As businesses continue to operate in Vietnam, the possibility of being accused of patent infringement is a looming threat. The mere accusation can cause uncertainty and worry for alleged infringers, who may face a range of negative consequences such as product seizures, lawsuits, and negative media attention. ...
Continue readingDownload The nature of goods/services is one of two prerequisite factors (together with trademark itself) in determinging the registrability of an applied-for mark. Before applying for a trademark registration, it is important to consider the goods or services that the trademark will be used for. Through a practical trademark case that KENFOX IP & Law Office has successfully overcome the provisional refusal issued by the Intellectual Property Office of Vietnam (IP VIETNAM), this article will explore the concept of goods/services relatedness and its importance in the trademark registration process in Vietnam. The factors that determine whether two goods or services are...
Continue readingDownload Counterfeiting is one of the most lucrative and expansive illicit industries in the world. Counterfeiters are becoming more sophisticated in their methods and practices, as well as in their use of counterfeiting technology to produce counterfeit products that are easier to pass off as genuine products to Vietnamese consumers. In Vietnam, criminal sanctions are available for counterfeiting offenses, including those related to intellectual property rights (IPR) infringements. However, in practice, these sanctions are rarely imposed. Nevertheless, a recent criminal case involving counterfeit goods is an applaudable effort by Vietnamese enforcement authorities to impose deterrence effects in curbing IPR infringement. Facts: On...
Continue readingDownload Registering a trademark in Vietnam is a crucial step for any business or individual seeking to protect their brand and prevent unauthorized use by others. However, the process of registering a trademark can be complex and involves various steps that must be carefully followed. In order to successfully register a trademark in Vietnam, it is important to understand the availability searches, required documents for filing, the trademark examiner's steps and practices, how to respond to an office action, and the current protection of unconventional trademarks such as sound and smell marks. Additionally, understanding the implications of disclaimers in the trademark...
Continue readingDownload 1. What is ASEAN Patent Examination Co-operation (ASPEC) programme? The ASEAN Patent Examination Cooperation (ASPEC) program is a regional patent cooperation program in Southeast Asia that allows patent applicants to request accelerated patent examination in participating ASEAN member states (“AMS”). It aims to improve the efficiency and quality of patent examination among participating ASEAN member state's intellectual property Offices (“AMS IP Offices”) by sharing search and examination (S&E) results. Under the ASPEC program, patent applicants can submit a request for accelerated examination of a patent application in a participating AMS IP Office (“second IP Office”) based on a S&E reports issued by...
Continue readingDownload Despite selling their branded goods and services for decades in Vietnam, many businesses are at risk of losing their trademarks due to a lack of awareness and disregard for trademark registration. In most cases, trademarks are lost either because business owners are unaware of the need for registration, or because they prioritize market development over legal protection. Even those who do register their trademarks may face difficulties in enforcing them against infringing competitors. As a result, not a few businesses had to pay a high price for their negligence and lack of knowledge in the field of intellectual property. This...
Continue readingDownload 1. Introduction Patents are widely regarded as a "crutial" instrument for intellectual property (IP) rights holders seeking to establish a unique market position for their patented products. Patents grant the owner exclusive rights to market their product, license their invention to third parties to recoup investments, and prevent competitors from infringing on their patent rights. Given the huge competitive advantages that the patent brings, it is not surprising that the occurrence of patent disputes is on the rise. Having a patented invention does not guarantee that it is free of errors and automatically valid. “A presumption of validity is what allows the...
Continue reading"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...
Continue readingDownload 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...
Continue readingAny third party may file a request with the Intellectual Property Office of Vietnam to cancel the registration of a trademark if it has not been utilized by its owner for five years from the date of registration. This procedure serves to cancel trademarks that exist in the register but are not used in practice, and also to prevent trademark squatting that aims to block identical marks from entering the market. However, the absence of clear guidelines on the "use of trademark" in Vietnam's intellectual property law may hinder the institution's ability to invalidate trademarks based on non-use grounds stipulated...
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