Areas of practice: Commercial, Intellectual property, Litigation
Nguyen Vu QUAN joined KENFOX in May 2021. QUAN is a registered IP attorney based in Hanoi, Vietnam. His practice focuses on intellectual property protection, domain name squatting, copyright, trademark, industrial design and patent infringement matters, unfair competition, litigation, counseling as well as negotiating settlements, developing strategies to address and reconcile varying obstacles to protection or infringement risks between jurisdictions, and has represented international and Vietnamese corporations. He routinely engages in preparing opinions associated with patentability, trademark registration, infringement, noninfringement, validity, invalidity, freedom to operate and many other related issues.
QUAN has a wealth of knowledge about the counterfeit industry and rich experience in the area of IPR enforcement. He works with a wide range of clients to develop efficient, affordable, and effective strategies to uncover and stop third parties from illegally using or registering IPRs. He is excellent at generating and presenting alternatives to best protect, enforce, and defend clients’ intellectual property rights.
QUAN possesses strong investigative skills. He is keen on the investigation from the get go because he understands that mistakes will be minimized and the case will be better substantiated in court or other enforcement authorities when an in-depth investigative lawyer coordinates and supervises the collection of evidence and evaluates each step of the investigation and its results. He personally and actively conducted numerous complex online and onsite investigations and provided training, guidance, and experience sharing to subordinates or colleagues of his enforcement team to improve their skills in garnering infringing materials and tracking down the true operators of infringing websites or online storefronts, as well as true infringers for raids.
For over a decade of litigation experience, QUAN has established a good rapport with various competent authorities (e.g. Inspectorate of the Ministry of Science & Technology, Inspectorate of the Ministry of Culture, Sports and Tourism, Market Management Bureau, the Economic Police, Vietnam Intellectual Property Research Institute (“VIPRI“), Expertise Center of Copyright, Related Rights (“ECCR“), Court, etc.). He has a long track record of successfully working with the aforesaid law enforcement agencies and police investigators to conduct raids that have resulted in the seizure of hundreds of thousands of counterfeit products.
QUAN has given lectures on IPR protection in Vietnam to a number of reputable companies in Vietnam, including FPT, Petrolimex, Vinataba, and Vingroup. He was invited to speak on IPR enforcement in Vietnam by the Korean IP Association in December 2010. In 2018, QUAN delivered a lecture on the current situation of IPR enforcement in Vietnam at the invitation of the Institute for Brand and Competitiveness strategy (IPTA), an agency under the Ministry of Science & Technology.
He has also authored numerous articles on IP issues in Vietnam, Laos and Cambodia.
Prior to joining KENFOX, QUAN worked for three of Vietnam’s oldest and largest specialist intellectual property firms. QUAN spent eight years as the Manager of IP Practice at Vision & Associates (September 2013–May 2021), more than three years as the Chief of IPR Enforcement Division at Investip (2010–August 2013), and more than six years as the Manager of IP Practice at WINCO (2004- November 2010).
Represented Engelhard Arzneimittel GmbH & Co. KG. (“Engelhard Arzneimittel”), a 140-year-old Germany-based pharmaceutical company with a strong commercial presence in Vietnam through the sale of cough medicine bearing the mark “ ” (PROSPAN). Engelhard Arzneimittel’s Vietnamese distributor, Sohaco Pharmaceutical Group, provided QUAN with initial information that a Vietnamese entity named “Vinh An Thang Long Investment JSC” (“Vinh An Thang Long”) manufactured and marketed cough dietary supplement products bearing the mark “ ” contained in packages of which outer representation carrying a high degree of the Prospan cough dietary supplement package. The case was submitted to Vietnam Competition Administration Department (“VCAD”), which is now known as “Vietnam Competition and Consumer Authority” (“VCCA”) for settlement under unfair competition proceedings. VCAD sought expert opinions/expert witness from the “National Office of Intellectual Property of Vietnam” (“NOIP”), which is currently known as the Intellectual Property Office of Vietnam (“IP Vietnam”). NOIP, after reviewing the case, gave its written opinion that the use of packages with an outer layout similar to that of Engelhard Arzneimittel constituted unfair competition. The working session was then held with the participation of the director of Vinh An Thang Long as the infringer, QUAN, as the IP attorney of Engelhard Arzneimittel, and VCAD officials. Vinh An Thang Long was forced to terminate its unfair competition and a huge fine was imposed on the infringer.
Represented DIHON Pharmaceutical Group Co., Ltd. (“DIHON”), a China-based reputable pharmaceutical company with a significant commercial presence in Vietnam through the sale of medicated shampoo branded “ ” (Haicneal). DIHON’s Vietnamese distributor, Dong A Pharmaceutical JSC, informed QUAN that a company in Hai Duong Province, Vietnam named “Asem Vina JSC” manufactured and marketed cosmetic shampoo under the mark “ ” (HAINOZAL), but the shampoo packaging’s outer appearance is strikingly similar to that of DIHON. Under the leadership of QUAN, an in-depth investigation revealed that a large quantity of HAINOZAL cosmetic shampoo was being manufactured at the Asem Vina JSC factory. The case was submitted to the Inspectorate of the Ministry of Science & Technology (“IMOST”). After securing the NOIP’s expert opinions/expert witness in favour of DIHON, a raid was conducted against Asem Vina JSC. Thousands of infringing products were seized and destroyed before the witness of DIHON and IMOST.
Represented Lacoste in coordinating raids against 2 clothing stores in Hanoi Old Quarter. The pre-raid investigations leaded by QUAN uncovered that these 2 stores served as major wholesalers of Lacoste counterfeit clothes in Hanoi, Vietnam. The case was submitted to the Inspectorate of the Ministry of Science & Technology of Vietnam for handling under administrative proceedings. As a result, a large quantity of 1073 garments bearing the mark “LACOSTE” and “ ” were seized and destroyed. A fine of VND 183,360,000 was imposed on the two counterfeit wholesalers.
Represented a California-based nutraceutical ingredient manufacturer of nutraceutical ingredients in obtaining VIPRI’s assessment conclusion (expert opinion/witness) in a trademark infringement case. After reviewing the assessment request, VIPRI determined that there was insufficient evidence to conclude that the suspected trademark used by a company in Vietnam infringed on the manufacturer of nutraceutical ingredients. QUAN filed a counter-opinion to VIPRI’s assessment conclusion after concluding that it is unsatisfactory. After several working sessions, VIPRI changed its expert opinion and concluded that the assessed trademark used in Vietnam by a third party was an infringement of the registered trademark of the California-based manufacturer of nutraceutical ingredients. This victory is quite significant taking into account that it is not a common pratice to challenge the VIPRI opinion, and it is very difficult to reverse the VIPRI opinion once it is issued.
The alledgedly infringing products were found in some e-commerse websites in the Internet. The issues are that (i) the seller only left a telephone number for customers to negotiate prices on the products and (ii) information on the manufacturer on the plastic bottles of dishwashing liquid is very vague. This trick obviously aims at preventing the IPR holders and Vietnamese enforcement from keeping track of the infringing manufacturer/supplier, the warehouses, the loading points, counterfeit networks, etc. After constant efforts and with highly investigative skills in interact with the seller, placing trap orders and monitoring, QUAN eventually succeeded in detecting the infringer’s premises which was secretly located within a big factory of the infringer. To support an infringement claim, a request for VIPRI’s Assessment Conclusion was submitted. VIPRI gave its opinion that the outward appearance of the bottle of dishwashing liquid manufactured by the Vietnamese entity infringed the Dutch company’s industrial design rights protected in Vietnam. The case was submitted to IMOST, which then conducted a raid in collaboration with local police against the Vietnamese infringer. Over 5,000 bottles bearing the infringing industrial design were seized and destroyed. The case was made public on the IMOST website as an example of a typical case involving industrial design rights infringement in Vietnam.
Represented a US company in a trademark-based domain name and company name dispute. In detail, the US company, a retail pharmacy company, has registered trademarks in Vietnam for pharmaceutical products in Class 05 and medical apparatus in Class 10. The US company detected that a Vietnamese entity (“Entity A”) established a company with a name highly similar to their trademark. In addition, Entity A has also registered a domain name and activated a website with a similar name. The challenges of the case lie in the fact that there had existed another company (“Entity B“) incorporated in Vietnam with a name almost identical to that of Entity A. Entity B’s company name served as their trade name, which had been established before the US company’s trademarks were registered in Vietnam. This could result in an argument that similar trade names (or company names) of Entity A and Entity B have co-existed in Vietnam without causing actual confusion to consumers – one of the key elements for establishing trademark infringement in Vietnam. Thus, Entity A may invoke the prior existence of Entity B’s trade name to justify its use of a similar company name. Another weakness of the US company is that Entity A’s trademark was intended for goods in Class 05, but the US company’s trademark registration in Class 05 occurred after the adverse party’s company was established, making it hard to take enforcement action in Vietnam based on the US company’s Class-5 trademark registration.
QUAN is directly involved in this complicated trademark case. After reviews and analysis, a petition was submitted to the IMOST, who then conducted a raid against the Vietnamese entity. The legal representative of the Vietnamese company admitted his infringement during the IMOST working session and was forced to change the company’s name and return the domain name to the US company for registration.
Represented a Vietnamese door lock giant in coordinating with the Anti-smuggling and Investigation Department (“ASID“) – an agency under the Vietnam General Department of Customs (VGDC) to suspend customs clearance for a Vietnamese company while importing various containers of multiple goods into Vietnam. A container of counterfeit door locks was discovered during a physical examination conducted by ASID in front of the witness, QUAN, who serves as the IP attorney for the Vietnamese trademark owner. The entire shipment of forgeries was seized. Due to the high volume of counterfeits, the case was being investigated for criminality.
› Similar trademarks, but whether they reach the threshold of confusion are the key to overcoming trademark refusals in Vietnam
› What strategies to reclaim unregistered trademark rights in Vietnam ?
› Invalidating a bad-faith trademark registration in Vietnam
› The battle between names has not yet ended, whether “ST25” a cultivar name or a brand?
› Overcome a provisional refusal against an International Registration Designating Vietnam – difficult but never give up !
› To register or to lose, a costly lesson from a typical industrial design dispute in Vietnam
› Opposing an Application Mark without prior rights in Vietnam, is it possible?
› Coping with counterfeit trading on Vietnamese e-commerce websites/platforms
› Claiming damages in IPR lawsuits in Vietnam – Key takeaways
› Court case a cybersquatting case brought to court for hearing in Vietnam (published on www.mondaq.com)
› Invalidating a bad-faith trademark registration in Vietnam (published on )
› Copyright – a powerful and effective tool to repress trademark and industrial design infringements in Vietnam (published on )
› The effective tools to repress IP infringements (published on Vietnam Investment Review – )
› Proper brand protection strategy: urgent requirement for enterprises (published on Vietnam Investment Review-)