Handling Trademark Infringement in Vietnam

What kind of trademark is considered to be an infringement of intellectual property rights in Vietnam? What percentage of violations is subject to handling? To answer the above question, the trademark owner needs to carry out a trademark appraisal procedure. The appraisal conclusion only records whether the content is infringing or not, and that result is considered a source of evidence to handle the violation of the trademark. In the article below, Viet An Law will provide you with detailed information for handling trademark infringement in Vietnam according to the provisions of Vietnamese law.

The recent status of trademark infringement in Vietnam

With an alarming increase, trademark infringement in Vietnam is becoming more complicated. According to the report of the National Office of Intellectual Property in 2023, the country handled 1,430 trademark infringement cases with a total fine of more than VND 18 billion, an increase of 30% in the number of cases and 35% in the fine compared to the previous year. Common violations include trading in counterfeit goods and unfair competition through trademark imitation, along with violations related to domain names and trade names.

In the customs sector, violations with a high value are mainly related to consumer goods such as clothes, shoes, handbags, and electronic products, counterfeiting famous trademarks such as Gucci, Nike, Chanel, Adidas, and Hermes. This situation not only causes serious economic damage but also affects the national commercial reputation and the legitimate rights of consumers.

Documents required to carry out handling trademark infringement in Vietnam

To proceed with handling violations, businesses need to establish the basis for the violation by providing Viet An Law with the following documents:

• Power of attorney (according to the form provided by Viet An Law Firm);
• Notarized copy of trademark registration certificate or document proving trademark ownership or legal right to use the trademark;
• Business registration certificate of the enterprise or notarized identity card for the trademark owner who is an individual;
• Product samples bearing the company’s trademark;
• Samples of the infringing party’s products or documents proving signs of trademark infringement by the infringing party;
• Information of the violating party: business name, address, and contact information (if any).
• Conduct a trademark appraisal to obtain evidence to prove the infringement of the infringing trademark by the protected trademark.

Trademark infringement handling procedures in Vietnam

Step 1: Collect evidence and make a record

Making a record of infringement evidence is not a mandatory legal obligation. However, to prevent the risk of the infringer destroying or modifying evidence of the infringement of industrial property rights, the trademark owner should make a record of the infringement objectively, especially for websites containing trademark-infringing content, at a competent institution.

Step 2: Industrial property infringement assessment

To establish a solid legal basis for determining the infringement of rights to a registered trademark, the right owner should request the Vietnam Intellectual Property Research Institute (VIPRI) to conduct an industrial property appraisal to conclude on the infringing nature of the suspected act.

• Research and accurately identify the subject of appraisal;
• Research and accurately determine the content of the appraisal request;

VIPRI, as a specialized agency under the Ministry of Science and Technology, has the function of industrial property appraisal according to the law. Therefore, the appraisal conclusion of this agency has high legal value in serving as a basis to resolve disputes or support the parties in the negotiation and mediation process.

The normal trademark examination time is 22 working days, or the fastest examination is 03 working days.

Step 3: Send a notice requesting to stop the violation

Sending a legal letter can save time and processing costs in case the infringer is willing to cooperate in resolving the dispute. After receiving the results of the trademark appraisal, Viet An Law will issue a warning through the capacity of an intellectual property representative, requesting the infringing party to stop the trademark infringement.

• Research and accurately identify information on violating parties;
• Requesting the violating parties to stop trademark infringement.
• Represent the business to contact the violating party to request an end to the violation.

The notice requires the suspected violator to take the following measures:

• Immediately cease all acts of infringement of industrial property rights;
• Completely remove elements that infringe trademark rights;
• Destroy documents, signs, transaction certificates, products, and other items containing elements that infringe upon the rights to a protected trademark.

For violations on social media platforms such as Facebook or YouTube, it is possible to report violations directly to these platforms according to their procedures.

Step 4: Request to handle violations of the law

Based on the nature and severity of the violation, the right owner may request to handle the violation of the law in the field of industrial property according to the provisions of Article 198 of the Law on Intellectual Property 2005, amended and supplemented in 2022.

• Viet An Law will represent clients in carrying out administrative violation handling procedures: contact and submit a request for handling violations to Market Management Agency, Food Safety and Hygiene Management Agency, Economic Police Agency, Science and Technology Inspectorate, Ministry of Information and Communications, …
• According to this plan, the authority will conduct examinations and issue decisions on administrative sanctions according to regulations in the current legal documents.

Step 5: File a lawsuit in a competent court or file a criminal complaint

In case that the violation constitutes a crime under the Penal Code, the rightful owner may file a civil lawsuit in a competent court or file a criminal complaint against the infringer, requesting one or more of the following measures:

• Publicly apologize and correct information on websites managed by violators;
• Compensation for actual damages suffered by the rightful owner, including reasonable costs incurred in resolving the infringement.

Guide to legal action for trademark owners

In the context of a serious increase in trademark infringement in Vietnam, trademark owners need to apply proactive and comprehensive protection strategies.

Prevention and monitoring measures

• Establish a regular market monitoring system, especially on e-commerce platforms;
• Register trademark protection in countries where business activities are conducted;
• Build a communication strategy to enhance trademark awareness.

When detecting violations

• Collect and preserve evidence of violations professionally;
• Quickly assess the nature and severity of the infringement;
• Do not delay treatment to avoid spreading damage;

Seek professional legal assistance

Using specialized intellectual property legal services is a key factor to ensure effective handling. Specialized lawyers will support you:

• Develop appropriate resolution strategies from negotiation to litigation;
• Carry out complex legal procedures such as appraisal at VIPRI;
• Representing the exercise of IP rights;

Handling trademark infringement in Vietnam consulting service of Viet An Law Firm

In the context of infringement, the use of legal services will bring many benefits to the trademark owner, including:

• Optimize the effectiveness of rights protection and save time and costs;
• Ensure compliance with legal procedures and avoid legal risks;
• Improve the ability to recover damages and prevent the recurrence of violations;

With the trend of infringement in the digital environment, having the support of legal experts is not only a smart choice but also a decisive factor in the success of protecting trademark ownership. Viet An Law provides intellectual property infringement handling services, including the following legal actions:

• Procedures for handling violations of trademark rights.
• Require the violator to stop the violation;
• Request to assess and conclude on acts of infringement of intellectual property rights;
• Request to handle violations;
• Participate in litigation as a lawyer to protect the rights and interests of clients related to intellectual property at competent courts.