Q&A: Counterfeit issue in Vietnam

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.