Kenfox IP & Law Office

09/05/2025

Binh Minh vs Binh Minh Viet: What valuable observations can be made ?

Most people believe that in cases of IP infringement, an “expert opinion” (“Assessment Conclusion”) from specialized agencies like the Vietnam Intellectual Property Research Institute (VIPRI) serves as the definitive “gold standard”, providing the most reliable scientific basis for fair judicial decisions. But the recent, protracted trademark dispute between plastics giant Binh Minh and newcomer Binh Minh Viet challenges this very assumption, making many ponder: What occurs when a conclusion of “infringement” by the premier leading expert assessment body is dismissed by the court as “just for reference“? Is the expert “shield”, so trusted by rights holders, losing its inherent value in the courtroom?

The lawsuit involving Binh Minh Plastics JSC and Binh Minh Viet Plastics JSC is a prime example of this complexity. Despite holding an Expert Opinion from VIPRI confirming infringement and an Administrative Sanction Decision from market authorities, Binh Minh Plastics repeatedly encountered setbacks in court. Why did a case seemingly “as clear as day” unfold in such an unpredictable manner? On what grounds did the court base its ruling when it effectively “set aside” the expert opinion – a widely recognized form of evidence in Vietnam?

KENFOX IP & Law Office provides practical analyses and insights from this case for rights holders to consider when developing effective trademark protection strategies in Vietnam.

Read more: https://kenfoxlaw.com/binh-minh-vs-binh-minh-viet-what-valuable-observations-can-be-made

04/04/2025

Patent Amendments in Vietnam: Rights and Limitations for Applicants

The patent registration process in Vietnam, as in many other countries, may involve multiple stages of examination. Throughout this process, amendments to the patent application may become necessary to clarify, refine, or narrow the scope of protection.

KENFOX IP & Law Office provides analyses of the rights and limitations regarding patent application amendments under Vietnamese law, while also drawing a comparison with a landmark case in India to help patent applicants in Vietnam understand the differences on this issue.

The Right to Amend Patent Applications in Vietnam
Under the provisions of Vietnam’s IP Law and Circular No. 23/2023/TT-BKHCN detailing certain articles of the IP Law, patent applicants in Vietnam have the right to amend their patent applications during the following stages:

Before the application is published: The applicant may proactively request to amend the patent application before the Intellectual Property Office of Vietnam (IP Vietnam) publishes the application in the Industrial Property Gazette. Amendments at this stage are generally more flexible, provided they do not alter the nature of the invention.

During formality examination: When IP Vietnam issues a notice of intended refusal due to formal deficiencies, the applicant has the right to rectify these deficiencies within the prescribed time limit (typically 2 months from the date of the notice). Amendments at this stage mainly relate to formal requirements concerning presentation format, documents, fees, and charges.

Read more:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

10/03/2025

Addressing IP disputes in Vietnam: Declarations of non-infringement and invalidity

Intellectual property disputes, especially those concerning trademarks, are an inevitable part of the dynamic business environment in Vietnam. Instead of passively waiting for the threat of trademark disputes to arise, wise businesses will seek proactive solutions to protect themselves. The question then becomes: how can businesses proactively “stay one step ahead”, mitigate legal risks, and confidently explore the market? Declarations of non-infringement and trademark invalidity are two excellent legal mechanisms, empowering third parties to definitively establish legal “boundaries”, create a “safe harbor” for their commercial activities.

KENFOX IP & Law Office would like to provide more comprehensive analysis on the mechanism of declaration of non-infringement and invalidity in the context of Vietnam’s IP Law.

Declaration of non-infringement: Seeking proactive trademark clarity in Vietnam
While not explicitly codified as a specific procedure in Vietnamese law, a declaration of non-infringement serves as a strategic tool for third parties seeking to proactively address potential trademark concerns. This mechanism proves invaluable when a business faces threats of legal action for alleged infringement or aims to secure a clear legal landscape before introducing a new product or service to the Vietnamese market.

A declaration of non-infringement essentially involves a third party seeking formal confirmation that their actions do not infringe upon a registered intellectual property (IP) right.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

10/03/2025

At a glance: Trademark Opposition in Vietnam

1. What is a trademark opposition in Vietnam?
In Vietnam, a trademark opposition is a legal procedure that allows a third party to formally challenge a pending trademark application before it gets officially registered by the Intellectual Property Office of Vietnam (VNIPO, formerly, NOIP). A trademark opposition aims at preventing the registration of trademarks that could potentially infringe on existing rights or create confusion in the marketplace. It’s a proactive measure to avoid future legal disputes and brand damage.

Under the amended IP Law of Vietnam in 2022, a Notice of Opposition should be filed within a specific deadline of 05 months from the publication of the trademark application. However, after the 5-month opposition deadline expires, any third party can still file a third-party observation with the VNIPO. This submission can be made at any time until the VNIPO issues a protection title (registration certificate) for the applied-for trademark

Third-party observations allow anyone to bring relevant information or concerns to the attention of the VNIPO examiner regarding a pending trademark application, even after the formal opposition period. This information can relate to why the trademark should not be registered (e.g., lack of distinctiveness, conflict with prior rights, etc.)

2. Who can file a trademark opposition in Vietnam?
In Vietnam, under Article 112a of the amended IP Law (2022), any third party can file a trademark opposition.

This means the right to file an opposition is broadly granted. You do not need to be the owner of a prior similar trademark or have a direct commercial interest to file an opposition. Any individual, organization, or business that believes their rights would be adversely affected by the registration of a trademark can file an opposition. This includes owners of prior trademarks, those with well-known marks, or parties with other legitimate interests.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

04/03/2025

Why Trademark Opposition is a Must in Vietnam?

Many trademark owners might think that examiners at the Vietnam Intellectual Property Office (“VNIPO”) will automatically reject trademark applications that are strikingly similar to existing marks, but reality can differ surprisingly. The assumption that very similar trademarks, especially those registered for similar or related goods and services, will certainly be rejected is a common misconception. Due to unforeseen reasons during the examination process, even marks that appear confusingly similar can sometimes be granted protection.

Therefore, if one becomes aware of a new trademark application in Vietnam that is substantially similar to their prior mark, especially for the same type of product or service, procrastination is not an option. Trademark owners should seriously consider taking immediate and decisive action by filing an opposition. Waiting and hoping that the examiners will automatically reject the trademark is a gamble too risky for their brand’s future.

Trademark opposition: A must-have strategy in Vietnam

Trademark examination in Vietnam, like in many jurisdictions, involves both formality examination and substantive examination. Substantive examination includes a search for prior similar or identical marks. Filing a trademark opposition in Vietnam can indeed serve as a critical alert mechanism.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

25/02/2025

Zhong Wu vs. ZHONGYU: Analyzing Trademark Differences Based on Which Principles in Vietnam?

Appealing a trademark refusal decision from the Intellectual Property Office of Vietnam (VNIPO) presents significant legal challenges, even with a single ground for refusal. Facing multiple grounds compounds the difficulty. However, KENFOX IP & Law Office recently succeeded in overturning a refusal for a trademark filed through the Madrid System designating Vietnam, despite the mark being rejected on three distinct grounds.

What persuaded the VNIPO to reconsider its initial conclusion and ultimately recognize the distinctiveness of a trademark previously rejected for containing Chinese characters and exhibiting similarities to two cited marks? What lessons can be learned from this successful appeal?

Background

In 2018, the VNIPO refused protection for the trademark "Zhong Wu, Chinese characters and device" citing three provisions of the Intellectual Property Law: Articles 74.2(a), 74.2(e), and 74.2(h).

Key takeaways

Developing a Trademark Refusal Appeal Strategy

When a trademark faces rejection on three grounds, the prospect of a successful appeal may seem daunting. Multiple grounds for refusal undoubtedly diminish the chances of securing protection. However, this does not necessarily signify an insurmountable obstacle. Besides a thorough understanding of the refusal reasons, a well-constructed argument, comprehensive evidence, and experienced IP counsel are crucial for a successful outcome.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

11/02/2025

Does Trademark Registration In Vietnam Provide Immunity From Copyright Infringement?

Trademarks and copyrights – two concepts that may seem familiar, yet they harbor a wealth of legal complexities. Many mistakenly assume that obtaining a Trademark Registration Certificate grants them a “carte blanche” to use the logo without any further considerations. However, the reality is far from simple. In fact, it demonstrates that trademark registration and the issue of copyright infringement are two entirely distinct legal realms. KENFOX IP & Law Office analyzes the core differences, explores the points of intersection, and, in particular, elucidates why, even with a registered trademark, the potential for copyright infringement persists.

In reality, there are numerous instances where the Intellectual Property Office of Vietnam (IP Vietnam) issues Trademark Registration Certificates to third parties for logos with designs that are completely identical to logos already protected by copyright belonging to another organization or individual. The question then arises: can this third party freely use the registered logo, relying solely on the Trademark Registration Certificate issued in Vietnam, without facing the legal risk of copyright infringement regarding the logo of that other organization or individual?

The answer is “No”. A Trademark Registration Certificate, even when issued by a competent authority such as IP Vietnam, is not a “golden shield” guaranteeing absolute freedom for all uses of a logo. In other words, possessing a Trademark Registration Certificate does not automatically grant a third party the inherent right to use a logo unconditionally, especially when considering the already protected copyright aspect belonging to other organizations or individuals. To clarify this issue, it is necessary to analyze and distinguish the nature of two independent yet closely related legal categories: “Trademark Registration” and “Copyright Infringement”.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

11/02/2025

A brand is a weapon for brand recognition, an invention is a key to open the door of technology. Everyone knows their importance. But copyright - a form of protection that is no less important, is often overlooked and underestimated. Many people mistakenly think that copyright is as natural as breathing, and registration is just a superfluous procedure. Although the law of many countries, including Vietnam, recognizes that copyright arises automatically from the moment a work is formed in a certain physical form, however, ignoring the legal value of the copyright registration procedure can lead to a significant decline in the effectiveness of protecting the legitimate rights of the owner. KENFOX IP & Law Office, would like to share our perspective on the aspects related to copyright registration in Vietnam.

Consider the case of a multinational brand, for example, "Ice Dream Delights", widely known to the public for its highly recognizable penguin logo. This company has completed the trademark registration procedure. However, an important legal question arises: has the company optimized the scope of IP protection for the artistic work of creating the penguin symbol through the legal mechanism of copyright? The fundamental legal question posed is: is copyright registration merely a formality, or does it truly hold significant legal power in the context of today's complex competitive market? The answer may surprise many. Copyright registration plays a crucial role in establishing a solid legal foundation, increasing the ability to prove ownership, and enhancing the effectiveness of IP rights enforcement.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

11/12/2024

Fast-Tracking Patent Examination in Vietnam: Utilizing Foreign Examination Results

Fast-tracking Vietnamese patents is a common goal for applicants, especially considering Vietnam's status as a hotbed for foreign investment and the typically long patent prosecution timelines. The standard patent examination process in Vietnam can take 3-5 years or even longer. This delay can significantly impact a company's ability to exploit its invention and gain a competitive edge. The extended prosecution time eats into the effective life of a patent, leaving less time for companies to recoup their R&D investment and generate returns after the patent is granted. Therefore, expediting patent grants is a pressing need for many patent owners in Vietnam.

KENFOX IP & Law Office provides insights on one of the recent provisions on patent acceleration in Vietnam. In a significant development for IP protection, Circular 23/2023/TT-BKHCN, issued by the Ministry of Science and Technology (MOST) on November 30, 2023, has officially codified the use of foreign examination results to facilitate the expedited examination of inventions in Vietnam by using foreign examination results. Under Article 16.9, the Vietnam Intellectual Property Office (VNIPO) may now consider search reports and examination results from corresponding overseas patent applications during the substantive examination process of a Vietnamese patent application.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

06/12/2024

Invalidation of a European Patent: How can it impact your patents in Vietnam?

Many businesses worry that the invalidation of a European patent will automatically lead to the loss of protection in Vietnam. Can a decision to invalidate a patent in Europe truly "cross borders" and affect your patent in Vietnam? KENFOX IP & Law Office provides detailed guidance on the relationship between patent invalidation in Europe and its impact on patents in Vietnam.

It can be affirmed that, although the invalidation of a European patent may affect a Vietnamese patent, it does not "automatically" lead to the invalidation of the patent in Vietnam.

Vietnam's patent protection system operates independently from Europe's. A patent application or granted patent in Vietnam is not automatically invalidated solely because a corresponding patent has been invalidated in another country. Each country has its own independent process for examining and establishing patent validity. Regarding "grounds for patent invalidation", Vietnam establishes its own specific grounds for invalidating a patent in whole or in part under Article 96 of the Intellectual Property Law, as amended in 2023, including:

(i) Violation of Security Control Regulations: The patent application is filed in violation of the regulations on security control over inventions.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

27/11/2024

"Fabrilcar" vs. “FABRICA” and “FABRICAIR”: How to successfully appeal a trademark refusal in Vietnam?

Vietnam – On 16/10/2024, the IP Offfice of Vietnam (“IP VIETNAM“) issued a Decision on acceptance of IR No. 1470915 for the mark "Fabrilcar" in the name of Aspöck Systems GmbH, withdrawing its provisional refusal decision and terminating a lengthy 4-year appeal process. This is a great victory for our client, Aspöck Systems GmbH, an Austrian company that specializes in developing and manufacturing lighting systems for vehicles, founded in September 1977.

The mark “Fabricar” under IR No. 1470915, designating Vietnam, faced a provisional refusal for all goods and services in Classes 11 and 37, as well as certain goods in Class 09 and services in Class 35, due to the mark being allegedly similar to two cited marks “FABRICA” and “FABRICAIR”.

For more information please click:

Share on FacebookShare on TwitterShare on LinkedinShare on Pinterest

25/11/2024

Joint Liability Confirmed in Thai Patent Infringement Case

Facts
Thailand – In January 2024, the Court of Appeal for Specialized Cases upheld a ruling that found two local pharmaceutical companies, Unisun and Medline, jointly liable for infringing H. Lundbeck A/S’s patent for antidepressant escitalopram. The court confirmed the lower court’s finding that the companies manufactured, sold, and distributed the drug in Thailand without authorization. The companies were ordered to pay Lundbeck 106,500 Danish Krone (approximately US$15,500) in damages, plus legal costs and court fees.

The case began in June 2020, when Lundbeck initiated legal action against Unisun and Medline for allegedly manufacturing, selling, and distributing escitalopram in Thailand without authorization. Lundbeck also claimed the companies had registered escitalopram as a Thai innovation with the National Science and Technology Development Agency (NSTDA), enabling them to bypass the auction process and sell the drug directly to hospitals and state agencies, thereby undercutting Lundbeck’s market share.

Readmore:

Facts Thailand – In January 2024, the Court of Appeal for Specialized Cases upheld a ruling that found two local pharmaceutical companies, Unisun and Medline, jointly liable for infringing H. Lundbeck A/S’s patent for antidepressant escitalopram. The court confirmed the lower court’s finding t...