Experts from Tilleke & Gibbins’ intellectual property team have written the Vietnam chapter of Practical Law’s Intellectual Property Transactions Global Guide 2022, a high-level comparative overview of intellectual property laws and regulations across more than 30 jurisdictions. The Intellectual Property Transactions Global Guide focuses on business-related aspects of intellectual property, such as the value of intellectual assets in M&A transactions, and the licensing of IP portfolios. The topics covered include the following: IP assignment IP licensing Research and development collaborations IP audits IP aspects of M&A Lending and security interests Settlement agreements Employee and consultant agreements Key issues in IP transactions To read the Vietnam chapter, please visit the Practical Law website or click on the link below.

In early November 2022, a Thai appeals court overruled the Trademark Registrar’s decision and the Board of Trademarks’ ruling by upholding the registrability of an oil company’s trademark application for its branded service station layout. This is the latest word in a long-running dispute between ExxonMobil and the country’s Department of Intellectual Property (DIP), which had previously rejected the mark as indistinctive. ExxonMobil first filed applications in April 2015 for a trademark bearing a unique colorful drawing of the layout of a service station bearing its well-known registered “ESSO” mark in International Classes 4 and 35 in Thailand. However, the Thai Trademark Registrar refused to register the mark, arguing that the mark was devoid of inherent distinctiveness because the service station layout drawing is directly descriptive of the applied-for goods and services related to oil products. According to the Registrar, the public would not be able to distinguish between the goods and services bearing ExxonMobil’s mark and those bearing the marks of others. ExxonMobil appealed this refusal to the Board of Trademarks, which ultimately agreed that ExxonMobil’s marks are devoid of inherent distinctiveness. The Board explained that the dominant elements in the drawing consist of a common service station with fuel dispensers, which is directly related to the applied-for goods and services related to oil products. The Board also deemed that the submitted evidence was insufficient to prove that the mark had gained distinctiveness through use. ExxonMobil disagreed with these rulings and thus filed a civil complaint with the Intellectual Property and International Trade Court (IP&IT Court) to revoke the Registrar’s decisions and the Board’s rulings. The IP&IT Court examined the case and issued its judgment in favor of ExxonMobil, ruling that the marks are inherently distinctive. The Court noted that to consider a mark’s distinctiveness, it is crucial

In decisions dated 29 September 2022, the Lao Department of Intellectual Property (DIP) has cancelled two trademark registrations based on their confusing similarity to earlier marks. An official from the DIP unofficially confirmed that these decisions are the first of their kind in Laos and, as such, constitute a positive step that puts legal provisions into actual practice. Background In Laos, cancellation proceedings against a registered mark are not common, as the number of applications in the country is relatively low and thorough substantive examination only began to be carried out in recent years. There was previously no precedent for how cancellation decisions would be handled, despite the Law on Intellectual Property (No. 38/NA of 15 November 2017) allowing a third party to file a petition for the cancellation of a registered mark if it can be proven that the mark should not be granted registration. The Law on Intellectual Property states that a third party may object to, or request the cancellation of, a trademark registration within five years of its date of publication in the Official Gazette. However, it is difficult to ascertain how to calculate the five-year period if the mark was registered before June 2019, as publication in the Official Gazette was first made available at that time. This could mean that the five-year statutory limitation for trademark cancellation in Laos could start from June 2024, but how this will be applied in practice remains to be seen. The Case This case began when Siam Kubota Corporation Co Ltd took action against two marks that looked similar to its own earlier marks (see Figure 1): Figure 1. Earlier registered marks Siam Kubota registered its marks in 2009 for goods in Class 12, and has extensively used and protected the marks in Laos. After reviewing its

Rules for franchising in Indonesia were first published in 1997 through a government regulation and a ministerial decree, which was subsequently amended several times. The franchising regulations currently in effect are Government Regulation No. 42 of 2007 concerning Franchises and Regulation issued by the Minister of Trade No. 71 of 2019 concerning the Implementation of Franchising (MOT No. 71 of 2019). Franchises in Indonesia must meet certain criteria that distinguish them from other types of businesses, and franchising must be based on a franchise agreement governed by Indonesian law. Prior to entering into a franchise agreement, a franchisor must provide a prospectus (disclosure document) to the prospective franchisee at least two weeks before the execution of the franchise agreement so that the prospective franchisee has sufficient time to review the reputation and goodwill of the franchisor through the prospectus. The prospectus must contain various details about the franchise business, its management, its operations, and other relevant aspects. Both local and foreign franchisors must obtain a franchise registration certificate—referred to as an STPW—from the Ministry of Trade before offering their franchises to prospective franchisees. The franchisee is also required to obtain an STPW. The STPW for the franchisor is the proof of prospectus registration, while the STPW for the franchisee is the proof of registration of the franchise agreement. Franchisors and franchisees who have STPWs are required to submit reports on franchise business activities to the Ministry of Trade’s director of business development and distribution by the end of June each year. Up to three written warnings will be served on a franchisor or franchisee who does not comply with the registration requirements. A fine of up to IDR 100 million (approx. USD 6,400) will be imposed if the franchisor or franchisee fails to respond to the warnings. MOT No.