“Fabrilcar” vs. “FABRICA” and “FABRICAIR”: How to successfully appeal a trademark refusal in Vietnam?

Sticky

Trademark Law in Vietnam: A Comprehensive Overview

Posted by Ly Dinh

Unlike many jurisdictions, Vietnam doesn't have a standalone trademark law. Instead, the country's legal framework for trademarks is seamlessly integrated into its broader Intellectual Property Law (IP Law). This comprehensive law was first enacted in 2005 and has since undergone significant amendments in 2009, 2019, and 2022 to align with the evolving international IP landscape. While a distinct "Trademark Law" is absent, all aspects concerning trademarks are meticulously regulated within the overarching IP Law....

22 August

Sticky

Manufacturing for Export Only: Does it Constitute Trademark Infringement? – Rulings from China and Practices in Vietnam

Posted by Vu Thu Uyen

The production of goods bearing trademarks that are identical or confusingly similar to those of others for export is a controversial issue in the field of intellectual property (IP). In both China and Vietnam, the production of goods bearing foreign trademarks for export under the OEM (Original Equipment Manufacturer) model has become prevalent in recent years. Foreign commissioning parties enter into processing contracts with domestic manufacturers to produce goods bearing their trademarks for export. However, in many cases, the trademarks affixed to the goods for export are identical or confusingly similar to a registered trademark in the domestic market. Whether...

20 August

Sticky

Handling Trademark Infringement in Vietnam: 8 Key Considerations

Posted by Vu Thu Uyen

Even with a registered trademark and a favorable opinion from the Vietnam Intellectual Property Research Institute (VIPRI), winning a trademark infringement case is not guaranteed. IP disputes in Vietnam are becoming increasingly sophisticated and unpredictable, meaning there's always a risk of failure, even when the odds seem in your favor. To navigate this complexity, it's essential to develop a comprehensive IP protection and enforcement strategy that considers all potential risks. This approach helps minimize legal exposure and improves your chances of successfully combating IP infringement....

07 August

Sticky

From China to Vietnam: Can Unfair Competition Law Be Used to Address Trademark Squatting?

Posted by Vu Thu Uyen

In China and Vietnam, the legal landscape for trademark protection is undergoing significant transformations. For years, rights holders have struggled to combat the widespread practice of trademark squatting, where bad-faith actors exploit the "first-to-file" principle to register and hoard trademarks, unfairly profiting from the efforts of legitimate owners. However, recent court rulings, such as Bayer v. Li Qing and Emerson v. Hemeiquan, have begun to shift the landscape, interpreting unfair competition laws more broadly. These decisions have created new legal tools that empower brand owners to protect their IP rights. These changes in the legal system are reshaping how businesses...

10 July

Sticky

Gathering Convincing Evidence: The Key to Success in Protecting Non-Traditional Trademarks in Vietnam

Posted by Vu Thu Uyen

In intellectual property (IP) disputes involving non-traditional trademarks (such as product shape, color, fragrance, sound, moving images, etc.), gathering compelling evidence to prove the link between the non-traditional element and the brand plays a crucial role and directly affects the outcome of the case. Failure to prove the distinctiveness of non-traditional trademarks can lead to serious legal risks for the owner, such as trademark refusal, loss of exclusive rights to the non-traditional element, and trademark infringement lawsuits....

31 May

Sticky

Facing a Trademark Refusal in Vietnam? Learn How to Appeal and Win

Posted by Ly Dinh

Have you invested time and effort into crafting the perfect trademark, only to see it rejected by the Intellectual Property Office of Vietnam (IP Vietnam)? Don’t give up! Trademark refusals can be frustrating, but they aren’t necessarily the end of the road. There are still options for challenging the decision and potentially securing your trademark registration. Our firm, KENFOX IP & Law Office provides a clear breakdown of the appeal process in Vietnam, equipping you with critical information to pursue a successful appeal....

30 May

Sticky

Chinese Character Trademarks: Still Protected or Outdated?

Posted by Vu Thu Uyen

This question is attracting the attention of many businesses and individuals using trademarks containing Chinese characters in Vietnam. Before 2005, trademarks consisting solely of Chinese characters were considered inherently distinctive and were granted protection if they met the required standards and conditions. The protection of trademarks containing only Chinese characters was in accordance with the provisions of the Industrial Property (IP) law in effect from 1982 to 2005....

06 May

Sticky

Registering a Trademark in Bad Faith in Vietnam: How to Prove the Applicant’s Intentions and Motives

Posted by Ly Dinh

To prove that a trademark application was filed in “bad faith”, it must be shown not only that the applicant “knew” or “had a basis to know” about the mark of the legitimate trademark owner but also that the applicant had a specific intention or motive behind the registration. As per Article 34.2(b) of Circular 23/2023/TT-BKHCN, this second condition focuses on the motives and intentions of the applicant. What actions do these intentions and motives include? Is it easy to prove?...

06 May

Sticky

Bad Faith – The Secret to Proving Bad Faith and Regaining the Trademark in Vietnam

Posted by Ly Dinh