Mrs. Hoang Thi NIEM

Hoang Thi NIEM is a patent executive with KENFOX IP & Law Office, a licensed IP agent in Vietnam. NIEM received her Bachelor of Laws degree and Postgraduate Certificate in Laws from Hanoi Law University.

NIEM’s area of practice includes trademark clearance search, and advising clients on use, protection of IP including counseling clients in worldwide trademark selection and registration. Her area of experience includes giving opinions, drafting cease and desist letters, trademark prosecution, assignment, opposition and cancellation proceedings before the Trademarks Registry and the IP Offices in Vietnam, Laos, Cambodia and Myanmar in non-contentious matters. She has advised companies in several sectors in relation to protection, growth and sustainability of their brands and has also advised clients on issues relating to IP in advertisements. She has also advised various companies in relation to infringement of their brands including trade dress.

 

NIEM’s experience also includes recordal of trademarks with the Customs Authority for monitoring the infringement of brands and further includes giving opinion on copyright infringement and issues pertaining to plagiarism. She has also drafted agreements including Franchise Agreement and License and Service Agreement. She also has experience of handling domain name disputes and has counseled clients related to such issues.

 

She also has extensive experience in the practices and procedures in relation to copyright, including recording and enforcing copyright ownership in Vietnam and other Asian jurisdictions. Quoting from one of the largest clients of the firm, “Hoang Thi NIEM is wonderful to work with. She is thorough and her advice is very clear.‘”  Before joining KENFOX, NIEM worked in the industrial design and trademark division of a local Vietnamese firm. NIEM is fluent in both Vietnamese and English.

  • Successfully appealed the Decisions on refusal of international trademark registrations. Many of the provisionally-refused trademarks has been accepted for protection in Vietnam and Cambodia.
  • Opposed several trademarks that were confusingly similar to the well-known trademark of a famous company specializing in pharmaceutical sectors.
  • Represented and advised one of the largest Vietnamese companies in the cosmetics industry in successful opposition actions against a trademark being deemed similar to a prior mark. The oppositions have been upheld by the competent authority and the opposed applications have been finally refused.
  • Advised and represented various multinational corporations in prosecuting hundreds of trademark applications in Vietnam, including a complex trademark application filed in 10 classes comprising nearly hundreds of goods/services with multiple priority claims.
  • Successfully prosecuted trademark matters in Laos and Cambodia for a well-known computer corporation.