The relevant trademark authority in Vietnam is the Intellectual Property Office of Vietnam (IP VIETNAM), previously known as the National Office of Intellectual Property (NOIP). ...
Continue readingKENFOX IP & Law Office represented Lacoste in a coordinated anti-counterfeiting action targeting two apparel shops in Hanoi’s Old Quarter that, following pre-raid investigation, were confirmed to be operating as upstream wholesalers of counterfeit Lacoste garments. After compiling evidence that these locations were supplying fake “LACOSTE” and crocodile-logo apparel into the broader Hanoi retail network, we escalated the case to the Inspectorate of the Ministry of Science & Technology (IMOST) for administrative enforcement. IMOST conducted raids on the identified premises, seizing 1,073 counterfeit garments and imposing administrative fines totaling VND 183,360,000 on the two wholesalers. The seized inventory was ordered...
Continue readingTrademark disputes are becoming increasingly diverse, complex, and unceasing. Does the owner of a trademark for a “physical” automobile or watch, protected in Vietnam, China, or any other country, have the right to prevent a "virtual" version of the same product from appearing in an online game - with its logo intact and players willing to spend real money to acquire it? In a broader sense: Can using a mark on a virtual goods infringe the trademark for a physical goods? Traditionally, trademark infringement has been assessed based on the likelihood of confusion, in which the similarity between goods or...
Continue readingIntellectual property disputes, especially those concerning trademarks, are an inevitable part of the dynamic business environment in Vietnam. Instead of passively waiting for the threat of trademark disputes to arise, wise businesses will seek proactive solutions to protect themselves. The question then becomes: how can businesses proactively "stay one step ahead", mitigate legal risks, and confidently explore the market? Declarations of non-infringement and trademark invalidity are two excellent legal mechanisms, empowering third parties to definitively establish legal "boundaries", create a "safe harbor" for their commercial activities....
Continue readingIn Vietnam, a trademark opposition is a legal procedure that allows a third party to formally challenge a pending trademark application before it gets officially registered by the Intellectual Property Office of Vietnam (VNIPO, formerly, NOIP). A trademark opposition aims at preventing the registration of trademarks that could potentially infringe on existing rights or create confusion in the marketplace. It's a proactive measure to avoid future legal disputes and brand damage....
Continue readingIn a recent trademark opposition case, our firm, KENFOX ip & Law Offfice, successfully defended AJANTA PHARMA LIMITED's pharmaceutical trademark "VILDAREL" against opposition from BIOFARMA, owner of the prior mark "VASTAREL" (IR No. 221430). The opposition, based on Article 74.2(e) of Vietnam's IP Law, alleged that "VILDAREL" was confusingly similar to "VASTAREL" and could potentially harm BIOFARMA's brand reputation....
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 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 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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