Managing Intellectual Property magazine has selected Tilleke & Gibbins’ precedent-setting victory for Videojet Technologies Inc. as its Case of the Year for Southeast Asia for 2014.
The award recognized the firm’s work for the U.S.-based ink and printer manufacturer in a dispute with a former distributor in Vietnam who had continued to use Videojet’s trademarks after its distribution contract had been terminated, and had then begun selling counterfeit products. The Tilleke & Gibbins team handling the matter, led by Loc Xuan Le and Linh Duy Mai, pursued an innovative strategy involving administrative actions (a series of raids in Hanoi and Ho Chi Minh City) to stop the infringement as soon as possible, followed by a civil action to recover damages.
At the trial on August 28, the Ho Chi Minh City Court awarded the full amount of damages that Videojet sought, and an additional USD 10,000 in attorney’s fees, which is believed to be a highest award ever given in Vietnam. In addition to the record award, the case showed that a civil action can follow administrative actions, and IP holders in Vietnam are not limited to pursuing a single avenue of recourse.
The award was presented at the Business of IP Asia Forum in Hong Kong on December 4.