Vietnam

In November 2020, Vietnam’s government released a new Draft of the Amended Law on Intellectual Property (Version 2.0 dated November 17, 2020) for pub-lic comments. With 80 amended articles and 13 new ones, the draft was ex-pected to fulfill the commitments from international treaties that Vietnam has joined. Among these are the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, European Union Vietnam Free Trade Agreement, Re-gional Comprehensive Economic Partnership and the UK-Vietnam Free Trade Agreement. The draft proposes major revisions and /or supplements of articles in 14 chapters on general regulations; copyrights and related rights; industrial property (patents, industrial designs, trademarks, and geographical indications); plant varieties; enforcement of IP rights. The amended law will be in force beginning in June 2022.

Previous to this, Decree No. 98/2020/ND-CP or Decree 98 took effect on October 15, 2020, replacing Decree No. 185/2013 ND-CP as amended in 2015 and 2018. The new enforcement decree updates enforcement policies for commercial activities including those involving e-commerce. Among others, Decree 98 pro-vides a new definition for counterfeit goods. While it includes products with no active ingredients and those with counterfeit labels and packaging design among others, it also strikes out the term “intellectual property counterfeit goods” from the definition. Under Decree 185, the term was included in its definition of coun-terfeit goods. Additionally, one of the remedial measures stipulated under De-cree 98 is forcible removal of a mobile e-commerce app from app stores if found to be trading counterfeit goods. Corresponding fines will also be imposed.

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Established in 2001, Hanoi-based Ageless IP Attorneys & Consultants handles the full-range of IP services, from registration, prosecution, transactional services to litigation and enforcement of IP rights. The strong team has advised for domestic and international corporations such as GM, Daewoo, Hyundai, Honda, Lenovo, Lotte and Schneider Electric. The firm is one of the five largest IP firms in the country in terms of the number of patent and trade-mark applications filed. Chairman Nguyen Duc Than is a former deputy di-rector general of NOIP and has more than a half-century of experience in the field. Leading practitioners are Nguyen Duc Xuan for patent and trademark work, Pham Thi Tuoi for trademark work

With its head office in Ho Chi Minh City, Aliat Legal, established in 2005, also has offices in Ha Tinh, Hanoi, Can Tho City and Phnom Penh. The firm tai-lors focused legal advice and practical commercial solutions for its clients, and adopts a pro-active approach to practice.

Ambys Hanoi Law Firm prac-tices in all areas on IP, including reg-istration, renewal, enforcement and licensing and technology transfer. The firm is a member of the Vietnam In-dustrial Property Associaton (VIPA) and international IP associations including ASEAN-IPA, the Asian Patent Attorney Association (APAA), INTA and AIPPI.

Annam IP & Law is an IP-fo-cused firm which provides the full range of IP services to protect inven-tions, trademarks, industrial designs and other matters in Vietnam, Laos, Cambodia and Myanmar. The firm is also set up to provide advice on corpo-rate and business law. Le Quoc Chien is the firm’s managing partner; Le Loc Ha heads the patent division and Dzang Hieu Hanh the trademark divi-sion.

A&S Law is an IP and business law firm with offices in Hanoi and Ho Chi Minh. Its success is based on delivering qualified, excellent and valuable advice to clients ranging from individuals, small and medium enterprises to large scale firms. Founder and managing director Do Ba Thich is a primary contact. Among the new hirees are consultants Pham Yen Nhi, Dang Thi Thu Huong and Pham Thu Uyen.

The IP teams at Baker McKenzie in Hanoi and Ho Chi Minh City have played an instrumental role in helping both local and multinational clients realize the value of their IP portfolios. The firm is represented before the NOIP, courts and

authorities by BMVN International, a fully-licensed law firm and IP agent. Part-ner Tran Manh Hung heads the firm’s IP practice in Vietnam. Partner Minh Tri Quach in Hanoi is a key contact. The firm was named Asia IP trademark firm of the year for Vietnam in 2020.

Banca Intellectual Property was founded in 1998 by Thi Hong Van Tran, one of the first people qualified and admitted as a Vietnamese Trademark and Patent Attorney in 1990. The firm claims more than 500 clients and more than 20,000 successful cases over the years. Partner and IP representative Hong Nhung Pham is a key IP contact; Hai Anh Nguyen leads the firm’s litigation department. Clients include Procter & Gamble, Syngenta, Bayer, Nestlé and FIFA.

As one of the top corporate law firms in the country, the IP team at Bizcon-sult has been providing full services of IP protection as well as viable and com-prehensive solutions for clients since 1988. Managing partner and patent and trademark attorney Nguyen Anh Tuan heads up the firm’s IP practice.

The IP practice at full-service firm Bross & Partners boasts a client list including corporations listed in Forbes Magazine’s “Asia’s 200 best under 1 billion USD” list, companies in the “Top 500 Vietnamese Largest Private Enterprises (VNR500)” list and a great deal of regional and local entrepreneurs. Hanoi-based partner Le Quang Vinh is a key IP contact at the firm; he has more 15 years of ex-perience in advising and representing regional and international industrial and commercial groups on the spectrum range of IP rights-related issues.

IP specialist Detech & Associates was founded in 1991 with the aim to strengthen IP protection to promote investment and technology transfer in Viet-nam. Staffed with more than 20 professionals, its practice is devoted to repre-senting domestic and foreign clients in establishing and enforcing their rights in Vietnam and overseas. The firm is also experienced in consultation and pros-ecution of licensing agreement, technology transfer arrangement and related matters.

Hanoi-based D&N International has extensive experience advising do-mestic and foreign clients in all aspects of IP. Its clients include global brands such as eBay, the Hershey Company, LG and Samsung. Its IP practice covers Vietnam, Laos, Cambodia and Myanmar. Dang Thi Hong Thuy, Dang Thi Hong Nga and Dang Thi To Hang are key partners.

Frasers is a full-service commercial firm and was the first firm to obtain a foreign law company license in the country. The IP practice is led by patent at-torney Nguyen Van Vien, who is one of the founders of the IP system in Vietnam and has more than 30 years of experience in the field. His practice focuses on all trademark matters, including registration and enforcement work.

IP specialist Gintasset is staffed with qualified patent lawyers, engineers and scientists from varies fields of expertise. Its practice areas include biological sciences, computer software, electrical and mechanical engineering, chemicals, semiconductors and telecommunications.

Hogan Lovells’ IP team does applications, registrations, oppositions, com-mercialization, transfers and enforcement for trademarks, patents, copyright as well as other related rights and issues, such as domain name protection, for numerous high-profile clients including Apple, ExxonMobil, Ford and Guess. Se-nior associate My Doan in Ho Chi Minh City is a key contact.

The IP and technology practice at Indochine Counsel is headed by partner Nguyen Thi Hong Anh. With both legal and technical backgrounds, she has been in practice as a patent and trademark attorney for over 20 years. The team offers a broad range of services in intellectual property and related matters. Managing partner Dang The Duc is a key contact for counsel on tech matters; he is also friendly and willing to share his wealth of information about Vietnam’s legal sys-tem. He recently led the firm in its representation of Truong Hai Auto Corpora-tion (Thaco Group) in acquisition of a 100 percent stake in E-mart Vietnam Co. from South Korea’s largest retailer, E-mart Inc. As part of the deal, the parties have also entered into a strategic franchise arrangement whereby E-mart will no longer operate its brand discount stores in Vietnam, but all stores will be oper-ated by Thaco using the E-mart brand.

INVENCO is one of the country’s oldest full-service IP law firms; it is spon-sored by the Vietnam Union of Science and Technology Associations. The firm is presently handling more than 10,000 patent applications and more than 12,000 trademark applications through its offices in Hanoi and Ho Chi Minh City. Xuan Quynh Le is president of the firm; she has strong relationships with Vietnamese ministries and senior Vietnamese government officials. Managing partner Thanh Dieu Nguyen specializes in litigation, IP enforcement and licensing matters.

InvestConsult Group is the oldest and one of the largest private consultant companies in Vietnam. From offices in Hanoi and Ho Chi Minh City, its IT de-partment focuses primarily on franchising, licensing and branding issues, but is also involved in prosecution and enforcement matters. Notable clients include FIFA, Walt Disney and Vietnam Airlines.

INVESTIP was founded in 1988 by experts who have played important roles in the development of IP in Vietnam; it was one of the first IP firms in the coun-try. The firm is led by Nguyen Anh Ngoc, deputy director general and branch manager; Cao Hong Giang, director of trademark; Nguyen Thang Duc, director of patent and design; and Tang Duc Khuong, partner and director of litigation and enforcement.

IP Max is a boutique intellectual property firm which advises on a full range of IP matters in Vietnam, Laos and Cambodia. In addition to patent, trademark, design and copyright work, the firm also advises clients on issues relating to the protection of plant variety and plant breeders’ rights, including the prepara-tion and prosecution of applications for registration of new plant varieties at the New Plant Variety Protection Office under the Ministry of Agriculture and Rural Development. The firm is based in Hanoi. Managing partner Son Doan is a key contact

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A full-service law firm in Hanoi, Kenfox IP and Law Office has clients in Vietnam, Cambodia, Myanmar, Laos and other Asian jurisdictions. These include startups, governments, state-owned entities and leading business enterprises across multiple industries – from life sciences, engineering, telecommunication, energy and computer science to media, healthcare, financial services and con-sumer goods.

Lê & Lê engages in prosecution, litigation and licensing of IPRs and has represented or advised clients in fields including computing, telecommuni-cations, electronics, pharmaceuticals, food and drink, biotechnology and sport. Some of its notable clients are AFC, WHO and the Asia-Pacific Broad-casting Union.

Lexcomm has a sizeable, experi-enced TMT team led by Viet Ha Nguy en, who is known as a skilled negotiator with nearly a quarter century of advice on contracts and regulatory matters.

The firm offers particular expertise in the television and film space, advising on regulatory issues relating to the crossover of technology and entertainment. The firm has advised a leading oil and gas company in relation to the ability to install a private telecom network in Vietnam for its oil and gas operations.

LNT & Partners is a commercially-minded IP practice in Hanoi and Ho Chi Minh City, which strives to help clients fully leverage their IP. The practice group handles biotech, franchising, outsourcing, pharmaceuticals and tech, me-dia and telecom work. The firm represented one of the largest global electronics conglomerates from South Korea in a ground-breaking copyright infringement case involving Smart TVs, apps and online karaoke, and a sizeable non-profit or-ganization in Vietnam in a significant trademark infringement lawsuit involving administrative and court proceedings.

Mirandah Asia handles Vietnam IP issues through its offices in Hanoi and from Singapore, where director Gladys Mirandah brings more than 35 years of IP experience. The firm is noted for its work in ASEAN countries and elsewhere, and has offices in Singapore, Kuala Lumpur, Jakarta, Brunei, Manila and Bang-kok, as well as significant experience in Laos, Cambodia, Myanmar and India.

Named Asia IP patent firm of the year for Vietnam in 2020, Pham & Asso-ciates provides one of the best all-round IP services in the country from offices in Hanoi, Ho Chi Minh City, Da Nang and Hai Phong. Its respected work in patent prosecution and enforcement has attracted international clientele including Honda, BMW and Johnson & Johnson.

The IP team at Phuoc & Partners is experienced in handling a wide variety of IP issues. Practice areas include patents, trademarks, copyright and trade se-crets, unfair competition, licensing, transfer and litigation.

Rajah & Tann LCT Lawyers is the Vietnam branch of re-gional practice Rajah Tann Asia. Manag-ing partner Chau Huy Quang is active in the firm’s IP, commercial litigation and inter-national arbitration practices. He is one of the country’s most ca-pable litigators, advis-ing clients including Perfetti Van Melle and Sony. Logan Leung was promoted to part-ner effective January 1, 2021, as a member of the firm’s technology, media and telecommunications; dispute resolution; and corporate and M&A practices. Leung is recognized for both contentious and non-contentious mat-ters, and is well-versed with Vietnam’s regulatory environment.

A member of the RHTLaw Asia network, RHT Law Vietnam traces its roots to 2005 when the firm PBC Partners was established by a team of Vietnamese lawyers. In 2016, PBC Partners engaged in a joint venture with one of the largest law firms in Singapore to form RHTLaw Vietnam. The firm now has offices in Hanoi and Ho Chi Minh, as part of the RHT Law Asia network of more than 2,000 legal experts. Among the firm’s new hires is IP consultant Nguyen Hanh Nhu.

Global IP consultancy Rouse Legal Vietnam has been providing IP prose-cution and enforcement services in Vietnam since 1993. From offices in Hanoi and Ho Chi Minh City, it has served multinationals including Adidas, Coca-Cola and Hermes. Through its association with Sao Bac Dau IP, the firm has handled a range of administrative actions against infringers in Vietnam. Principal and country manager Yen Vu is a key contact. Senior patent consultant Hoang Nguyen and consultant Eun Jung Han are new hires.

Russin & Vecchi was the only foreign law firm in Vietnam from 1967 to 1975. Its IP practice involves registration, defense of trademarks and patents, technol-ogy transfer and licensing agreements. Sesto Vecchi and Do Anh Tuan are leading practitioners.

Schmitt & Orlov operates in Greater China, Hong Kong, Russia and CIS countries, and Southeast Asia including Thailand, Cambodia and Vietnam, where its office is located in Ho Chi Minh City. It covers the full scope of IP services: trademarks, patents, industrial designs, copyrights, domain names, cybersquat-ting and online infringements, trade secrets, unfair competition, contractual IP, and provides wide range protection for its clients - from prosecution to enforce-ment of their rights, negotiation and drafting. Hau Nguyen, deputy director, S&O IP Southeast Asia, and Daniel Greif, director, S&O IP Southeast Asia, are key con-tacts. The firm was named Asia IP copyright firm of the year for Vietnam in 2020

S&B Consultancy Corporation provides the full range of intellectual property services, from patent, trademark, industrial design and copyright to domain name, enforcement and commercial exploitation of IP rights. The firm has offices in Hanoi and Ho Chi Minh and associated offices in other regions. Its offices in Vietnam are helmed by five partners with around 40 lawyers and le-gal professionals. Among its leading practitioners is partner Pham Duy Khuong. Nguyen Thanh Ha leads the firm as its chairman and managing partner.

T&T Invenmark in Hanoi is led by general director and patent and trade-mark attorney Le Xuan Thao, formerly a lecturer at the Technical Military Uni-versity (Ministry of National Defense), a legal officer at the National Office of In-tellectual Property and president of Invenco Vietnam International Law Firm. The firm has a strong working relationship with the National Scientific Council, who are experienced and expert advisors and can deliver professional ser-vices to customers.

Led by managing director Thomas J. Treutler, Tilleke & Gibbins handles all aspects of IP including anti-counter-feiting and strategic filing. In terms of contentious work, the firm has full in-house investigative teams in both Ha-noi and Ho Chi Minh City, staffed with seasoned experts who have worked for top international law firms as well as law enforcement. It is one of the largest IP registration practices, with over 1,000 patent and trademark filings annually, in Vietnam. Principal Loc Xuan Le is a key contact.

Tran H.N. & Associates was the first private intellectual property law firm to be registered in Vietnam. Founder Tran Huu Nam specializes in IP and technology transfer work, and has prac-ticed extensively in all areas of business law. Peter Irwin is consulting director of international law at the firm and a lecturer in international business law pro-grammes at the graduate and post-graduate levels at universities in Hanoi and Ho Chi Minh City. The firm is admitted to practice before the courts and admin-istrative bodies.

Tri Viet & Associates was founded in 2004 by managing partner Nguyen Duc Long, who has handled over 1,000 patent applications (especially PCT ap-plications) for clients in the US, UK, Japan, France, Germany, South Korea and Taiwan. Nguy-en is also experienced in en-forcement, litigation and other related-patent issues.

Trung Thuc provides ser-vices in all areas of intellectual property law, including acquisi-tion, prosecution, maintenance and enforcement of trademarks, patents, copyright and licensing matters in Vietnam. The firm represents clients in motor en-gineering, telecommunications, pharmaceutical and biotech in-dustries from the United States, United Kingdom, Japan, Austra-lia and other countries. Nguyen Viet Thang is senior partner.

Founded under the Vietnam Chamber of Commerce, VCCI-IP has coop-erated with about 700 international law firms and represented more than 1,000 clients including the likes of NTT Docomo, Mitsubishi, Sony, Panasonic, Nissan and Toyota. It has also involved in around 40 percent of Japanese patents and 60 percent of foreign patents filed in Vietnam. Tran Huy Phuong is the president.

The IP group at Vision & Associates handles all aspects of IP including fil-ings and prosecutions, availability searches, licensing and franchising as well as enforcement. It has acted for Unilever in an infringement investigation against a local company which resulted in a seizure and destruction of over 5,000 infring-ing products. Other notable clients include HP, P&G and Coca-Cola.

WINCO is a local IP firm with a head office in Hanoi and a branch office in Ho Chi Minh City. Founding member La Huu Da has represented independent and large multinationals and has given lectures and seminars at universities.

ZICO Law’s Vietnam office is led by managing partner Phuong Nguyen, who has over 20 years of experience under her belt in the fields of banking and financial, corporate commercial and global trading. Launching in Vietnam in 2011, the firm has offices in Hanoi and Ho Chi Minh City. Its team of lawyers boasts of multilingual capabilities, namely Vietnamese, English, Malay, and Mandarin.