In 2023, a Vietnamese individual filed a trademark application for a logo identical to Maurten’s original logo. But Maurten had a serious problem: At that time, it had no earlier trademark registration, no pending trademark application, and no meaningful commercial presence in Vietnam. Therefore, traditional trademark arguments alone might not have been enough. So,...

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Binh Minh vs Binh Minh Viet: What valuable observations can be made ?

Most people believe that in cases of IP infringement, an “expert opinion” (“Assessment Conclusion”) from specialized agencies like the Vietnam Intellectual Property Research Institute (VIPRI) serves as the definitive “gold standard”, providing the most reliable scientific basis for fair judicial decisions. But the recent, protracted trademark dispute between plastics giant Binh Minh and newcomer Binh Minh Viet challenges this very assumption, making many ponder: What occurs when a conclusion of "infringement" by the premier leading expert assessment body is dismissed by the court as "just for reference"? Is the expert “shield”, so trusted by rights holders, losing its inherent value...

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Color Trademark Litigation: Key Takeaways for Companies in Vietnam

Colors are not just about aesthetics, they are the soul of a brand. In a landmark ruling, the German Supreme Court has confirmed that the gold color of the Lindt Gold Bunny can enjoy unregistered trademark protection in Germany. This decision marks a victory for Lindt in a years-long legal battle to protect its iconic product – the well-known chocolate bunny – from trademark infringement....

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Unveiling a Counterfeit Food Supplement Ring: Criminal Prosecution for a Korean Trademark Counterfeiting Case

According to the National Steering Committee 389, the year 2023 witnessed an alarming increase in acts of counterfeit production, trade, and infringement of intellectual property rights (IPR). The number of cases recorded in 2023 was over 4,000, an increase of more than 126% compared to the same period in 2022. Notably, many cases have been handed over to the police for prosecution on charges related to counterfeit production, trade, and IPR infringement....

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Understanding IP Law in Vietnam: Why Selling Genuine Products Might Still Be Infringement?

1. RULE ONE is a corporation with over 10 years of experience in the field of fitness and sports supplements. Established in 2014 by the Costello family, who also founded the renowned Optimum Nutrition (ON) brand, known worldwide for the legendary Whey Gold Standard. After selling the ON brand to Glanbia five years ago, the Costello brothers developed a new brand. They continued to leverage the technology from their previous brand while incorporating modern advancements. Among their most prominent products are R1 Protein, R1 Gain, R1 BCAA, R1 Casein, R1 Energy+, and R1 Pre Amino. Rule 1 Protein, a premium...

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How to respond to pharmaceutical trademark refusals in Cambodia?

The increasing number of trademarks, especially pharmaceutical trademarks, and the excessively  stringent examination of trademarks are the primary reasons for various trademark refusals in Cambodia. Examiners from the Cambodian IPO frequently cite prior marks that appear to be quite similar to applied-for marks at first glance, but are distinguishable when examined more closely. However, if an applicant's trademark application is refused and the applicant chooses to abandon/ do not pursue a trademark application, continuing to use the refused trademark in commerce is a risky decision. Utilizing a trademark that is found to be confusingly similar to another party's trademark may...

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Court Case: A Cybersquatting Case Brought To Court For Hearing In Vietnam

https://kenfoxlaw.com/wp-content/uploads/2021/09/Mondaq-A-Cybersquatting-Case-Brought-To-Court-For-Hearing-In-Vietnam.pdf

O.S GmbH is a multinational lighting manufacturer headquartered in Munich, Germany ("the plaintiff"). The plaintiff is the owner of a series of OSRAM trademark for lighting apparatus, especially electric lamps and luminaires; parts of the aforesaid goods; light-emitting diode lamp modules, being protected in Vietnam. The plaintiff detected that two ccTLD (osram.com.vn) and (osram.vn) ("Disputed Domain Names") were registered in 2014 by a natural person in Vietnam, N.D.T ("the defendant") and were resolved to the defendant's active websites. The websites under the Disputed Domain Names were promoting and offering for sale of the plaintiff's products bearing the "OSRAM" mark. ...

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Court Case: A Cybersquatting Case Brought To Court For Hearing In Vietnam

https://kenfoxlaw.com/wp-content/uploads/2021/09/Mondaq-A-Cybersquatting-Case-Brought-To-Court-For-Hearing-In-Vietnam.pdf

O.S GmbH is a multinational lighting manufacturer headquartered in Munich, Germany ("the plaintiff"). The plaintiff is the owner of a series of OSRAM trademark for lighting apparatus, especially electric lamps and luminaires; parts of the aforesaid goods; light-emitting diode lamp modules, being protected in Vietnam. The plaintiff detected that two ccTLD (osram.com.vn) and (osram.vn) ("Disputed Domain Names") were registered in 2014 by a natural person in Vietnam, N.D.T ("the defendant") and were resolved to the defendant's active websites. The websites under the Disputed Domain Names were promoting and offering for sale of the plaintiff's products bearing the "OSRAM" mark. ...

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Giống mà không giống, đâu là ngưỡng phân biệt các nhãn hiệu tương tự tại Việt Nam?

Bên cạnh Nhãn Hiệu Chữ, ngày càng có nhiều chủ sở hữu nhãn hiệu có xu hướng đăng ký logo hay biểu tượng do họ sáng tạo ra làm Nhãn hiệu để thương mại hóa các sản phẩm/dịch vụ của mình. Logo hay biểu tượng được xếp là loại Nhãn Hiệu Hình...

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