Next Generation Partners

Leading Associates

Intellectual property: international firms in Vietnam

Baker McKenzie

Based in Hanoi, Baker McKenzie advises a broad range of multinational and local clients across sectors on all aspects of managing, protecting and enforcing their IP portfolios. The group regularly represents high-profile trademarks and brand names on issues such as acquisition, enforcement, strategising an commercialisation, as well as on franchising and licensing agreements, and is particularly skilled in litigation and appeals. Head of the firm’s IP and tech practice, Manh Hung Tran is a key contact for international companies in both contentious and non-contentious IP issues, and has expertise in matter such as patents, designs, unfair competition, anti-counterfeiting and domain names. Hoa Tran leads the firm’s trademark practice and has extensive experience in IP issues including brand management, brand enforcement, IP advisory strategies, unfair competition, domain name disputes and copyright matters. The group also includes Dzung Pham who advises across a range of IP matters and is particularly seasoned in IP enforcement, and IP specialist Dat Nguyen.

Praxisleiter:

Manh Hung Tran; Hoa Tran


Weitere Kernanwälte:

Hoa Tran; Dzung Pham; Dat Nguyen


Referenzen

‘The Baker McKenzie team have been our trademarks lawyers in Vietnam for several years now, and in that time they have been consistent in the high standard of service and advice they provide. They are proactive in anticipating their client’s needs, and suggest protection strategies that compliment the ones we’ve developed in-house.’

‘Hoa Tran is knowledgeable, experienced, calm and communicates clearly.’

‘They are prompt in their response and their team is staffed well so that the advice can be provided at the right level.’

Kernmandanten

Starbucks Corporation


Harman International Industries, Incorporated


Unilever PLC


The Chancellor, Masters and Scholars of the University of Cambridge


Highlight-Mandate


  • Provided strategic advice and action plans for Starbucks on the potential impact of Vietnam’s IP Law on its brand management and operations.
  • Advised Harman on brand protection strategies and action plans to address trademark and design infringement, as well as combat imitations and sophisticated infringers targeting their brands.
  • Successfully handled a significant trademark assignment project for Unilever in Vietnam, involving the transfer of over 700 active trademarks among Unilever’s entities.

Tilleke & Gibbins

Overseen by Michelle Ray-Jones in Ho Chi Minh City, Tilleke & Gibbins advises across the full range of IP matters with ‘good local knowledge and commercial acumen’, and has reputable expertise in issues involving anti-counterfeiting, strategic filing and commercial IP work. The group is a go-to firm for pharma and other life sciences clients, with additional experience in the TMT arena. In Hanoi, key figures include Linh Thi Mai Nguyen who leads the trademark team, IP litigation expert Loc Xuan Le who is especially knowledgeable in patent and domain name disputes, and IP enforcement specialists Trung Nguyen and Linh Duy Mai. Also in Hanoi, Thanh Phuong Vu and Hung Tuan Nguyen are notable contacts for patents matters.

Praxisleiter:

Michelle Ray-Jones; Loc Xuan Le; Linh Thi Mai Nguyen; Thanh Phuong Vu; Linh Duy Mai


Weitere Kernanwälte:

Trung Nguyen; Hung Tuan Nguyen


Referenzen

‘We work with Tilleke mainly because of their quick and effective communication with the proper advice.’

‘Good local knowledge and commercial acumen. They are very responsive and always attentive to our needs.’

Kernmandanten

Bayer


BMW


Christian Louboutin


General Electric


L Brands/Victoria’s Secret


Les Laboratoires Servier


Merck, Sharp & Dohme


Moët Hennessy


Nestle


Novartis


Highlight-Mandate


  • Won a final victory for Novartis in a multi-year civil action in a patent infringement case against a powerful state-owned pharmaceutical company producing a diabetes drug that contains our client’s patented compound as an active ingredient.
  • Assisted a large Asian bank in fighting a trademark infringement charge brought by a Vietnamese individual, confirming our client’s right to use its long-established mark/trade name for online banking services.
  • Succeeded in a copyright infringement case for a world-famous sports league in a case of illegal streaming of football matches in Vietnam.

Frasers Law Company

Frasers Law Company has expertise in contentious IP matters involving copyright, patent and trademark infringement, and is also highly knowledgeable in all aspects of non-contentious IP issues, such as on the registration and enforcement of trademarks, tech transfer contract and the protection of trade secrets. The practice is led by Mark Fraser and Nguyen Van Vien in Ho Chi Minh City, both of whom are IP experts with extensive experience advising a range global clients in sectors such as education, food and beverage, banking, retail, tech and consumer products.

Praxisleiter:

Mark Fraser; Nguyen Van Vien


Kernmandanten

BOOKAWAY LTD


Rouse Legal

Rouse Legal acts for a broad range of multinational corporates and is particularly sought after by global tech clients. With expertise across all aspects of IP law, the group is especially experienced in matters involving trademark and patent prosecution, civil and criminal investigation and commercial advice. The team has sector-specific knowledge in industries such as tech, chemical, consumer, energy, life sciences, manufacturing, media and telecoms. The practice is overseen by Chris Vale in Hong Kong who has broad experience with both contentious and non-contentious IP issues, and Yen Vu, split between Ho Chi Minh City and Hanoi, who is well-versed in the enforcement, protection and commercialisation of trademarks, patents, copyright and domain names. Other key figures in the team include IP agents Khanh Nguyen in Ho Chi Minh City, and Tue Do and Dung Vu in Hanoi.

Praxisleiter:

Chris Vale; Yen Vu


Weitere Kernanwälte:

Khanh Nguyen; Tue Do; Dung Vu


Kernmandanten

Apicoo Robotic Co., Ltd.


Hermes Sellier (Société Par Actions Simplifiée)


Jvckenwood Corporation


On Clouds GMBH


Hangzhou Hikvision Digital Technology Co., Ltd.


E Ink Corporation


Koninklijke Philips N.V.


Google LLC


Caleres, INC.


Highlight-Mandate


  • Assisted a client in recording the 4-step assignment of their trademark, overcoming IP Vietnam’s initial refusal by arguing the unlikelihood of confusion due to the Assignor’s non-use of its trade name in Vietnam and the parent-subsidiary relationship between the Assignor and Assignee.
  • Successfully opposed the national application for BB-Tenofovir 25 by a Vietnamese pharmaceutical company, arguing it lacked distinctiveness due to its generic elements, and convinced IP Vietnam to issue a provisional refusal and ultimately reject the mark.
  • Successfully obtained registration for 2 trademarks in Class 25 by challenging IP Vietnam’s initial refusal based on the argument that the marks incorporated with our client’s classic design, resulting in the granting of protection and setting a precedent for future trademark applications involving product images combined with distinctive elements.

S&O IP

S&O IP has a ‘highly responsive’ group of IP lawyers, showcasing expertise in trademarks, patents, industrial designs, copyright, trade secret, unfair competition and contractual IP. With a diverse repertoire of clients ranging from local start-ups to global brands, the group assists companies at every stage of the protection of IP rights, from prosecution and enforcement, to negotiating and drafting contracts. Key members of the team include IP agent Hau Nguyen in Ho Chi Minh City, who focuses on the prosecution and enforcement of IP rights, and Bangkok-based trademark specialist Daniel Greif. Also in Ho Chi Minh City, Yen Pham, who has extensive expertise in both trademark and patent issues, and is particularly sought after for her expertise in opposing cancellation, appeal proceedings and strategic IP portfolio management, is another key contact.

Praxisleiter:

Hau Nguyen; Daniel Greif; Yen Pham


Referenzen

‘The team is highly responsive and gives very practical and thorough advice.’

Kernmandanten

Cainiao Smart Logistics Holding Limited


Coach IP Holdings LLC


Chapter 4 Inc.


Totalenergies


Formula One Licensing B.V.


The Procter & Gamble Company


Coty Inc.


Highlight-Mandate


  • Assisted Coach IP Holding LLC in enforcement programs and anti-counterfeiting in Vietnam, conducting a lot of enforcement of actions including market research, C&D letters, authorities training, raids to show the fall of the counterfeit visibility in Vietnam market.
  • Representing Coty Inc in a criminal trial regarding a high-profile seizure, in which the Police seized over 300 counterfeit perfumes of our client among other brands.
  • Assisted Totalenergies in opposing several hyper-formative marks applied in Vietnam by a local oil and gas company.