KENFOX IP & Law Office > Customs recordal in Vietnam

Customs recordal in Vietnam

 

Many trademark owners come to KENFOX attorneys and complains that they are losing millions of dollars, their market and even the trust of the consumers due to counterfeit goods. Needless to say, the counterfeit goods has been causing mass economic, prestigious loss and damages not only to trademark owners but also the society.

 

To cope with the “roots” of this situation, KENFOX has established a very fine relation with the Vietnamese Customs and has been cooperating with them in efficiently preventing the imitation and counterfeit goods imported or exported via border. When identifying goods suspected of infringing Intellectual Property rights or to detect goods showing signs of infringing Intellectual Property rights, the Vietnamese Customs will be immediately sending the firm a notification so as to timely keep the trademark owners informed for further action.

 

The border control measures are proven to be the most fruitful and cost effective since it can help seize the imitation and counterfeit goods right at the border without letting them penetrate into and spread on the market.

 

Besides the cooperation between KENFOX and the Customs, the trademark attorneys of the firm are often invited to give lectures to the officials of the Customs on techniques how to identify the imitations and counterfeit goods as well as professional opinion on amending the legal regulations so as to favourably handle imitations and counterfeit goods.

 

During the past time, through applying border control measures, NOKIA Corporation, SONY Company and many other companies have succeeded in preventing imitation and counterfeit goods imported into Vietnam, accordingly increase their market shares, their images in Vietnam as well as protect their distributors and consumers against this serious issue.

 

For the above benefit, we strongly recommend that the trademark owners should file an application for border control measures for inspecting and supervising the goods their registered marks at the Vietnamese Customs and we are always willing to assist you.

1. Filing an application for examining and supervising IP related imports/exports at the Vietnamese customs / Customs recordal / Trademark Customs Registration/ Registration of Trademark with Customs in Vietnam/ Customs Monitoring against Counterfeit

Requisite Information and documents

 

  • Notarized & legalized Power of Attorney from the applicant;
  • Notarized copy of Protection Title(s);
  • Description and photos of genuine goods;
  • Description of genuine and possible imitation/counterfeit goods (if available);
  • Photos of genuine and possible imitation/counterfeit goods (if available);
  • List of legal goods importer(s) and/or exporter(s)
  • Mode of import and/or export
  • Information of forecast on when and where related shipment(s) going to be done Customs procedure
  • The IP assessment conclusion issued by the IP assessment authority (if available).
  • Important notes
2. How will the application for examining and supervising IP imports and exports at the Vietnamese Customs will be handled?

KENFOX advises that after sufficient and valid documents are lodged, the Vietnamese Customs will issue Notification of Acceptance within 01 month.

3. What is the term of such application for examining and supervising IP imports and exports?

KENFOX advises that the examination and supervision of IP imports and exports will be executed by the Vietnamese Customs within 02 years from the date of the Notification of Acceptance and it can be renewed for 02 additional year.

4. Where the Vietnamese Customs detects a shipment of imports/exports being suspected of violating Intellectual Property rights, what steps will it take?

KENFOX advises that if Vietnamese Customs detects a shipment of imports/exports being suspected of violating Intellectual Property rights, the following steps will be taken by the Customs authority:

 

Step 1: The Vietnamese Customs shall send a Notification to the applicant via fax;

 

Step 2: Within 03 working days, the applicant is entitled to file an application for suspending customs procedures and obliged to advance a sum of money equal to 20% of the value of the goods consignment or at least 20 million Vietnam dong where it is impossible to value such goods.

 

Step 3: The Vietnamese Customs issues a Decision on suspension of customs procedures with regard to the goods consignment in question. Such Decision will be sent to the concerned parties. The term for such suspension is 10 working days, computed from the date when the applicant receives the suspension Decision. In case of request for IP assessment or expert opinion from the IP management authorities, the Customs shall continue suspending the customs procedures until receipt of the results relating thereto.

During the suspension period or the period when the preventive measure is applied, the Customs is obliged to execute the following work:

  1. a) Requesting the owner of the goods consignment, the IP right holders to furnish the documents relating the goods (catalogues, IP assessment conclusion, foreign documents, the results of handling similar cases etc.);
  2. b) Directly soliciting IP assessment at the IP assessment organizations or conferring with the IP management authorities for their expert opinion;
  3. c) Organizing the sampling to exercise the right to solicit IP assessment;
  4. d) Requesting additional assessment or re-assessment;
  5. e) Coordinating, discussing with the IP grassroot management authorities when disputes, appeals about the right holder, protectability, IP protection scope, competence of administrative violation handling.

Upon expiration of suspension period or application of preventive measure, the Customs is obliged to execute one or all following pieces of work:

  1. a) Deciding to accept the case in accordance with administrative procedures upon confirming the suspended goods in question infringed upon IPR based on the IP assessment conclusion; expert opinion; documents, evidences provided by the IPR holder.

Deciding to withhold the goods in case of grounds to affirm the goods in question is intellectual property counterfeit ones; infringing goods are foods, medicines, cosmetics, pet food, fertilizers, veterinary medicine, plant protection product, construction materials.

  1. b) Completing the customs procedures for the goods in question;
  2. c) Following the opinion from the court in case the applicant files a civil lawsuit;
  3. d) Handing over the case to other IP enforcement authorities if the infringement is not within the competence of the Customs;
  4. e) Temporarily withholding the settlement after receiving the written documents from the IP state management authorities, informing of disputes, appeals about the right holder, protectability, IP protection scope;
  5. f) Handing over the case to the competent bodies for investigation and prosecution in case the infringement involves a criminal element
5. Anti-Counterfeiting

KENFOX IP lawyers provide brand management services to the clients, helping them to increase their exposure and marketability, while defending against counterfeits that threaten their value. KENFOX partners have worked with various well-known trademarks subject to infringement and provided intellectual property policing programs and trademark watch services that ­alert us to potential issues against which our clients may need to take action.

We handle everything from the preliminary research and protest of infringing uses to litigation against infringing uses before Department of Enforcement and Appeal Settlement, National of Intellectual Property of Vietnam, Ministry of Science & Technology of Vietnam. Our IP lawyers has extensive experience in assisting our clients in every aspect of their anti-counterfeiting and antipiracy efforts, including investigations, seizures of counterfeit merchandise. Most of investigation are conducted by our in-house investigators to cut down costs for our clients. For complicated infringers, at the client’s requests, we may do outsourcing. We have assisted in developing various strong anti-counterfeiting/piracy programs for our clients to optimize their brand management.

6. False Advertising & Unfair competition in Vietnam

KENFOX clients seeking to protect their intellectual property assets are not limited to patents, trademarks and copyrights. There are numerous statutes in Vietnam that protect valuable business information and competition in the business environment. KENFOX attorneys are well versed in all aspects of advertising laws. We conduct compliance reviews of advertising copy prior to publication, and provide practical advice on a broad range of advertising and marketing issues. KENFOX effectively represent clients in all types of advertising proceedings including false advertising and defamation actions, etc.

Protections available under the rubrics of unfair competition or unfair trade practices include, for example, (i) Misleading instructions; (ii) Infringement of business secrets; (iii) Coercion in business; (iv) Defamation of another enterprise; (v) Causing disruption to the business activities of another enterprise; (vi) Advertisement aimed at unfair competition; (vii) Promotion aimed at unfair competition; (vii) Discrimination by an association; (ix) Illegal multi-level selling of goods under Article 39 of Competition Law of Vietnam, which came into force on 01 July 2005. KENFOX attorneys have worked with clients to maximize the protection of their intellectual property and navigate the tangle of unfair competition laws. On behalf of our clients and with law enforcement assistance, KENFOX has successfully used the unfair competition laws to conduct large scale seizures of counterfeit cosmetic and medicinal products in Vietnam. These cases are taken as typical example of successful enforcement under unfair competition at various IP conferences in Vietnam. We are experienced in all aspects of unfair competition law, and regularly counsel clients on how to protect their rights and how to avoid unfair competition claims by others.

Since the body of unfair competition law is often intertwined with patents, trademarks and copyrights, KENFOX, as a premier provider of intellectual property legal services, is strategically placed to handle these matters. KENFOX attorneys have drafted agreements and licenses protecting the intellectual property assets of the clients and litigated on behalf of our clients to resolve questions of competitive activities.

We pride ourselves on leveling the playing field in the business arena and, when necessary, in the courts so that our clients are able to fairly compete in the marketplace.

7. Branding and Rebranding

KENFOX IP lawyers act as key advisors to companies in developing strategies for marketing their products and services in the abundance of laws of Vietnam and handling various aspects of development and protection for well-known brands although no trademarks are officially recognized on the Industrial Property Gazette of Vietnam. This in-depth experience makes our advice more valuable and trustworthy. Our seasoned attorneys help the clients prudently acquire trademarks owned by third parties, and investigate and resolve potentially problematic priority disputes. We also help clients maximize their portfolio value by assessing and identifying trademarks that require stronger protection (often those are less per se distinctive but registered), and advise on marks that should be discontinued.

KENFOX trademark practice created and perfected the “emergency rebrand,” used when our clients need expedited corporate name change clearances and registrations after such corporate name is determined to be an infringing element over a prior mark. In crisis situations, we have assisted our clients in completing strategic and confidential name changes on an emergency and expedited basis, helping our clients quickly and discretely reposition and/or reintroduce themselves in the marketplace, depending on their brand strategy and business goals. Some steps which our clients recommended for rebranding are as follows: (i) Influence and shape the brand with a series of brand promises; (ii) Obtain customer feedback; (iii) Find out what’s not working; (iv) Develop your story; (v) Permeate all your company communications with the new brand; (vi) Never stop supporting and promoting your brand and (vii) Be consistent and persistent.

8. Domain Name Proceedings

Whether representing individual domain name owners or Fortune 500 companies, KENFOX lawyers are adept at implementing domain name strategies that complement the needs of the clients. We advise clients on an array of domain name matters, including portfolio management, monetization strategies, privacy issues, reputation management, hijacking and reverse hijacking, sale, transfer and licensing, terms of service, and even liquidation, when necessary.

 

Domain names are a frequent ground for disputes. Speculative and abusive registration and maintenance of <.vn> domain names (“cybersquatting”) continues to be a growing problem in Vietnam with Vietnamese and some foreign parties. This mainly takes the form of (i) Vietnamese or foreign individuals or organizations registering <.vn> domain names that contain or closely imitate the reputed trademarks of others, or (ii) a Vietnamese or foreign company continuing to maintain a <.vn> domain name after its license or business relationship with the trademark owner expires or is terminated, or (iii) the owner of a <.vn> registration may point (or threaten to point) the domain name to the domain name) to a competitor’s website or a derogatory website. In each case, the registrant often acts in “bad faith”, seeking to exploit the good will of the foreign party’s trademark and/or seeking to extort a payment from the trademark owner and/or trying to benefit the trademark owner’s competitor.

 

 

KENFOX understands that competing claims to a company’s trademarks by cybersquatters and more traditional infringers can bar a business’s attempt to exploit a trademark as a domain name and market itself through the internet. Having gained extensive experience in dealing with the cyberquatting, KENFOX attorneys have successfully assisted trademark holders and domain name registrars who are faced with such disputes.

 

Internet disputes extend well beyond domain names.  As an example, creative trademark infringers use famous trademarks and service marks in meta tags and “ghost text,” a colored font on an identically colored background. Others creatively use the Internet as a way to pirate software or otherwise unlawfully trade on another’s property. KENFOX has commensurate expertise in the proactive Internet protection of intellectual property in Vietnam, the identification and location of infringement and infringers and the enforcement of our clients’ rights within this jurisdiction.

 

With over a decade of experience handling domain name issues, KENFOX Intellectual Property attorneys advise clients in all aspects of domain name acquisitions and disputes. Such services protect our clients from companies and individuals who register domain names in bad faith or create websites that are likely to cause consumer confusion. Our experience in this area includes handling pre-dispute investigations and negotiations, proceedings under administrative proceedings in Vietnam against “.vn” alleged infringing domain names or  ICANN’s Uniform Dispute Resolution Policy (UDRP) concerning generic top-level domains such as .com, .net, and .org.