Solutions to Identify Counterfeit Goods and IP Violations

Solutions to Identify Counterfeit Goods and IP Violations from the Experience of Korea

Currently, counterfeit products and product infringing intellectual property rights happening in Vietnam are very popular and diverse in types. This situation not only affects domestic production and trade but also has a negative impact on close business partners of Vietnam, including Korea. In many cases, the infringed parties have been seeking help from IP lawyers in Vietnam for advice.

 

IP Enforcement Law Firm in Vietnam

With cultural compatibility, Korean products such as fashion, home appliances, cosmetics, and functional foods are very popular and widely consumed in Vietnam. Therefore, with the quick grasp of this trend, the products of Korean enterprises have become the subject of counterfeiting. Besides, with the development of e-commerce channels, these counterfeit products quickly reach consumers, affecting the interests of consumers in Vietnam and Korean enterprises.

Moreover, with technology, forgery is increasingly done in a very sophisticated way from the packaging, share, and the color of the counterfeit products. Therefore, without a method of comparison and inspection, it is difficult for consumers to detect the product as a fake. This causes great damage to Korean enterprises not only the market share, but also the value of reputation and intellectual property rights being violated.

Besides, the Covid-19 pandemic makes people in Vietnam more inclined to buy goods online. This is an opportunity for individuals and organizations that counterfeit products to easily reach out to consumers without being detected and punished.

In addition, although Vietnam has a mechanism to enforce intellectual property rights, these regulations have not been thoroughly applied. Therefore, many individuals and organizations making counterfeit goods and infringing intellectual property still continue to violate without being caught. Meanwhile, consumers still have to pay to use bad quality products.

With the support of Korean businesses, Vietnam authorities will continue to improve their capability in identifying counterfeit goods and goods infringing on intellectual property. Therefore, an exchange between Korean businesses and the General Department of Market Management of Vietnam is necessary in providing methods to detect counterfeit goods and intellectual property violations for Vietnam agencies to exchange support, raise awareness of intellectual property rights protection, and provide information on intellectual property rights for Korean businesses in Vietnam. It is expected that Vietnam intellectual property enforcement agencies improve their efficiency in identifying, preventing, combating and handling counterfeit and infringing goods in Vietnam to protect consumers and company in creating an encouraging investment environment in Vietnam, for Korean investors to enter Vietnam for setting up company, factory and do business in Vietnam.

You could learn more about ANT Lawyers IP Practice or contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 730 86 529

 

 

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How to Dealing with Trademark Infringement in Vietnam?

According to Vietnam law on intellectual property, when detecting the trademark infringement act, the trademark owner has the self-protection right includes (i) apply technological measures to prevent acts of trademark infringement (ii) request organization or individual who commits an act of trademark infringement of the holder to terminate such act, make a public apology or rectification, and compensate damages; (iii) request the competent authority to handle with acts of trademark infringement in accordance with the provisions of laws.

 

Trademark Infringement in Vietnam

Firstly, to apply the technological measures to prevent acts of trademark infringement measure, infringed party may give our the information related to original of emergence, trademark certificate, protection and duration scope and other information related to the right of trademark owner in order to inform that the infringed trademark are under protection warn the infringing party not to infringe. Besides, the owner of infringed trademark may use the technical means or measures to mark, identify, distinguish and protect the infringed trademark.

 Secondly, the owner could also request organization or individual who commits an act of trademark infringement of the holder to terminate such act, make a public apology or rectification, and compensate damages. In particular, the trademark owners may themselves or authorize to individual or organization, IP attorney in Vietnam to send to the infringed party to stop the the infringement by indicating the information regarding origin of infringement, trademark certificate, protection scope, protection duration and set a reasonable period of time for the infringer to terminate the act of infringement. In addition, depending on the case and level of infringement, the written request will bear different content. It can be said that this is a prior-should-use measure before taking other measures including application of technological measures. If the violating party cooperates and stops the infringement, it will save time and money of both parties when not taking other stronger measures.

Thirdly, owner of trademark could request the competent authority to deal with acts of trademark infringement in accordance with the provisions of laws. When the trademark owner sends the request as mentioned above to infringing party, and, the violated party does not cooperate and continue the infringement, infringed party may sent a request to competent authority with the information such as: date of making the request; name and address of infringed party or their legal representative; name of receiving request authority; name and address of infringing party; name and address of the suspected violator in the case of request for temporary cessation of customs clearance for exports or imports suspected of infringement; brief information of infringed trademark and infringement; proposed measures to handle infringement; documents and evidence accompanying the request. Depending on the seriousness of the infringement, the petitioner may submit a request to the relevant authorities to apply administrative, civil, criminal or customs measures. Be noted that if the request is sent to custom authority for temporary cessation of customs clearance for imports or exports suspected of infringement, it is required to provide the additional information on the mode of import or export, country of exportation, mode of packaging, the lawful importer or exporter, features of lawfully imported or exported goods for distinction from infringing goods.

Overall, it is important to protect the intellectual property rights. Further, engaging with IP attorney in Vietnam will help the process efficiently from registration, managing the intellectual properties, protecting the intellectual property from infringement, and handling the disputes against the IP violators in Vietnam through administrative measures, civil litigation or even criminal prosecution.

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Opposition of Applications for Registration of the Mark Protection in Vietnam

Vietnam Law on Intellectual Property allows any third party to have right to denounces the opposition of trademark applications for registration which have identical or confusingly similar signs.

As from the date an application for registration of mark is published in the Official Gazette of Industrial Property up until prior to the date of issuance of a decision on grant of a protection title, the third party shall express the opposition to the competent State administrative body including explanations, argument and evidence the opinion. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.

 

Trademark opposition in Vietnam

Opposition to trademark applications plays a great role for the protection of trademark owner that prevents counterfeiting, duplication, infringement and trademark registration in contravention of law.

Documents:

01 Power of attorney (as form)

Documents and evidences to prove the opposition bases.

(ANT Lawyers could consult client specifically and particularly about the evidences and documents).

Opposition procedures

After receiving a disapproval application for registration of mark, National Office Intellectual Property (NOIP) has a dispatch to answer the disapproval application within 10 working days from date received a dossier. NOIP also sends disapproval opinions to owners of application for registration of mark protection.

Owners of application for registration of mark protection has opinions about this disagreement and give proofs that the application for registration of mark protection is suitable with requirement of Intellectual Property law

NOIP is pursuant to argument, proof and regulation law of parties for agree or refuse to grant a protection title

Opposition dossier includes:

Disapproval declaration (02 copies following form)

Explanation documents for disagreement of protection title issue

Attachment proofs.

Power of attorney (if an application is filed through representative of owner’s mark)

Fee, charge vouchers relating disagreement following regulations in law.

Duration

There is no duration stipulation in Vietnamese law. As our usual, NOIP will take from 6 months to 9 months to examine.

If you are looking for an experienced IP services in Vietnam to help you with your Trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your Trademark in Vietnam. 

 

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Intellectual Property and Trademark Registration Services in Vietnam

 

In Vietnam, many businesses today have not paid sufficient attention to trademark protection. Only when their trademarks would be infringed by other companies or competitors, they really concern to protect their trademarks and business through trademark registration, trademark opposition or take further actions. Such situation will negatively impact the business financially.

Trademark Registration services in Vietnam

Trademark rights will be protected within the national territory, therefore when a trademark has been registered in Vietnam, it will be protected in Vietnam. If one company wishes their trademarks to be protected in other countries, it could:

-Directly register in each country or

-Register via the Madrid International registration by filing a single application which indicates the registrations at respective countries.

If registered under the Madrid International, firstly, trademarks must have been submitted trademark applications or have registered in Vietnam, depending on whether the country for protection is under the Madrid Protocol or the Madrid Agreement.

Law on Intellectual Property and its related documents could also be referred to for further information.

ANT Lawyers’ services in the field of trademark registration advice covers:

-Look-up, assess and consult possibilities to register trademark in Vietnam and abroad;

-Represent clients in applying for certificates of trademark registration, record modification, extend degree of trademark protection in Vietnam and abroad;

-Evaluate the effectiveness of the certificate of trademark registration in Vietnam and the possibility of trademark rights violation;

-Implement of the protected trademark rights: investigate, monitor, negotiate, seek arbitration or initiate a lawsuit or request other competent agencies for handling of infringement in Vietnam and abroad;

-Negotiate, draft, evaluate and register the of changing trademark ownership in Vietnam and abroad;

-Advise on building strategies, brand development;

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

 

 

 

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Notice of operation of the National Office of Intellectual Property

Due to the recently complicated situation of the Covid-19 epidemic, especially the appearance of new clusters unidentified infections in residential areas, offices, and enterprises, and to implement guidance of the Prime Minister, National Steering Committee for prevention and control, and Ministry of Science and Technology, and the guidance of the emergency dispatch no. 11/CD-UBND dated May 24^th 2021 of Chairman of Hanoi People’s Committee on strengthening of measures to prevent and control Covid-19, to contribute to the protection of public health, The National Office of Intellectual Property (NOIP) would like to announce:

 

How to protect intellectual property rights in Vietnam?

-From May 27^th 2021, NOIP will stop receiving and releasing results of application for industrial property (IP) at NOIP (no. 386 of Nguyen Trai street, Thanh Xuan district, Hanoi). IP application and dispatches, documents submitted to NOIP office only received through online form or post.

-NOIP also stops consulting at NOIP office (386 of Nguyen Trai street, Thanh Xuan district, Hanoi). Accordingly, consulting activities on IP in general and procedure for IP application in particular, only are implemented through telephone or email.

-The receipt of application and consulting activities at Representative office of NOIP at Ho Chi Minh city and Da Nang will still go on as usual.

If you're looking for an affordable IP attorneys in Vietnam, check out ANT Lawyers.vn was established to meet these needs by providing fast, effective and economical solutions. Hope that clears things up a bit. Feel free to message me directly to chat further about any other IP questions that you face. 

 

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Opposition Procedures of Trademark in Vietnam

Opposition Procedures of Trademark in Vietnam

Trademark is the priceless asset of a company because of being used to distinguish goods or services of different organizations or individuals. Many international companies have found that others have registered trademark protection in Vietnam at National Offices of Intellectual Property (NOIP).

 

Because trademark is protected independently in each nation, it is easy for violators to abuse trademarks of other well-known companies for their interests in Vietnam. This could potentially put the real trademark owner’s under challenges when the clients or customers realize the product bearing the trademark they trust do not meet the standard they expected.

In Vietnam, after detecting their infringement registration process, you should submit an opposition notice to NOIP in Vietnam to prevent the violating trademark registration. To ensure your opposition shall be effective, you should enclose evidences and related documents.

With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers, a qualified attorney and registered IP agent, could support you in opposition procedure of trademark in Vietnam.

Deadline for filing an opposition to a trademark application in Vietnam

The deadline for filing an opposition to a trademark application in Vietnam is stipulated particularly in the IP Law.

According to IP Law of Vietnam, during examination of trademark applications as from the date when a trademark application is published on the Industrial Property Official Gazette until prior to the date of decision on granting Certificate of trademark registration, an opposition request should be filed to the NOIP. Such request will not be accepted by the NOIP for handling if it is filed after the date of decision on granting trademark registration. However, under our current practice, the applicant could request for an acceleration examination, shorter than provided period of 09 months. Therefore please be noted that possible opposition should be filed as soon as possible.

Requirements

Pursuant to the IP Law, foreign opponents are not allowed to file opposition request directly at the NOIP but must authorize a lawful IP representative in Vietnam to proceed with such action based on a required original Power of Attorney (POA). Under current practice in Vietnam, a copy of POA may be acceptable for filing opposition and the original one could be filed later. However, the NOIP will not consider the opposition until the original POA is filed and all formality requirements are satisfied.

Trademark opposition Procedure in Vietnam

The opposition request must be in written form and the source of its accompanied supporting materials (if any) must be specified.

A possible opposition will be considered at the time of the trademark application’s examination as to substance.

As a general procedures, within 01 month (in fact, the time can extend to 02-04 months) as from the receiving date of our opposition, the NOIP will consider and then may convey its contents to the Applicant and fix about 01 month for them to present opinions. After receiving response of the Applicant (if they submit), the NOIP will inform and give the Opponent 01 month for filing response, submission of opinions.

In some cases, the NOIP may give conclusion upon consideration of opposition without conveying its contents to the Applicant if they think that it is clear enough to conclude. It is possible for the NOIP to organize conversation between the Opponent and the Applicant, upon request of the two parties, to clarify the matter (if necessary).

Upon considering the evidences submitted by the two parties, the NOIP will make a decision to accept opposition or not.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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How Licensing of Trademark Works?

Licensing of industrial property subject in general or of trademark in specific is regulated in Intellectual Property law.  Accordingly, in trademark licensing, the owner (licensor) grants permission to another (licensee) to use that trademark on mutually agreed terms and conditions. The licensing of trademark must be established in written form to avoid dispute in trademark licensing.

 

Trademark licensing in Vietnam

Accordingly, licensing of trademark includes the following types: exclusive contract, non-exclusive contract; sub-license contract.

Firstly, exclusive contract means a contract under which, within the licensing scope and term, the licensee shall have the exclusive right to use the licensed trademark while the licensor may neither enter into any trademark license contract with any third party nor, without permission from the licensee, use such trademark.

Secondly, non-exclusive contract means a contract under which, within the licensing scope and term, the licensor shall still have the right to use the trademark and to enter into a non-exclusive trademark license contract with others.

Thirdly, trademark sub-license contract means a contract under which the licensor is a licensee of the right to use such trademark pursuant to another contract.

In any type of the contracts, it is required to have the following contents: full names and addresses of the licensor and of the licensee; grounds for licensing; contract type; licensing scope including limitations on use right and territorial limitations; contract term; licensing price; rights and obligations of the licensor and of the licensee.

Besides the above contents, the parties also need to take note on the validity of this contract. Different from assignment contract of trademark when it is required to register at National office of Intellectual Property of Vietnam to take effect, the licensing contract of trademark does not required this kind of registration for taking effect. Licensing contract shall automatically be terminated upon the termination of the licensor's trademark right.

If Client needs any more information or request for legal advice regarding licensing of trademark or dispute in trademark licensing contract, our Intellectual Property attorney in Vietnam at ANT Lawyers will be of help.

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What Are Obligations of Using Patent and Trademark?

When applicants of invention or mark are granted patent or trademark certificate, they are obliged to use these subjects. The reason for this provision which is, the owner may not use patents or trademarks in practical causing difficulties for the person who would like to use the patent and trademark in reality but cannot register as others has already registered.

 

Register utility solution in Vietnam

According to Article 136 Vietnam Law on intellectual property clearly regulated on obligations of owner in using patent and trademark.

Firstly, to patent, the owner is be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defence and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When the needs stipulated in this clause arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner in accordance with the law.

Secondly, to trademark, trademark holder is obliged to use trademark continuously. Trademark used under a trademark use agreement by a transferee is also considered as an act of using the holder’s trademark. In case the trademark is not used continuously for five years or more, the Trademark Certificate of Registration shall be invalid.

Specifically, if the trademark holder or the person who is allowed to use the trademark do not use the trademark within continuous five years before the date of request to terminate the validity without reasonable reason, except the using starts or restarts at least 03 months up to date of having the termination of validity request.

If the client needs help with handling such complaint, our IP attorney in Vietnam at ANT Lawyers will be of help.

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Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

 

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

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Cancellation Against of Trademark in Vietnam

Trademark is the priceless asset with your company because of being used to distinguish goods or services of different organizations or individuals.

Cancellation Against of Trademark in Vietnam

It usually takes a long time and attempts for your company to gain the trust and belief from customers on your goods and trademark. However, if there is any other same trademark of the same goods like yours, it will easily make customer mistake or confuse and lead many damages to your company such as distinguishing capacity, losing reputation and sale decline.

In fact, many international companies after co-operating with domestic companies to distribute or sell good, find that co-operators steal their trademark by registered trademark protection in National offices intellectual property. Because trademark is protected independently in each nation, it is easy for violators to do steal trademarks.

To protect your rights and benefits, you should request Vietnam IP authority to cancel violated trademark. With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to support you in cancelling against of trademark in Vietnam as follows:

Cancellation against of trademark in Vietnam

Under the Article 96 of the Law on Intellectual Property of Vietnam (IP Law), a certificate of trademark registration may be cancelled wholly or partly, by any third party’s request.

The applicant may request to the National Office of Intellectual Property (NOIP) in written form to cancel protection titles in the cases specified provided that they pay fees and charges.

Period for filling cancellation request

To request cancellation of a trademark due to the Applicant’s bad faith: the period for lodging such a request is the whole term of a Protection Title.

To request cancellation of a trademark due to other legal reasons: the period for lodging such a request is within 5 years as from the granting date.

The case for cancellation

A certificate of trademark registration may be cancelled wholly or partly, by any third party’s request, in the following cases:

The registration applicant has neither had nor been assigned the right to register an invention, industrial design, layout-design or mark;

The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.

Required documents

Proofs (if any)

Power of attorney;

Written justification of the reason for request (clearly stating the serial number of the protection title, reason, legal grounds, contents of the request for termination or Cancellation of part of or the entire protection title) and relevant documents.

Time and procedures

In case a request for cancellation of trademark protection title is made by a third party, the NOIP shall notify in writing the third party’s opinions to the protection title holder, setting a time limit of two months from the date of notification for the trademark protection title holder to respond.

After considering opinions of the parties, the NOIP shall issue a decision on cancellation of part of the entire protection title or notify its refusal to cancellation the trademark protection title.

If disagreeing with the NOIP’s decision on handling of the request for Cancellation of the trademark protection title, the requester or an involved party may lodge a complaint about that decision or the relevant notice.

A decision on cancellation of a trademark protection title shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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Signals of Copyright Infringement in Vietnam

Authors might find their copyright are infringed in Vietnam and would need legal services from a local legal and intellectual property firm to advise.

 

Signals of Copyright Infringement in Vietnam

A literary, artistic or scientific work is an achievement from hard intellectual labor of the author. However, after publishing works, many authors find others use, print or trade their works without their prior written permission. The copyright infringement action can cause many material damages for authors when their intellectual labor achievements are used by others without prior asking and annual royalties. To ensure the rights of authors, the law strictly forbids from infringing and stipulates particularly as follows:

Appropriating copyright in a literary, artistic or scientific work.

Impersonating an author.

Publishing or distributing a work without permission from the author.

Publishing or distributing a work of joint authors without permission from the co-authors.

Modifying, editing or distorting a work in any way which prejudices the honour and reputation of the author.

Copying a work without permission from the author or copyright holder, except in the cases allowed by the Law

Making a derivative work without permission from the author or copyright holder of the work used for making such derivative work, except in the case allowed by the Law.

Using a work without permission from the copyright holder and without paying royalties, remuneration or other material benefits in accordance with law, except in the cases allowed by the Law.

Leasing out a work without paying royalties, remuneration or other material benefits to the author or copyright holder.

Duplicating, producing copies of, distributing, displaying or communicating a work to the public via a communications network or digital means without permission from the copyright holder.

Publishing a work without permission from the copyright holder.

Deliberately destroying or de-activating the technical solutions applied by the copyright holder to protect copyright in his or her work.

 

Deliberately deleting or modifying electronic information in a work regarding management of the rights to such work.

Manufacturing, assembling, transforming, distributing, importing, exporting, selling or leasing out equipment when knowing, or having grounds to know, that such equipment may de-activate technical solutions applied by the copyright holder to protect copyright in his or her work.

Making and selling a work with a forged signature of the author of such work.

Importing, exporting or distributing copies of a work without permission from the copyright holder.

With highly professional staff and great experience in Copyright and Related right aspect in Vietnam and other countries in the world, ANT Lawyers - Law firm in Vietnam would like to support and represent the clients in protecting copyright and related right.

 

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