Dealing with trademark infringement in Vietnam in the digital environment

09/12/2022 - 1207 views

Along the development of the internet, cases related to infringement of intellectual property (IP) rights  such as trademarks, trade names, etc. in the digital environment are increasing day by day. This article will show a case where Ageless represented and protected the legitimate interests of our client by handling trademark infringement in Vietnam on website.

 

1. Background of the case

Our client is one of the leading companies in Vietnam in the field of manufacturing and trading electrical & plumbing equipment associated with the protected trademarks and  . These products are widely distributed throughout Vietnam and are considered as one of the best choices for Vietnamese consumers.

Unfortunately, there is an unauthorized company whose registered business address in Ha Nam province (it is worth mentioning here that the address of the transaction office in Hanoi that this company describes also does not exist in reality) has attached the client’s trademark on its website https://thietbidiensino.com/. At the same time, this company claims to be the largest and official distributor of the client.

 

 

Photos that show the signs of trademark infringement upon trademarks “SINO” and “VANLOCK” on the website https://thietbidiensino.com/

 

2. Ageless’ arguments and measures

Realizing this is an act of unfair competition, infringing upon the rights to the trademark and negatively affecting the legitimate interests of Vietnamese consumers as well as the reputation of the trademark owner, we have advised and represented our client to take part in the following steps:

  • Obtaining an Appraisal Conclusion on the infringing elements from Vietnam Intellectual Property Research Institute-VIPRI;
  • Submitting an official complaint to the Inspectorate of Science and Technology;
  • Sending Cease & Desist (C&D) Letters to the infringer.

 

– Firstly, in order to firmly consolidate and obtain the objective opinion of a professional agency, we represented the client to  file an Appraisal request to the VIPRI, an under-age subordinate organization of the Ministry of Science and Technology (MOST). According to the Appraisal conclusion, VIPRI believes that the above-mentioned signs “SINO”, “VANLOCK” as attached on the website https://thietbidiensino.com/ without the trademark owner’s permission are infringing elements of the IP rights of the protected trademarks.

– Upon obtaining the favorable Appraisal Conclusion, we submitted an official complaint to the Inspectorate of Science and Technology requesting to handle the infringement of trademark rights being protected in Vietnam. However, the infringing party deliberately evaded by giving various reasons to  prolong the time, and did not attend the working session according to the dispatch of the Inspectorate.

– Therefore, we have sent C&D Letters and contacted directly to the infringer, requesting them to cooperate and cease the illegally use of the protected trademarks for their e-commerce advertising activities on the website. After severals exchanges, Ageless pointed out to the infringing party to be more aware of their trademark infringement acts as well as the possible legal consequences. 

 

3. Results

By efficient detection and handling, combined with various measures, the infringing party finally complied to remove the infringing elements “VANLOCK”, “SINO” from its website https://thietbidiensino.com/. At the same time, they also apologized and committed not to re-use signs identical or similar to the protected trademarks “VANLOCK” and “SINO”.

In this case, we applied the IP and unfair competition regulation to handle trademark infringement in Vietnam thoroughly and promptly.

 

4. Experiences for Business Owners

From the case, we would like to advise foreign and domestic businesses operating in Vietnam as follows:

  • Firstly, it is advisable to obtain registration for both trademark and domain name (which containing the trademark and business name) as soon as possible;
  • Secondly, it is advisable to search for availability before registering or using a trademark or domain name to avoid conflicts with the rights of other parties;
  • Last but not least, might register to surround domain names containing trademarks and or tradename, in particular, should give priority to registering domain names “.com.vn”, “.vn” and “.com” due to the lack of specific provisions in the law regarding domain disputes

Details of trademark registration procedures in Vietnam can be found in THIS ARTICLE

Further information on trademark search in Vietnam can be found in THIS ARTICLE  

 

Should you need more information or require advice on handling trademark infringement in Vietnam as well as other IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: info@ageless.vn

 

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