Attention-seeking entrepreneurs are often inspired by celebrities and recent events when seeking new brand names and slogans. Others take a different but similarly sensational approach, crafting marks loaded with double entendre with the hope of sneaking past the gatekeepers. While the idea of registering celebrity-driven or sensational marks may be beneficial for business, is it possible under Vietnam’s IP laws?

A frequent problem with first-to-file trademark systems is that bad-faith applicants may be able to file and obtain a registration prior to the legitimate owner seeking to file their own application. In such a case, the existing trademark registration enables the bad-faith trademark owner to use the mark in the country and produce and sell products there without being deemed a counterfeiter. This “legal fakes” situation bars the legitimate brand owner from commercializing their highly desired products in the country. However, a recent court decision in Thailand affirms that there is solution for this problem. The case involves a world-renowned American clothing company that decided to secure their brand in the Thai market, only to find that there were already several registrations of their mark by a single Thai applicant. Not only was the word the same, but the trademarks used identical fonts, colors, and designs. Not surprisingly, additional research revealed that the registrant had filed Thai trademark applications for various other globally recognized brands, indicating an ongoing record of bad-faith intent. The American brand owner was confident of being able to prove its case in court and decided to regain its trademark rights in the country by filing a cancellation petition with Thailand’s Intellectual Property and International Trade Court (IP&IT Court). The country’s Trademark Act allows legitimate owners to sue for cancellation of a trademark registration based on better right grounds, provided that the trademark has been registered for less than five years. The concept of better right grounds is a simple one, referring to the assertion that the genuine brand owner has a more legitimate right to use their own trademark than does the prior registrant. However, it was still challenging for the American clothing brand to prove that it had a more legitimate right in Thailand.

Parallel imports—branded goods imported into a domestic market and sold there without the consent of the intellectual property (IP) owner—pose a unique challenge for IP owners. In contrast to counterfeit goods, parallel imported goods are manufactured by or under the license of the IP owner and formulated or packaged for a particular jurisdiction and then imported into a different jurisdiction without the authorization of the IP owner. Intellectual property laws and perspectives on parallel import vary throughout Southeast Asia. The distinct legal landscape in each nation should be carefully navigated in consultation with legal experts to ensure brand protection to the fullest degree. This guide provides insight into the legal frameworks relating to parallel imports in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam. Each section examines the relevant laws and regulations that pertain to parallel imports and explores the remedies available to IP owners in each country. Finally, the guide presents some strategies to combat parallel importation and maximize IP protection in Southeast Asia. The full guide can be downloaded through the button below.   This guide was prepared with the assistance of Tilleke & Gibbins interns Christian Pederson and Keoni Williams.

Attorneys from Tilleke & Gibbins in Vietnam have written the Vietnam chapter of the newly released Fashion Law 2021, a guide to law surrounding the business of fashion in jurisdictions around the world. The guide covers 18 key jurisdictions for the global fashion industry, offering insights into local legal frameworks surrounding vital issues such as brand enforcement and protection, e-commerce and marketing, and sustainability considerations. The Vietnam chapter of Fashion Law 2021 provides detailed information on the following topics: Trademarks, designs, copyright, and other intellectual property types such as patents and trade secrets. Strategic local contractual arrangements for manufacturing, distributing, and advertising fashion products. Overview and application of online marketing regulations and consumer protection regulations in Vietnam. The most relevant unfair competition rules for fashion businesses, and local courts’ interpretation and enforcement of the rules. ESG (environmental, social, and governance) concerns and sustainability issues for the fashion industry. Customs monitoring and local import and export guards against counterfeit products. The full Vietnam chapter is available for free on the Global Legal Post website, or it can be downloaded as a PDF through the button below. Tilleke & Gibbins also contributed the Thailand chapter to the guide.