You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

December 24, 2014

Vietnam IP Enforcement Roundup 2014

Subscribe to Updates
Managing Intellectual Property

The year 2014 saw several groundbreaking cases in IP enforcement in Vietnam. As negotiations ramp up in talks for the EU-Vietnam FTA and TPP, Vietnam has sent several strong signals to investors that it is taking steps to ensure better protection of IP rights. Notable cases in the last year included:

  • A clear-cut victory for a major European research-based pharmaceutical company in an administrative patent infringement action heard by the Ministry of Science and Technology (MOST) Inspectorate. In this case, the infringing pharmaceutical distributor was fined and also ordered to cease infringement of a patent for a cancer-fighting medicine. The precedent-setting aspect of this case was that the product was brought into Vietnam under a special import quota (SIQ), which allows pharmaceuticals that have not yet been granted a marketing authorization to be imported under special conditions. Of note was the fact that the state-owned pharmaceutical entity that imported the product (a separate entity from the distributor) was issued a formal warning by the authorities. This is a significant victory given that the authorities often hesitate to take formal action versus state-owned companies. With this decision, the plaintiff may now file a civil suit and seek compensation with a very strong basis, or demand further settlement payment.

  • The Vietnam Intellectual Property Research Institute (VIPRI), an expert IP assessment agency that is empowered to render non-binding opinions on infringement, issued several opinions affirming the patent rights of research-based pharmaceutical companies. These included a decision concluding infringement in regard to diabetes and cancer-fighting products. The remarkable aspect of one of these opinions was that VIPRI rendered the opinion based on the published ingredients of the product, even though the infringing products had not yet physically entered the Vietnam market, but had registered for a marketing authorization. The VIPRI opinion could then been supplemented into customs recordal filings, to further affirm the authority of customs to seize an infringing product that might arrive at the border.
  • Pioneering civil patent litigation cases are now also being handled in the courts. In particular, major agroscience companies from Europe have filed civil cases to seek damages from local pesticide companies that have ignored valid patents in Vietnam. VIPRI has issued opinions in favor of the European companies.
  • Foreign patent holders are now having to defend against invalidation actions filed by local Vietnamese companies that are being sued for patent infringement in the chemical sector. These invalidation actions have underscored the importance for foreign patent filers to place greater importance on patent translation accuracy.
  • A major US pharmaceutical company successfully took action at the MOST Inspectorate against a local vitamin producer that was producing a similar product but had just changed one letter of the US company’s trademark. In an extremely quickly issued decision, the MOST Inspectorate ruled that the local company had clearly committed trademark infringement and imposed a fine, and ordered a raid, which resulted in the destruction of the infringing products. Notably, the rights holder then successfully petitioned the Vietnamese drug authorities to cancel the marketing authorization of the infringing product based on the decision of the MOST Inspectorate.
  • A US-headquartered printer cartridge manufacturer filed an administrative action for trademark infringement against a former local distributor in Ho Chi Minh City that had moved on to producing counterfeit products. The action resulted in a raid and seizure/destruction of the infringing goods, and a fine was imposed. The remarkable aspect of this case was that the rights holder then filed a civil action to seek damages in civil court. In addition to awarding damages, the court also granted the largest award of attorney’s fees in the history of Vietnam.
  • On behalf of a major French cement company whose domain name had been appropriated in Vietnam, the Danang People’s Court heard a civil action to seek recovery of the domain name as the registration constituted an IP infringement. After several attempts to summons the defendant, who had left Vietnam, the court opened an ex parte hearing, and awarded the disputed registration to the rightful owner from France.
  • In an action related to a .vn domain name that included the name of a US consumer goods retailer, the MOST Inspectorate ruled that the unauthorized domain name registrant had committed an IP infringement. The MOST Inspectorate’s decision was then enforced in a groundbreaking ruling by the Ministry of Information and Communications, who ordered the domain name registry VNNIC to enforce the decision and cancel the infringing domain name. Previously, such decisions could not be enforced at the domain name registry.
  • Major US-based franchises filed administrative actions with the MOST Inspectorate to successfully force terminated franchisees in the fitness and real estate sectors to discontinue the use of the protected trademarks and IP rights of the franchisor.

These developments are strong evidence that Vietnam’s IPR enforcement system is becoming more and more effective. Further developments are expected next year with forthcoming rulings on patent and patent invalidation cases, as well as further changes to administrative enforcement that will be set forth in a new circular.

Tilleke & Gibbins acted for the rights holders in the cases mentioned above.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

July 13, 2026
When Decree No. 186/2026/ND-CP (Decree 186) takes effect on July 15, 2026, it will introduce the most significant reform of Vietnam’s administrative IP enforcement framework since Decree 99/2013/ND-CP was issued in 2013. These changes are expected to make administrative enforcement faster, more accessible, and better suited to the realities of modern IP disputes. Below are the principal reforms and their practical implications for rights holders and enforcement practitioners. The End of Notarization and Consular Legalization Among the most welcome procedural changes is the abolition of the notarization and consular legalization requirement for powers of attorney (POA) submitted in administrative enforcement proceedings. Under the previous regime, foreign rights holders were generally required to execute a POA, then have it notarized and consular legalized (if seeking customs recordal). In practice, this process frequently delayed enforcement by four to eight weeks, often long enough for infringing goods to disappear before authorities could intervene. Decree 186 removes this bottleneck, now requiring only an original or certified copy of the POA. If the document is in a foreign language, a Vietnamese translation is sufficient, provided it is certified by a competent authority or confirmed by the authorized Vietnamese IP representative. Consular legalization and notarization are no longer required. For rights holders, the practical impact is substantial. Administrative enforcement files that previously took weeks to prepare can now be completed in a matter of days, allowing much faster responses in time-sensitive matters such as warehouse raids, border interventions, and trade-fair enforcement. The decree also introduces a useful administrative simplification. Where an original POA has already been submitted to the same enforcement authority and remains valid, applicants may rely on a copy of that earlier submission by identifying the previous case file. This eliminates unnecessary duplication for rights holders pursuing multiple enforcement actions before the same
Read More
July 9, 2026
Recycling, upcycling, and refill-packaging models are now widely promoted as ways to reduce waste, lower carbon emissions, and respond to consumer demand for sustainable products. However, complications arise when these environmentally driven trends intersect with intellectual property law—particularly where reused or altered packaging continues to display third parties’ registered trademarks. Adding to this complexity, Thailand’s draft Sustainable Packaging Management Act aims to introduce new environmental compliance obligations that businesses must navigate alongside existing trademark concerns. Recycling and upcycling packaging may infringe trademark rights, especially in cases not protected by the first-sale doctrine—the principle that a trademark owner’s rights over a particular mark-bearing product end once the owner first sells it. Furthermore, even refill packaging carries legal risk due to specific statutory prohibitions under Thai law. Compounding these challenges, the draft Sustainable Packaging Management Act will impose extended producer responsibility (EPR) obligations on manufacturers and brand owners, requiring them to manage packaging throughout its lifecycle. These overlapping legal frameworks could deter manufacturers from pursuing ESG-aligned business models unless businesses understand how to navigate both trademark and environmental requirements. Under Thai law, this issue remains uncertain because the Trademark Act does not expressly codify the first sale doctrine, also known as the exhaustion of trademark rights. Generally, this doctrine provides that once a trademark owner has lawfully sold goods bearing its trademark, the owner’s right to control further resale of those particular goods is exhausted. The rationale is that the owner has already received commercial benefit from the first authorized sale; therefore, the purchaser should be free to resell or otherwise dispose of the goods. Although the doctrine is not expressly codified in the Trademark Act, Thai courts have recognized it in relation to genuine goods and parallel imports, as seen in a Supreme Court Judgment No. 2817/2543 in which the
Read More
July 6, 2026
Indonesia’s regulation on reporting online intellectual property (IP) infringement provides comprehensive procedural guidance for IP rights holders and their licensees in reporting online infringement complaints. Issued in December 2025 by the Ministry of Law as Regulation No. 47 of 2025 regarding Handling of Intellectual Property Infringement Reports in Electronic Systems, this regulation covers all types of IP rights. It also specifies documentation when reporting infringement, and lays out the procedures for examination, verification, and enforcement actions. Submission of Complaints Complainants may submit reports through the online system of the Directorate General of Intellectual Property (DGIP) or in person at the DGIP office. Complaints may also be filed through an authorized proxy. Under the regulation, complainants are required to provide the following information and documents: Personal details of the complainant; Brief description of the protected work or subject matter (i.e., type of IP and name or address of the infringing website, portal, account, or application, or a link to the location of the infringing content); Complete description of the alleged infringement; Certificate of registration or recordal of the relevant IP; Recordal of IP license agreement, if any; and Other supporting evidence. Verification and Examination Process Upon receiving a complaint, the responsible formality officer may request clarification or additional supporting documents. In the latter case, the complainant must then submit the necessary administrative documents within 14 days of the notification date. Once the documentation is deemed complete and sufficient, the case will be formally registered. Subsequently, the DGIP will establish a verification team to handle online IP violations, which will include the Civil Servant Investigator (PPNS), the Ministry of Communication and Digital Affairs, experts with relevant expertise in IP, and representatives from related associations such as AVISI (Indonesian Video Streaming Association). After examining the report, the team will prepare the Minutes
Read More
June 30, 2026
Customs recordation is an enforcement mechanism in Myanmar that enables intellectual property (IP) rights holders to seek prevention of the cross-border movement of infringing goods. The enactment of Myanmar’s IP laws in 2019 has enabled customs recordation for registered marks and copyrights under the Trademark Law 2019 and the Copyright Law 2019. By contrast, the Patent Law 2019 and the Industrial Design Law 2019 do not provide a practical framework for customs recordation, and accordingly such rights are not subject to the customs recordation regime. Under the Trademark Law 2019, rights holders may apply for customs recordation and may also ask the Customs Department to suspend the release of goods suspected of bearing counterfeit marks. Likewise, the Copyright Law 2019 allows for customs intervention in relation to pirated works. These provisions reflect Myanmar’s gradual alignment with international standards on border measures, although the implementation framework remains at a relatively early stage of development. Customs Recordation Pursuant to the Trademark Law 2019 and the Copyright Law 2019, the relevant authorities have issued customs rules concerning the protection of registered marks and copyrights. In practice, the process generally begins with the submission of an application to the Customs Department together with supporting documentation. This typically includes proof of registration in Myanmar; details of the rights holder, applicant, and any authorized representative; and a comprehensive description of the genuine goods. Product identification materials—such as photographs, packaging samples, and distinguishing features—are particularly important in helping customs officers identify suspected infringing goods. A recordation remains valid for two years from the date of approval. It may be renewed for additional two-year terms, provided that the renewal application is filed within the thirty days prior to expiry for marks and up to thirty days in advance of the expiry date for copyrights, in accordance with
Read More