This process of handling trademark infringement in Vietnam includes the following steps:
1. Establishing the representative qualification and preparing all necessary documents
In order to establishing the representative qualification of S&B Law, the required document is Power of Attorney (POA) appointing S&B Law is a IP representative and the scope of POA must include “the right of enforcement and protect all IP rights in Vietnam”
The required documents for settling the infringement of trademark in Vietnam are:
– Notarized copies of Certificate of Trademark Registration (CTR) (03 sets); or
– Certified copies of NOIP of CTR (03 sets); or
– Notarized copies of License Agreement which has been registered at NOIP (if any);
– Three (03) samples of infringed products and three samples of alleged products if these products are not poison, inflammable, explosive; or
– Images or pictures of infringed products and alleged products (03 sets);
– Information of infringer (such as name, address…)
2. Examination
Examination is not compulsory, but the conclusion of the examination is one of the most important documents for settling the infringement and it is an evidence resource that authority office shall base on for settling the case.
Therefore, examination should be taken before officially settling the case.
The required documents for this work include:
– Application;
– Notarized copy of POA;
– The documents proving the right of the applicant (certified or notarized copies of CTR);
– The documents proving the infringement action of infringer (samples or pictures/images of samples)
Time for examination is about from 7 to 11 working days.
3. Settling the infringement action
Based on the conclusion of examination, officials could choose the following options
Option 1: Sending a cease and desist letter (C&D Letter).
Accordingly, SBLaw will send a C&D letter to the infringer and request them to take the following actions:
– Immediately ceasing the act of manufacturing, circulating goods/services bearing the infringing element; and
-Taking back all goods/services bearing the infringing elements that have been already circulated on market within a period prescribed by SBLaw or customer’s instruction;
– Signing an undertaking commits that will not infringe against IP rights of the customer in future;
– Apologizing Letter (If any);
-Other documents (if any);
If the infringer does not comply with the above mentioned request, the customer could apply the Option 2 as below.
Note: This option is not compulsory.
Option 2: Filing a petition requesting authority state bodies to settle the infringement action (administrative measure)
Accordingly, SBLaw will prepare all necessary documents and request authority office to punish the infringement action of infringer.
Depending on the location, complication of the case, the authority office should be chosen in accordance with the regulation of Decree No. 99/2013/ND-CP.
Necessary documents:
– A notarized copy of POA;
-Petition;
– The documents proving the right of the applicant (certified or notarized copies of CTR);
– The documents proving the infringement action of infringer (samples of alleged products or picture/images of alleged products/services);
– Conclusion of examination of VIPRI;
– Other documents;
Within ten working days counted from the date of receiving the petition, the authority office must check the legitimate of the petition and attached documents. When documents or evidence supplied by the requester are insufficient, the violation-handling agency shall request the requester to supplement documents and evidence or give explanations within 30 days after being requested.
Within 30 days after receiving the complete dossier which satisfies the requirements, the competent person shall notify the requester of the time of handling, procedures and measures and request cooperation and support of the industrial property rights holder in the inspection, examination, verification and handling of the violation.
