1. What is a Brand?

"Brand" is a commonly used term in Vietnam. From a commercial perspective, a "Brand" is a combination of tangible elements (such as trademarks, designs, symbols, trade images, concepts, and pictures) and intangible elements (such as the business’s reputation). A brand is considered an intangible property of a business, created and developed by the business itself and existing in the consumers' perceptions. It is one of the important tools driving the commercial business activities of the company. Additionally, the value of a brand plays an extremely important role in advertising and communication strategies. Nevertheless, Intellectual Property Law do not use the term "Brand" but rather the term "Trademark".

2. What is Brand infringement?

Brand infringement refers to the act of using a brand (also known as a trademark) which includes symbols, names, slogans, colors, designs, etc., that have been registered for protection by another business without the consent of the brand owner, this is done to profit from promoting the brand on social media platforms, e-commerce, printing brands on the packaging and labels of other products, etc. Specifically, the acts of infringing brand rights are stipulated in Clause 1, Article 129 of the Intellectual Property Law 2005, amended in 2009 and 2019, as follows:

• Using signs identical to the protected trademark for goods or services identical to those listed in the trademark registration;
• Using signs identical to the protected trademark for goods or services similar or related to those listed in the trademark registration, if the use may cause confusion about the origin of the goods or services;
• Using signs similar to the protected trademark for goods or services identical, similar, or related to those listed in the trademark registration, if the use may cause confusion about the origin of the goods or services;
• Using signs identical or similar to a famous trademark or translated/ phoneticized versions of a famous trademark for any goods or services, even if they are non-identical, non-similar, and unrelated to those under the famous trademark's goods or services category, if the use may cause confusion about the origin of the goods or create a false impression about the relationship between the user of that sign and the owner of the famous trademark.

Typical example: The Trung Nguyen Coffee trademark dispute in the U.S.

In July 2000, Trung Nguyen and a U.S. company, Rice Field Corp, met for the first time and negotiated the importation of coffee products into the U.S. After a period of exporting to this market, the company proceeded to register trademark protection, but in November 2000, Trung Nguyen coffee trademark was already filed for protection by Rice Field Corp with the U.S. authorities. Trung Nguyen then promptly filed for trademark protection for its product and demanded the invalidation of its partner’s application.

3. How important is a Brand to a business?

A brand represents the uniqueness and distinctiveness of a business and serves as its identity. Owning a brand helps customers remember the business more easily and quickly. In today’s rapidly growing market economy, where thousands of businesses compete for customers' attention. Therefore, building a brand is also an essential step for optimizing the business operations of a company. The importance of a brand to a business can be highlighted through several main reasons, as follows:

• Differentiating the business and distinguishing its products/services in the market;
• Building the reputation, stature, and value of the business;
• Creating a competitive advantage for the business;
• Facilitating the promotion of products and services;
• Increasing attraction and building trust with customers;
• Changing customers' consumption perceptions.

4. Why is necessary to resolve Brand infringement?

Resolving brand infringement is vital for protecting the reputation, credibility, finances stability, and brand value, and especially to maintain customer’s trust in the business’s brand. Below are some reasons that highlight the importance and necessity of handling brand infringement.

• Protecting the rights and interests of the brand owner: When a business discovers that its brand has been infringed upon, it is necessary to immediately report the issue to the competent authorities for handling. This actionminimizes potential damage to its reputation and financial losses while maintaning customer confidenceduring business development;
• Protecting the rights of customers: When a brand is infringed upon, customers are deceived by the infringing parties and may end up using products that do not meet the expected quality. Resolving such issues not only restores customer trust but also attracts new customers who value the integrity of the original brand;
• A means of promotion: In business, there are many ways to communicate and promote a brand and its products to customers, but the most effective form of promotion is to promptly resolve issues directly impacting customers' rights;
• Avoiding customers using other brands in the same segment: If brand infringement occurs and the business does not resolve the issue quickly to fully protect customers’ rights, the trust in the product or brand will gradually diminish. This could lead to customers seeking a more reliable brand and product to use, resulting in significant financial losses to the business and severely impacting the business market‘s expansion.

5. What should be done to protect a business when its brand is infringed?

Brand protection is still a relatively new and not widely recognized field in Vietnam, with the legal framework on this issue still underdeveloped. In reality, cases of brand infringement are becoming more frequent and complex, while businesses continue to resolve their brand protection inadequately. Below are the steps that should be taken to protect a business when discovering brand infringement, assuming the brand owner has a Brand Registration Certificate (Trademark Certificate) or also known as a Brand Protection Certificate according to the provisions of the Intellectual Property Law of Vietnam and relevant legal documents:

• Collect information and evidence, and make a notarized record in case the infringing parties do not remove the violation and to facilitate the process if they decide to file a lawsuit in court;
• Requesting competent authorities to conduct an intellectual property assessment to protect the business’s legal rights and interests;
• Sending a warning letter to the individual or organization that violates rights. In particular, the brand owner can request: Immediate cessation of the infringing behavior; Removal of the infringing elements; Destruction of publications or products using the infringing elements; Deletion or removal of images, videos, or posts using the infringing elements on online social media platforms…;
• Requesting competent authorities to handle the violation: The brand owner has the right to request competent authorities to conduct inspections and impose penalties on the infringing behavior;
• Filing a lawsuit in a competent court if the infringing behavior meets the criteria for constituting an intellectual property crime under the Criminal Code.

6. What are the forms of resolving brand infringement?

a. Administrative

Article 211 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019, stipulates that the following intellectual property rights infringements shall be subject to administrative penalties:

• Committing intellectual property rights infringements that cause harm to consumers or society.
• Failing to cease the intellectual property rights infringements despite being notified in writing by the intellectual property owner requesting the cessation of such acts.
• Manufacturing, importing, transporting, or selling counterfeit goods related to intellectual property as defined in Article 213 of this law, or instructing others to do so.
• Manufacturing, importing, transporting, or selling goods with trademarks or geographical indications that are identical or similar to the extent that they cause confusion with a protected trademark or geographical indication, or instructing others to do so.

For the infringements mentioned above, administrative penalties are stipulated in Decree 99/2013/ND-CP. The highest fine for individuals is 250,000,000 VND, and for legal entities, it is 500,000,000 VND. Additionally, remedial measures must be applied to rectify the consequences.

b. Civil

Civil measures are applied to handle infringement based on the request of the intellectual property owner or the organization/individual harmed by the trademark infringement, even if the infringement is already being processed through administrative or criminal methods. Article 202 of the current Intellectual Property Law stipulates that the court has the authority to apply civil measures to handle organizations or individuals who commit intellectual property violations, including:

• Forcing the cessation of the infringing behavior;
• Forcing an apology and public correction;
• Forcing the fulfillment of civil obligations;
• Forcing compensation for damages;
• Forcing the destruction or distribution (for non-commercial purposes) of goods, materials, and equipment primarily used in the production or business of goods that infringe intellectual property rights, as long as it does not affect the intellectual property owner’s ability to exploit their rights.

c. Criminal

Criminal measures are applied to handle infringements that have the elements of a criminal offense. Article 226 of the Criminal Code 2015 (amended and supplemented in 2017) stipulates the criminal handling of trademark infringements as follows: Any individual who intentionally infringes industrial property rights on a trademark that is protected in Vietnam shall be subject to a fine from 50,000,000 VND to 500,000,000 VND or non-custodial rehabilitation for up to 3 years.

7. What does Brand infringement resolution lawyer do?

As mentioned above, brand infringements are becoming increasingly common. Businesses that do not handle brand infringements may lose their competitive advantage in the market, cause confusion, and reduce their credibility with customers. Therefore, businesses need to take preventive measures and handle cases of brand infringement. However, the field of resolving brand infringements is still relatively new in Vietnam, and the procedures are complex and challenging. As such, businesses may seek legal assistance from brand infringement resolution lawyer to address the issue on time. Specifically, depending on the client's needs, Brand infringement resolution lawyer may carry out the following tasks:

• Advising on legal regulations related to brands;
• Advising on procedures for registration, modification, separation, transfer of trademark protection applications, and brand appraisal;
• Reviewing and evaluating the signs and extent of brand violations by the parties involved in the dispute;
• Reviewing and providing legal advice on the rights and obligations of the parties when a brand dispute arises;
• Proposing negotiation and mediation strategies between the parties in a spirit of goodwill and respect for the law;
• Representing the business in litigation, protecting its legal rights and interests during the resolution of brand disputes at government agencies.

8. What are the costs for resolving Brand infringement?

The costs for resolving brand infringement will vary depending on the business's specific needs and the severity of the infringement. However, generally, the process of resolving brand infringement will include the following basic costs:

• Legal consultation fees for brand infringement: Each law firm set its own fee level for this service, depending on the services provided and the experience and expertise of the lawyer;
• Intellectual property appraisal fees: as regulated by the Intellectual Property Science Institute;
• Fees for hiring a lawyer to participate in litigation if a lawsuit is filed;
• Court filing fees.

Suppose the business is successful in its brand infringement lawsuit, according to the Intellectual Property Law, the business has the right to request that the court order the infringing party to reimburse all related costs. This is an international practice that is only stipulated in the Intellectual Property Law, and it  is not apply to other types of legal disputes.

9. What are the criteria for choosing Brand infringement resolution lawyer?

Intellectual property is a complex legal field, and while resolving disputes in this field requires a lawyer who not only expertise in Intellectual Property Law but also about a deep understanding of the brand market, copyright, industrial property rights, etc. Therefore, when choosing Brand infringement resolution lawyer, businesses should prioritize the following criteria to ensure alignment with their needs:

• Having a strong reputation, ethics, and professional dedication;
• Having extensive knowledge in many fields, especially in brand infringement;
• Having experience in resolving intellectual property disputes in general and brand infringement in particular;
• Having good communication skills, and experience in negotiation;
• Having a high sense of responsibility and discipline;
• Having sharp logical thinking and high legal reasoning skills.

10. Where to find a Brand infringement resolution lawyer?

Businesses seeking legal services for brand infringement, as well as other legal fields in general, should engage a reputable law firm that provide legal consulting and support services with fully public and transparent information.

Phong & Partners Law Firm (Phong & Partners) is proud to be a trusted and professional law firm in the Central Region, as well as in other provinces and cities nationwide. Phong & Partners provides comprehensive legal services in various fields, including consulting on brand infringement issues. With the guiding principle of “Using service quality and customer satisfaction as the measure of success”, and operating under the philosophy “Respecting justice – Respecting goodwill”, Phong & Partners is one of the reliable choices for clients because:

• A large team of lawyers and legal specialists with solid expertise, professionalism, dedicated and conscientious advice;
• The lawyers have extensive experience in consulting and resolving intellectual property disputes;
• Providing high-quality legal services in intellectual property, particularly in brand infringement, which is the result of professionalism, dedication, and commitment to the best interests of the client;
• Striving to improve service quality, frequently updating legal regulations and practical conditions to enhance the value of the legal products delivered to clients;
• Committing to maintaining the absolute confidentiality of client information to ensure clients can trust and feel secure when using the services.

11. FAQ

(1) Is it mandatory for businesses to register their brand protection?

Vietnamese law does not require individuals, organizations, or businesses to mandatorily register brand protection. However, registering a brand protection provides a legal foundation to establish ownership of the brand. This can bring numerous benefits to the owner and help reduce future intellectual property risks.

(2) Why should businesses hire brand infringement resolution lawyer  ?

A brand is the “soul” of every business. When brand infringement occurs, it can lead to significant losses, including diminished customer trust, reduced market share, and damage to the business’s reputation. However, intellectual property law is highly specialized, and not everyone can fully understand the regulations regarding intellectual property in general and brands in particular to effectively resolve brand infringement. Therefore, seeking advice from a law firm and participating in dispute resolution is essential. Lawyers who specialize in consulting and resolving brand disputes, with practical experience in intellectual property law, will help businesses resolve infringement issues quickly and legally while minimizing unnecessary damages.