Baker McKenzie’s leading IP practice regularly advises major clients in relation to the management of their IP portfolios and the protection and enforcement of their IP rights. The team has considerable experience representing multinationals in contentious and non-contentious IP law issues, including those regarding patents, trademarks, copyright, anti-counterfeiting, anti-piracy, domain names, and trade secrets. Hanoi-based Manh Hung Tran leads the practice, while heads the firm’s trademark team Hoa Tran focuses on brand and enforcement, IP advisory strategies, domain name disputes, and copyright matters. She recently led a team representing a subsidiary of Major League Baseball in relation to its anti-counterfeiting strategy in Vietnam. Minh Tri Quach specialises in anti-counterfeiting cases, while experienced special counsel Dzung Pham handles trademark disputes and IP infringement cases.
Intellectual property: international firms in Vietnam
Baker McKenzie
Praxisleiter:
Manh Hung Tran
Weitere Kernanwälte:
Dzung Pham; Hoa Tran; Minh Tri Quach
Referenzen
‘Dzung Pham possesses a strong understanding of enforcement work in Vietnam.’
‘This team is very solution oriented and responsive. Their client updates in IP and in relation to the general commercial and legal issues affecting the Vietnamese market are always clear, insightful and timely.’
‘The team provides practical legal advice that reflects their mastery of local law, its practical implementation and an understanding of the bureaucratic framework of a market which remains, at times, challenging.’
Kernmandanten
Major League Baseball Properties Inc
Signum International AG and Hult Prize Foundation
7-Eleven Inc.
ByteDance Ltd.
CommScope Holding Company, Inc.
Kao Corporation
VF Corporation
The North Face Apparel Corporation
Apple Inc.
Louis Vuitton Malletier
3M Company
Highlight-Mandate
- Acting for Signum International AG and Hult Prize Foundation in a UDRP proceeding at the WIPO Arbitration and Mediation Center regarding the two domain names.
- Representing CommScope Holding Company, Inc. in relation to a comprehensive enforcement programme that covered the entire process, from investigations and raid action through to criminal proceedings, against a local big wholesaler of counterfeit products bearing the client’s trademarks.
- Assisting ByteDance Ltd, the owner of a short-form video app with more than one billion monthly active users, with a project to audit and file a series of defensive trademarks to protect their well-known trademark, which has faced challenges of copycat and infringement in Vietnam.
Tilleke & Gibbins
Tilleke & Gibbins’ intellectual property team, led by Thomas Treutler in Ho Chi Minh City, handles a broad range of matters, with a particularly strong reputation in areas such as anti-counterfeiting, strategic filing, and commercial IP work. The practice excels in IP prosecution and enforcement in the life sciences sector, as well as the technology, media, and telecommunications spaces. With extensive patent litigation and domain name dispute expertise, Loc Xuan Le heads the firm’s IP enforcement team. Linh Thi Mai Nguyen leads the trademark department, while Thanh Phuong Vu, with a background in pharmaceuticals and biotech, is head of patents.
Praxisleiter:
Thomas Treutler; Linh Thi Mai Nguyen; Thanh Phuong Vu; Loc Xuan Le; Trung Nguyen
Referenzen
‘Thomas Treutler stands out for his excellent IP and regulatory knowledge on the Vietnamese legal market.’
‘Thomas Treutler is highly responsive, professional, and well-respected and liked by his peers and clients. He is a go-to practitioner when it comes to complex cases that need great expertise and careful handling.’
‘Linh Thi Mai Nguyen provides a high quality of service and has in-depth knowledge in all trademark matters. She always provides solutions that are client-oriented.’
Kernmandanten
Bayer
BMW
Christian Louboutin
Eli Lilly
General Electric
Victoria’s Secret
Les Laboratoires Servier
Merck, Sharp & Dohme
Moët Hennessy
Nestle
Highlight-Mandate
- Assisted a multinational pharmaceutical company in a case of copycat packaging by relying on grounds of copyright infringement to successfully force a Vietnamese company to change its product packaging and comply with our claims.
- Assisted a professional dental software company to identify companies using unlicensed versions of their software and convinced an infringer to purchase 7 units of software for the total amount of EUR16,800.
Frasers Law Company
Frasers Law Company assists clients with a wide range of IP matters, including copyright, patent, and trademark infringement, trademark registration and enforcement, technology transfer contracts, and trade secrets cases. Mark Fraser leads the team alongside Nguyen Van Vien, who also serves as chairman of the Intellectual Property Association of Ho Chi Minh City, as well as director of the Vietnam Intellectual Property Institute. The team advises clients in the education, food and beverages, banking, manufacturing, and biotech sectors, among others.
Praxisleiter:
Mark Fraser; Nguyen Van Vien
Referenzen
‘Frasers Law offer extensive and diverse services in Intellectual Property both within Vietnam and in many other countries in the region. They have the unique ability to provide expertise covering local and international requirements and the associated legal requirements.’
‘Frasers Law are well connected and are able to draw on many years of experience within Vietnam as well as understanding what is required in other countries investing there.’
‘Frasers have highly qualified and skilled people who are always available across the time zones.’
Kernmandanten
Abu Dhabi Investment Authority
Dr. Reddy’s Laboratories
Moov (Hong Kong) Limited
Stark Corporation
Timo Digital Bank
S&O IP
S&O IP’s IP team, operating from Ho Chi Minh City and Hanoi, offers clients broad expertise in relation to trademarks, patents, anti-counterfeiting, industrial designs, copyright, cybersquatting, and trade secrets. Hau Nguyen, focusing on IP rights prosecution and enforcement, heads the firm’s Vietnam practice, while Yen Pham, with extensive trademark and patent experience, leads the trademark team. Bangkok-based trademark attorney Daniel Greif is the firm’s Southeast Asia Director for IP matters.
Praxisleiter:
Hau Nguyen; Daniel Greif; Yen Pham
Kernmandanten
Lvmh Group
Agustin Gonzalez Lenero
Sbe Licensing, Llc
Coach Ip Holdings Llc
The Procter & Gamble Company
Highlight-Mandate
- Assisted the LVMH Group, a multi-national luxury goods entity, in relation to counterfeiting enforcement.
- Advised Procter & Gamble Company in relation to a potential memorandum of understanding with the Vietnam Directorate of Market Surveillance, with the aim of establishing a communication channel regarding IP protection and enforcement, particularly concerning anticounterfeiting, throughout Vietnam.
- Assisted Total Energies with its opposition to several hyper-formative marks applied in Vietnam by a local oil and gas company.