Question: Our company is seeking for the assistance in order to settle the infringement action against their intellectual property right in Vietnam, please provide us SBLAW’s legal service in this field?

Answen: Regarding this matter, SBLAW would like to confirm that we could assist your company in settling the infringement actions before the authority state bodies in Vietnam.

I. The schedule of the work as following table:

1 Preparing and filing the application to the authority state body

2 Performing the inspection

3 Issuing the decision on sanction of the violation (in case the authority state body

found the infringement products)

II. The required documents

In order to settle the infringement, you are required to provide us the following documents:

– The power of attorney in the form of SBLAW (notarization and legalization is required);

– The certified and legalized copies of Certificate of trademark registration (in case this document has been certificated in Vietnam or by Vietnamese consulate Department in foreign country, the legalization is not required);

– Original version or certified copies of Conclusion of Examination (in case this document has been certificated in Vietnam or by Vietnamese consulate Department in foreign country, the legalization is not required);

– The information of the alleged parties (such as name, address);

– Sample bearing the infringement element bought from the alleged address;

– Bill of the alleged parties;

Question: We might file a lawsuit re: the counterfeit product found in Vietnam. We manufactured ion exchange resins and export to the world. Recently, we found a Vietnam company sold counterfeit resins. This is why we would file a lawsuit in Vietnam. Before we go more further, our counsel would like to know about:

1) any of you or your law firm have the experiences about counterfeit issue

2) what is your plan and strategy to deal with our counterfeit issue

3) estimated fee 

Answen: SBLAW would like to advise you as follows:

A. SCOPE OF WORKS

As per your information, we understood that your company would like to take the legal action against the counterfeit issue of a Vietnamese party in Vietnam.

At your enquiry, we would like to advise you as follows:

1.      Our experience about the counterfeit issue

As one of the leading law firm in the field of Intellectual Property in Vietnam, we provide full range of IP services in Vietnam including settling the infringement action and counterfeit issue.

We are representative of the following company/corporation in settling the infringement/counterfeit action:

–         ABB ASEA BROWN BOVERI LTD;

–         SKY CAPITAL LTD;

–         BOMANITE SE ASIA PTE LTD

2.      Our plan and strategy for due with your case

In our experience, with an infringement/counterfeit action, there are the following steps for resolving this issue:

i.     Investigating and collecting the evidence;

ii.     Requesting the examination;

iii.     Choosing the measures for settling the case.

In the first step, we will try to locate the alleged infringer as well as the location of the factory/warehouse/head office/representative office of the alleged person/organization.

We also collect the evidence proving the illegal action of the alleged person/organization such as purchasing the alleged products, taking the photograph of the alleged products.

In the second step, based on the result of the first step, we will request Vietnam Intellectual Property Research Institute (VIPRI) to examine and conclude whether the alleged products could be considered as the infringement/counterfeit products or not?

In the third step, based on the result of examination and investigation, we will advise you on the best measure for settling the case. In practice, you could choose the following options for settling a counterfeit case:

– Sending a warning letter: Accordingly we will draft and send the warning letter to the infringer. We only take this action if the action of the infringer is not conscious and serious.

– Requesting the participation of the authority state bodies: Accordingly we will the authority state bodies to handle and settle the case.

– Bringing the case before court: Accordingly we will file a lawsuit to the civil court and request them to judge the case.  This is the best option to ask for compensation caused by the counterfeit.

B. Estimated fee

Our fee for taking the aforementioned actions will be calculated as the following table:

Note: The aforementioned fees are exclusive 5-10% VAT of our agency fee and other disbursement.

Since you do not provide us the detail information of your case, we could not give you the exact fee for your consideration. In order to have the such fee, please provide with us the following information:

–  The evidence proving your right such as the certificate of trademark registration, the patent of invention and/or the patent of industrial design;

– The preliminary information of the counterfeit products such as the name/address of the infringer, pictures/images of the alleged products, the package of the alleged products;

– The relationship between your company and the alleged person/organization in Vietnam (If any);

After receiving the above mentioned information, we will give you our detail advice and fixed quotation for your kind reference.

Question: We registered a trademark in Vietnam and would like to know how to provide Evidence for proving the use of your protected trademark in Vietnam?

Answen: Regarding to the evidence for proving the use of your protected trademark in Vietnam, we would like to advise you as below:

In related to the advertisement and locating the office: the practice of settling the request for terminating the certificate of trademark registration based on the ground of 5 consecutive years before the filing date of the request shows that National Office of Intellectual Property (NOIP) will only accept these evidence if these one could prove the actual business activity for legally providing goods/services bearing the protected trademark to the customer.

It means that the advertisement and/or establishing an office must be enclose with the evidence proving the provision of goods/services bearing the trademark to the customer and this action must be legally according to Vietnamese Law

In case you could provide the advertisement, location of your office without the evidence proving the legal provision of goods/services to the customer, NOIP will refuse your evidence and issue the decision on termination of your certificate of trademark registration.

However, according to Law on Intellectual Property, in case your company or the licensee of your company uses the protected trademark within three years before the filing date of the request of termination, your trademark will be not terminated.

For the foregoing, you should take the following options for ensuring your right:

Option 1. Re-filing the trademark application as soon as possible. This option will give you the priority right that could prevent all identical or similar trademark applications having the filing date after your one; and/or

Option 2. Establishing the legitimate business for providing the goods/services to the customer.

In order to carry out this option, your company should simultaneously take the following actions:

i. Signing a franchise/trademark license agreement with a Vietnamese partner and registering this agreement with the authority state body;

ii. Getting the certificate of business registration by your partner in which the name of company must include the word in the trademark.

iii. Operating a restaurant using the trademark and providing the service according to the certificate of trademark registrationfor customer (This step could arise the huge expense for your company).

For your convenience, we are opinion is that you should carry out the search on the trademark database of NOIP in order to verify whether there are any identical/similar trademark application filed to NOIP or not?

– If there are not any trademark applications filed at NOIP, the option 1 is the best option for your company;

– If there is the similar/identical trademark application filed at NOIP and there are not any requests for terminating your trademark filed at NOIP, you are required to take option 2;

Our fee for taking the above mentioned option will be calculated as below:

– Fee for conducting search: US$100.00 per 01 trademark with 01 class of goods/services;

– Fee for checking the request for terminating your trademark at NOIP: US$300.00.

Note: The above mentioned fees are exclusive 5% VAT.

Answen: We are foreign company and have recently discovered that a few companies might have infringed its trademark rights and wishes to conduct searches on the companies to retrieve details of the companies and whether the companies are related.

We may wish to take action against the companies if the search results are supportive.

The information the client wishes to know are as follows:

1. Incorporation details, including the name (in Vietnamese and its English translation) and registered address, date of incorporation, names of directors and shareholders, company secretaries, representative lawyers, etc.

2. Information about any change of details above in the past and any information about the current status of the companies.

3. Information about whether the companies are associated or related to each other.

4. Information about trademark applications/registrations of the companies.

Since the above information will likely be used as support of possible infringement actions, documentary proof of the above should be necessary.

Please kindly confirm that you may conduct such searches. If yes, please quote to us the costs (including the official fees, your service fees and related disbursements) and the time required for obtaining the search results.

Question: Thank you for your email concerning the aforementioned subject matter. At your enquiry, we would like to advise you as below:

Regarding your enquiry, we would like to confirm that we could conduct the investigation for searching the following information:

1.     Incorporation details, including the name (in Vietnamese and its English translation) and registered address, date of incorporation, names of directors, etc.

2.     Information about any change of details above in the past of three years and any information about the current status of the companies.

3.     Information about whether the companies are associated or related to each other.

4.  Information about trademark applications/registrations of the companies.

The aforementioned information shall be collected by our own end without any verification from Vietnam Authority.

Our fee for taking the investigation in order to figure out the said information is US$900.00. This fee is exclusive 10% VAT and translation fee of documents: $US6/100 words.

Please consider the foregoing and let us have your further instruction in the matter. Should you have any further questions, kindly revert to us. We look forward to hearing from you soon.

We look forward to hearing from you soon.