Attorneys from Tilleke & Gibbins’ office in Hanoi have written the Vietnam chapter for Getting the Deal Through – Licensing 2021, a comparative guide to licensing law and practice in 18 countries around the world. Licensing 2021 provides an overview of a wide range of licensing relationships, including licensing of copyrights, trademarks, and patents; software licenses; technology transfer agreements; and franchise agreements. The book also addresses issues of royalties and other payments, taxes, competition law, and termination of licensing relationships. The Vietnam chapter was authored by Linh Thi Mai Nguyen, Son Thai Hoang, and Chi Lan Dang of Tilleke & Gibbins’ trademark team, along with corporate and commercial attorney Tu Ngoc Trinh, who has extensive experience in franchising and competition law. The Vietnam chapter is available below as a PDF. Tilleke & Gibbins also contributed the Thailand chapter to Licensing 2021. To browse all 18 jurisdictions covered by the guide, please visit the Getting the Deal Through website.

On March 1, 2021, the renewal process for qualifying trademarks in Thailand got significantly faster, with the examination of applications and grant of a certificate of renewal now able to be completed within 45 minutes of a renewal application being filed. The expedited process incurs no additional official fee. To benefit from this, applications must comply with all of the fast-track conditions specified in the recent notification from the Department of Intellectual Property (DIP): The total number of goods or services must not exceed 30 items. No changes may have been made to the particulars of the registration. The application must be filed at the DIP by either the owner or an appointed attorney. In the latter case, the power of attorney must authorize the attorney to collect the certificate on the owner’s behalf. Fast-track examination must be requested when the renewal application is submitted. Tilleke & Gibbins has already submitted a test case with the DIP and can confirm that, when the above conditions are met, the DIP can complete and issue a certificate of renewal within 45 minutes of submitting the renewal application. This is a very positive step for the DIP which continues to become increasingly brand-owner friendly and business-oriented. It will also enable smoother and more seamless trademark-related transactions, such as trademark assignments and recordals of change of name or address, which can be complicated when attempted while a renewal is pending. For more details on this development, or on any aspect of securing intellectual property rights in Thailand, please contact Tilleke & Gibbins at [email protected].

E-commerce platforms have become some of the most significant marketplaces in Thailand, with millions of daily business transactions and huge numbers of online users. The increasing number of online shops operating on e-commerce platforms requires new techniques to be employed in online IP rights infringement cases. Both the private sector and the government have developed tools to enhance online IP enforcement, including ones using the latest legal technologies and artificial intelligence (AI). Many legal technologies and AI operations are still nascent and typically do not yet offer the best approach for online IP rights enforcement. For example, AI and other technologies available today are still unable to consistently differentiate between original and counterfeit products from the images and information displayed on the e-commerce platforms and the internet. Therefore, some of the most effective measures for online IP enforcement still involve manual online searches by experienced local investigators with deep understanding of the behaviors of local users (both sellers and buyers) and the ability to link relevant information across online platforms. Thailand’s Department of Intellectual Property (DIP), as the governmental office responsible for IP-related matters in Thailand, has initiated its new Memorandum of Understanding on the Protection of Intellectual Property Rights on the Internet. This memorandum of understanding (MOU) does not create additional rights for IP owners, but acts as a mechanism to gather all the relevant stakeholders to address issues related to online IP infringement in a unified, mutually agreeable manner. The signatories of the MOU fall into four categories: Governmental authorities: DIP, Department of Business Development, and Department of International Trade Promotion; E-commerce platform operators: Lazada, Shopee, and JD Central (the most popular e-commerce platforms in Thailand); IP rights holders: Particularly including trademark owners facing ongoing counterfeiting problems in Thailand; and Law firms. Although the MOU is not

Vietnam has become a big player in the global fashion industry. Garments made in Vietnam now appear all over the world, especially in the U.S. and the EU. In this value chain, however, Vietnamese companies usually play the role of garment processors, fulfilling the orders of big brands for immediate export purposes. While the goods bearing the registered marks are made in Vietnam by local companies, the brand owners are often overseas or global corporations. As a brand owner can lose protection of its mark in Vietnam due to non-use, this situation leads to the question of what constitutes “use” of a mark when the mark-bearing goods are processed for export only, and not sold in the Vietnam market. Article 124.5 of Vietnam’s IP Law provides that: Use of a mark means the performance of the following acts: Affixing the protected mark on goods, packaging, business facilities, means of service provision, or transaction documents in business activities; Circulating, offering, advertising, or stocking for sale goods bearing the protected mark; Importing goods or services bearing the protected mark. At first glance, the above provision seems quite clear. While importing goods appears on the list, exporting goods is conspicuously absent, and therefore it is not an act of use. However, it is also clear that for the purpose of exporting, a product should go through a manufacturing or processing stage in which the mark will be physically affixed to the product or its packaging. For fashion goods, this could be in the form of a removable tag or package, a tag sewn onto the item, or a fundamental part of the garment’s design (such as a T-shirt emblazoned with a brand name, or a shoe featuring a distinctive logo). Then, the question becomes whether this act of affixing the mark on