Attention-seeking entrepreneurs are often inspired by celebrities and recent events when seeking new brand names and slogans. Others take a different but similarly sensational approach, crafting marks loaded with double entendre with the hope of sneaking past the gatekeepers. While the idea of registering celebrity-driven or sensational marks may be beneficial for business, is it possible under Vietnam’s IP laws?

A frequent problem with first-to-file trademark systems is that bad-faith applicants may be able to file and obtain a registration prior to the legitimate owner seeking to file their own application. In such a case, the existing trademark registration enables the bad-faith trademark owner to use the mark in the country and produce and sell products there without being deemed a counterfeiter. This “legal fakes” situation bars the legitimate brand owner from commercializing their highly desired products in the country. However, a recent court decision in Thailand affirms that there is solution for this problem. The case involves a world-renowned American clothing company that decided to secure their brand in the Thai market, only to find that there were already several registrations of their mark by a single Thai applicant. Not only was the word the same, but the trademarks used identical fonts, colors, and designs. Not surprisingly, additional research revealed that the registrant had filed Thai trademark applications for various other globally recognized brands, indicating an ongoing record of bad-faith intent. The American brand owner was confident of being able to prove its case in court and decided to regain its trademark rights in the country by filing a cancellation petition with Thailand’s Intellectual Property and International Trade Court (IP&IT Court). The country’s Trademark Act allows legitimate owners to sue for cancellation of a trademark registration based on better right grounds, provided that the trademark has been registered for less than five years. The concept of better right grounds is a simple one, referring to the assertion that the genuine brand owner has a more legitimate right to use their own trademark than does the prior registrant. However, it was still challenging for the American clothing brand to prove that it had a more legitimate right in Thailand. While the brand

The new notification allows BOI promoted companies in the TISO and IBC categories to conduct lending activities with affiliated companies in the same group, subject to certain conditions and requirements.

A new royal decree in Thailand (Royal Decree Re: Licensee to Pay the License Renewal Fee in Lieu of a Grace Period When Submitting a License Renewal Application B.E. 2564) does away with the current red tape associated with renewing certain marketing authorization and business licenses. Under the new royal decree, there is no longer any need to submit renewal applications for eligible licenses or to wait for approval from the relevant authority. Instead, the licenses will be automatically renewed upon payment of renewal fees. There are 31 eligible licenses listed in the royal decree, with a focus on licenses for hazardous substances and cosmetics. The royal decree on license renewal was published in the Government Gazette in May 2021 and will come into force on November 22, 2021. Although the new royal decree has not yet come into force, Thailand’s Food and Drug Administration (FDA) has already begun renewing licenses for hazardous substance licenses and cosmetics notification receipts via the new procedure. These licenses and notification receipts are detailed below: (Note: Hazardous substances for household use and public health are classified into four types according to their risk. Products containing type 2 and 3 substances are a higher risk than type 1 and must be registered with the FDA. Type 4 substances are prohibited.) Procedural Guidance The licenses for hazardous substances in the table above should be renewed in the two months preceding their expiry date, while the notification receipts for cosmetics should be renewed in the six months before their expiry date. Renewed licenses are valid for another six or three years (i.e., matching the original validity period). Under the new royal decree on license renewal, eligible licenses for hazardous substances and cosmetics can be renewed by notifying the FDA via its e-submission system. The license holder will then receive a payment

Parallel imports—branded goods imported into a domestic market and sold there without the consent of the intellectual property (IP) owner—pose a unique challenge for IP owners. In contrast to counterfeit goods, parallel imported goods are manufactured by or under the license of the IP owner and formulated or packaged for a particular jurisdiction and then imported into a different jurisdiction without the authorization of the IP owner. Intellectual property laws and perspectives on parallel import vary throughout Southeast Asia. The distinct legal landscape in each nation should be carefully navigated in consultation with legal experts to ensure brand protection to the fullest degree. This guide provides insight into the legal frameworks relating to parallel imports in Cambodia, Indonesia, Laos, Myanmar, Thailand, and Vietnam. Each section examines the relevant laws and regulations that pertain to parallel imports and explores the remedies available to IP owners in each country. Finally, the guide presents some strategies to combat parallel importation and maximize IP protection in Southeast Asia. The full guide can be downloaded through the button below.   This guide was prepared with the assistance of Tilleke & Gibbins interns Christian Pederson and Keoni Williams.

Attorneys from Tilleke & Gibbins in Vietnam have written the Vietnam chapter of the newly released Fashion Law 2021, a guide to law surrounding the business of fashion in jurisdictions around the world. The guide covers 18 key jurisdictions for the global fashion industry, offering insights into local legal frameworks surrounding vital issues such as brand enforcement and protection, e-commerce and marketing, and sustainability considerations. The Vietnam chapter of Fashion Law 2021 provides detailed information on the following topics: Trademarks, designs, copyright, and other intellectual property types such as patents and trade secrets. Strategic local contractual arrangements for manufacturing, distributing, and advertising fashion products. Overview and application of online marketing regulations and consumer protection regulations in Vietnam. The most relevant unfair competition rules for fashion businesses, and local courts’ interpretation and enforcement of the rules. ESG (environmental, social, and governance) concerns and sustainability issues for the fashion industry. Customs monitoring and local import and export guards against counterfeit products. The full Vietnam chapter is available for free on the Global Legal Post website, or it can be downloaded as a PDF through the button below. Tilleke & Gibbins also contributed the Thailand chapter to the guide.

Attorneys from Tilleke & Gibbins’ Bangkok office have written the Thailand chapter of the newly released Fashion Law 2021, a guide to law surrounding the business of fashion in jurisdictions around the world. The guide covers 18 key jurisdictions for the global fashion industry, offering insights into local legal frameworks surrounding vital issues such as brand enforcement and protection, e-commerce and marketing, and sustainability considerations. The Thailand chapter of Fashion Law 2021 provides detailed information on the following topics: Trademarks, designs, copyright, and other intellectual property types, as well as the main intellectual property legal tools available to protect fashion products in Thailand. Strategic local contractual arrangements for manufacturing, distributing, and advertising fashion products. Overview and application of online marketing regulations and consumer protection regulations in Thailand. The most relevant unfair competition rules for fashion businesses and local courts’ interpretation and enforcement of the rules. ESG (environmental, social, and governance) concerns and sustainability issues for the fashion industry. Customs monitoring and local import and export guards against counterfeit products. Frequently asked questions and common concerns regarding fashion business operations in Thailand. The full Thailand chapter is available for free on the Global Legal Post website, or it can be downloaded as a PDF through the button below. Tilleke & Gibbins also contributed the Vietnam chapter to the guide.

Michael Ramirez, a counsel in Tilleke & Gibbins’ dispute resolution group in Bangkok, has updated the firm’s contribution to the Global Attorney-Client Privilege Guide, published by Lex Mundi. The newly expanded guide provides information on what constitutes attorney-client privilege in over 70 countries around the world. The Thailand section of the guide contains in-depth information on the function and applications of attorney-client privilege in Thailand (or, as explained in the guide, an equivalent concept enshrined in Thai law), including coverage of the following topics: Privilege in corporations Common interest doctrine Litigation funding Crime-fraud exception Work product doctrine/litigation privilege Other privileges including mediation, accountant-client and settlement negotiation The interactive guide features expert contributions by Lex Mundi member firms from jurisdictions worldwide. Readers can browse the contributions, generate country-specific reports, and compare attorney-client privilege in multiple jurisdictions. For more information, please visit the Lex Mundi website.