On September 30, 2024, Vietnam’s Ministry of Science and Technology (MOST) issued Circular No. 06/2024/TT-BKHCN (“Circular 06”), amending and supplementing certain articles of Circular No. 11/2015/TT-BKHCN dated 26 June 2015. These two circulars are the primary guidance on Decree No. 99/2013/ND-CP and Decree No. 46/2024/ND-CP on administrative sanctions in industrial property. Circular 06, which will come into force on November 15, 2024, will improve the alignment between the recently amended IP Law and its subordinate legal instruments. Some of the notable amendments of Circular 06 are set out below. Clarification of Additional Sanctions: Circular 06 clarifies the application of the additional sanction of “full or partial suspension of production, trading, or service activities for 1 to 3 months”, which was recently amended in Decree No. 46/2024/ND-CP. It specifies that only activities directly related to the violating goods or services will be partially suspended. Preventive Measures for Domain Name Disputes: Circular 06 specifies the required documents for brand owners to request the preventive security measure of placing a temporary hold on the registration of domain names during enforcement action against cybersquatters. The introduction of this regime under Circular 06 is expected to enhance cooperation between the Vietnam Internet Network Information Center, domain name registrars, and enforcement authorities to place the temporary hold on infringing domain names. Unfair Competition Relating to Domain Names: Circular 06 outlines specific requirements to prove unfair competition involving the possession and use of Vietnamese domain names that are identical or confusingly similar to another person’s registered trademark, trade name, or geographical indication. However, the regime established by Circular 06 does not fully align with the Uniform Domain Name Dispute Resolution Policy (UDRP) mechanism, a standard procedure for the settlement of domain name disputes that Vietnam is obligated to adhere to under the Comprehensive and Progressive Agreement

Tilleke & Gibbins has contributed the Thailand chapter to Franchise 2025 from the International Comparative Legal Guides (ICLG) series published by Global Legal Group. This comprehensive guide provides detailed analysis of franchise laws and regulations across multiple jurisdictions worldwide. Each chapter of the guide follows a Q&A format, organized into key sections covering critical aspects of franchise law and operations, including: Relevant legislation and rules governing franchise transactions Business organization options for franchised operations Competition law considerations Protection of intellectual property and brands Liability issues and risk mitigation Governing law and dispute resolution Real estate matters Online trading regulations Termination requirements Joint employer risks and vicarious liability Currency controls and taxation Commercial agency considerations Good faith obligations and fair dealing requirements Ongoing relationship management Franchise renewal processes Franchise migration procedures Electronic signatures and document retention The Thailand chapter, authored by Alan Adcock and Kasama Sriwatanakul, examines these topics in detail, with particular attention to recent developments like the Trade Competition Commission’s Franchising Guidelines which introduced new disclosure requirements and protections for franchisees. The complete Thailand chapter is available as a PDF below. The Thailand chapter—and the full Franchise 2025 guide—are also freely available on the ICLG website.

Thailand’s Central Intellectual Property and International Trade (IP&IT) Court has delivered a favorable ruling for Sumitomo Rubber Industries, Ltd., a major player in the tire manufacturing industry, regarding the registration of its motorcycle tire design patent. In this case, Tilleke & Gibbins represented Sumitomo in successfully advocating for recognition of the unique design elements in the company’s motorcycle tire products. Case Overview The case revolved around Sumitomo’s two design patent applications for motorcycle tire designs, which were initially rejected by the Department of Intellectual Property (DIP) on the grounds that they were similar to prior art. Based on an examination of the design elements, primarily focusing on the tire tread patterns, the DIP’s Patent Board had concluded that Sumitomo’s designs were not sufficiently unique to warrant patent protection, as the tread patterns of the new designs were deemed too similar to one found in prior art for tire products. In response, Tilleke & Gibbins filed a complaint with the IP&IT Court on behalf of Sumitomo, seeking a revocation of the Patent Board’s decision and requesting that the court compel the DIP, as the defendant, to proceed with the registration of Sumitomo’s design patents. The complaint emphasized that the designs were novel and distinct, warranting patent protection under Thai law. Legal Strategy The firm’s legal argument focused on the interpretation of Thai patent law, particularly regarding the protection of a product’s external appearance, and emphasized that the determination of a design’s novelty must consider the product’s overall appearance rather than isolating individual features. This approach is consistent with international guidelines on design patents, which require the evaluation of novelty and distinctiveness based on how an informed user would perceive the design as a whole. While Sumitomo’s tire tread patterns may share some superficial similarities to existing designs, the overall impression

The annual statistics issued by the Intellectual Property Office of Vietnam (“IP Office”) in recent years show an increase in the number of IP transactions and applications to establish IP rights, including requests for the recordal of assignment of IP rights. Nevertheless, the numbers of trademark assignment recordals approved by the IP Office has not followed this trend, falling from 1,281 requests approved in 2022 to 1,120 requests approved in 2023. This decrease may be due to the IP Office’s overly strict viewpoint in approving trademark assignments, including its rejection of assignment recordal on the ground of conflict with the assignor’s trade name. IP Office’s practice on assignment recordal Vietnam’s IP Law restricts the assignment of trademarks in several cases, as set out in Article 139.4 that “the assignment of the rights to marks must not cause confusion as to properties or origins of goods or services bearing such marks.” Thus, when an assigned mark is identical to the dominant element of the assignor’s company name, the IP Office will view that the assignee’s use of the mark will result in confusion with the assignor’s trade name, and then instantly reject the assignment request. In this case, the IP Office will only accept the assignment if the IP holder can submit documents issued by relevant authorities proving at least one of the following conditions: The assignor has assigned all business premises and operations under its name to the assignee; The assignor has removed business lines relating to the goods/services bearing the trademarks and such removal is recorded in the Enterprise Registration Certificate; The assignor has been dissolved or does not exist after signing the agreement; The assignor has changed its name after signing the agreement so that it does not contain any element identical or similar to the assigned