Infringement ov er the trademark “SPY”: Tracking the Importer, Forcing Infringing Detergent off the Market, and Locking in Customs Protection

1. Snapshot of the Case

Importer Identified, VIPRI Infringement Finding Secured, Multi-Agency Pressure Applied, Infringing Goods Removed from Market, Customs Protection Activated.

KENFOX IP & Law Office represented MASSCO JSC, a leading Vietnamese chemical and cosmetics manufacturer and the registered owner of the “SPY” trademark (No. 231175), after an unauthorized seller began advertising “SPY” washing liquid on ZALO (a popular Vietnamese messaging / social commerce platform). Our investigation suggested that the products were imported from Thailand, so we moved immediately to identify the source. Through coordination with a customs officer at the General Department of Customs, we obtained official customs data showing that DAHACHI Joint Stock Company had imported large volumes of detergent labeled “SPY” via Hai Phong – totaling 1,770 cartons (about 7,680 boxes) with a declared value of approximately VND 529,860,000 (~USD 25,000). We then requested a technical Assessment Conclusion from the Vietnam Intellectual Property Research Institute (VIPRI), which issued Conclusion No. NH242-YC confirming that the “SPY” mark on DAHACHI’s imported detergent infringed MASSCO’s registered trademark. Armed with VIPRI’s finding, we sent a cease & desist letter to DAHACHI demanding cessation and an undertaking. When DAHACHI remained silent, we escalated aggressively: Filing petitions with the General Department of Customs, the General Market Management Bureau, Hai Phong Customs, and the Police to accuse DAHACHI of serious trademark infringement. Under this combined regulatory pressure, DAHACHI pulled the infringing goods from the market. Our subsequent field investigation confirmed that the infringing “SPY” detergent disappeared from circulation. To prevent recurrence, we also recorded the “SPY” trademark with Vietnam Customs Supervision and Control, which issued a nationwide notice to border gates to monitor and block suspicious “SPY”-branded imports. This case demonstrates KENFOX’s ability to identify and quantify infringing imports, obtain expert infringement findings, coordinate Customs/Market Management/Police action, force a silent infringer to withdraw, and then institutionalize border protection to defend the client’s brand going forward.

Client: MASSCO JSC (“MASSCO”), a well-known Vietnamese chemical and cosmetic manufacturer and the registered owner of the “SPY” trademark in Vietnam (Trademark Registration No. 231175).

Problem: MASSCO’s Hanoi sales agent discovered that an unrelated seller was openly advertising “SPY” washing liquid on ZALO (a popular Vietnamese messaging / social commerce platform). The advertised goods were branded “SPY”, which is identical to MASSCO’s registered mark.

Initial finding:

The goods appeared to be imports (suspected Thai origin), not something quietly produced domestically.

Result:

We identified the importer (DAHACHI Joint Stock Company) through customs data.
We obtained a VIPRI assessment confirming that DAHACHI’s imported “SPY” detergent infringed MASSCO’s registered “SPY” mark.
We sent a Cease & Desist Letter backed by VIPRI assessment.
When DAHACHI refused to cooperate, we escalated simultaneously to Customs, Market Management (Market Surveillance/Market Management Bureau), Hai Phong Customs, and the Police.
Facing multi-agency pressure, DAHACHI stopped. Follow-up field investigation confirmed that the infringing “SPY” detergent disappeared from the market.
We then filed customs recordal of the “SPY” mark so Customs nationwide would screen future imports.

2. Why the Case Was Legally Difficult?

(1) The infringement was cross-border, not just local copying

This was not a backyard counterfeiter printing fake labels in Hanoi. The suspect goods were imported (Thailand-origin). That means:

The goods were already inside Vietnam.
The importer could claim “We just brought in legitimate products from abroad. How is that our problem?”

This is always trickier because enforcement has to bridge IP law and customs control.

(2) The infringer was not cooperating

DAHACHI Joint Stock Company did not respond after we sent a cease & desist letter (C&D Letter). They tried to stonewall and wait us out.

A silent infringer is a classic headache: no dialogue, no settlement, no admission you can use. So you have to escalate pressure using State mechanisms.

(3) We had to prove who actually imported, when, how much, and where

For imported goods, Vietnamese enforcement bodies respond best when you can answer very concretely:

Who is the importer?
How many units?
What is the declared customs value?
Through which customs point did they enter?

That information isn’t public. Without it, enforcement is a lot of talk and no leverage. We solved that problem.

3. KENFOX Strategy and Actions

(i) Evidence capture: We traced the importer through customs intelligence

After we saw the ZALO advertisement of “SPY” washing liquid, we didn’t guess. We went straight to the source of truth. We coordinated with a customs officer at the General Department of Customs (Vietnam Customs) who could access the customs database. Through that channel we obtained:

the identity of the importer: DAHACHI Joint Stock Company;
import timeline and ports of entry (through Hai Phong Customs);
the quantities and configurations of imported stock;
the declared customs value.

The data showed that DAHACHI had imported a significant volume of detergent labeled “SPY”, almost identical to MASSCO’s registered “SPY” mark:

1,770 cartons in total (1,470 cartons × 4 boxes/carton = 5,880 boxes) and 300 cartons × 6 boxes/carton = 1,800 boxes
Total declared value: ~VND 529,860,000 (≈ USD 25,000).

That level of detail is critical. It proves commercial scale, supports “serious infringement”, and justifies escalation to high-level authorities. We don’t just accuse. We identify the importer, quantify the flow, and value the infringement.

(ii) We obtained a technical infringement finding from VIPRI

Next, we needed a recognized expert conclusion that DAHACHI’s imported goods infringed MASSCO’s “SPY” mark. We filed a request with the VIPRI, asking for an Assessment Conclusion on whether DAHACHI’s “SPY”-labeled washing liquid infringed MASSCO’s registered “SPY” trademark.

VIPRI issued Assessment Conclusion No. NH242-YC affirming (i) The “SPY” sign used on DAHACHI’s imported washing liquid is essentially identical / confusingly similar to MASSCO’s protected “SPY” trademark No. 231175, and (ii) Therefore, DAHACHI’s goods constituted a trademark infringement.

Why this matters:

In Vietnam, VIPRI’s assessment conclusion is a key piece of technical evidence for administrative enforcement, Customs action, and Police involvement.
It allows regulators to act decisively, rather than debating “is this really similar?”

We secure VIPRI assessments early so enforcement bodies have a green light to act.

(iii) We sent a Cease & Desist Letter (C&D Letter) to DAHACHI

Upon being armed with the customs-import data, and VIPRI’s infringement conclusion, we sent DAHACHI a formal C&D Letter. We demanded that they stop importing, distributing, and selling the infringing “SPY” detergent; and sign an undertaking acknowledging infringement and committing to cease. DAHACHI did not respond. Silence. No undertaking.

This is where many firms pause. We escalated. When voluntary compliance fails, we already have a plan to bring multiple enforcement agencies to bear.

(iv) We escalated simultaneously to Customs, Market Management, and Police

To raise the cost of non-cooperation, we filed urgent petitions/complaints with:

the General Department of Customs of Vietnam;
the General Market Management Bureau (i.e. Market Surveillance / Market Management authority);
Hai Phong Customs (the port that cleared the shipments);
and the Police.

These petitions accused DAHACHI of serious trademark infringement, backed by:

VIPRI’s Assessment Conclusion No. NH242-YC,
customs data quantifying the infringing imports and declared value,
evidence that these goods were being advertised and offered for sale domestically.

This was not just “please do something”. This was: “We have a registered mark. We have expert confirmation of infringement. We have import data. We have advertising proof. We are asking you to act”.

By hitting all of Customs / Market Management / Police in parallel, we made clear to DAHACHI that this was no longer a private dispute; it was now a regulatory risk on multiple fronts, including possible seizure of stock and administrative penalties. We coordinate multi-agency pressure so an infringer cannot just ignore us.

(v) We locked in border protection going forward: Customs recordal

To prevent repeat imports, we didn’t just fight the current batch. We institutionalized protection. We filed a customs recordal for the “SPY” trademark with Vietnam Customs Supervision and Control. Customs accepted the recordal and circulated notice to border checkpoints.

That means:

“SPY” is now on Customs’ watchlist at Vietnam’s borders.
Customs officers are empowered to flag and detain suspicious SPY-branded imports they suspect are not from MASSCO.

So future “SPY” shipments pretending to be from Thailand can be intercepted at the port, not only after they hit the market. We don’t just clean today’s problem – we build a customs barrier to stop tomorrow’s shipments.

4. Outcome / Impact

Market withdrawal: After the C&D Letter + VIPRI conclusion + simultaneous escalation to Customs / Market Management / Police, DAHACHI did not continue the fight. They went quiet – and more importantly, they stopped.

Our follow-up market investigation confirmed:

The infringing “SPY” washing liquid imported by DAHACHI disappeared from circulation.
No new “SPY” detergent (Thai-origin) was being offered on the market afterward.

In other words, DAHACHI backed off without forcing us into a long litigation cycle. The threat of coordinated administrative enforcement was enough.

Deterrence: DAHACHI learned: Importing and distributing lookalike “SPY” detergent is not a harmless gray-market play. It draws Customs scrutiny, police attention, and national-level Market Management risk, backed by expert infringement findings.

Border defense for the future: Because we got “SPY” customs-recorded and notified to all border gates, MASSCO now has proactive protection at import, not just reactive takedowns in the market. That is critical for FMCG / household goods brands, where infringing stock often enters in bulk through ports like Hai Phong and spreads fast.

Quantified case file: We built a complete evidentiary and enforcement file:

infringing goods volume: 1,770 cartons totaling 7,680 boxes in that May–June 2016 window;
declared value: approx. VND 529,860,000 (~USD 25,000);
VIPRI conclusion No. NH242-YC confirming infringement;
petitions filed with enforcement authorities.

That file becomes reusable precedent for MASSCO the next time a parallel importer / unauthorized source tries to move “SPY”-branded goods into Vietnam.

Conclusion: We not only acted immediately to address the infringement, but also established border-level protections, deterred future market misconduct, and equipped our client with a robust long-term defensive portfolio.

5. What This Case Proves About KENFOX?

We can unmask the importer: We don’t stop at “someone is selling fakes online”. We traced the ZALO listing to a specific importer, DAHACHI JSC, using customs system intelligence. We quantified volumes and value.
We build an enforcement-grade evidence package: We secured a VIPRI Assessment Conclusion (No. NH242-YC) stating that DAHACHI’s imported “SPY”-branded detergent infringed MASSCO’s registered “SPY” mark (Reg. No. 231175). That technical conclusion is what regulators act on.
We escalate fast when a C&D is ignored: After DAHACHI stayed silent, we immediately hit Customs HQ, Market Management, Hai Phong Customs, and the Police with infringement petitions. We did not wait for them to “come to the table”.
We deliver real-world compliance without a court fight: DAHACHI withdrew the infringing products from the market under regulatory pressure. Our follow-up investigation confirmed the goods disappeared from circulation.
We institutionalize border protection: We recorded the “SPY” mark with Vietnam Customs so that future suspicious imports can be flagged and stopped at the border, not only after they’ve flooded the market.
We speak “Customs”: This case shows that we are comfortable working with Customs Supervision and Control, Market Management, and Police simultaneously – which is exactly what global consumer brands and FMCG manufacturers want when dealing with imported infringing goods.
This is a huge selling point for any client whose products are (a) imported in volume and (b) easy to counterfeit or parallel-import: detergents, cosmetics, personal care, beverages, OTC remedies, etc.

QUAN, Nguyen Vu | Partner, IP Attorney

PHAN, Do Thi | Special Counsel

HONG, Hoang Thi Tuyet | Senior Trademark Attorney

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