TRADEMARK INFRINGEMENT LAWYER

Business consulting

1. What is a trademark?
2. What is trademark infringement?
3. How is it important for companies to protect their trademark?
4. Why is it necessary to handle trademark infringement behavior?
5. What should you do to protect your business when the trademark infringement is detected?
6. What are the forms of handling trademark infringement?
7. What does a Trademark Infringement Lawyer do?
8. How is the cost of resolving trademark infringement?
9. What are the criteria for choosing Trademark Infringement Lawyer ?
10. Where can you find a Trademark Infringement Lawyer?

In the development of market economy, trademarks play an important role in the growth of businesses. Products from reputable trademarks will easily conquer, attract and create trust from consumers. However, with the popularity of trademark, trademark infringement has become a serious and complicated problem, especially in Vietnam - a rapidly growing market. Many businesses take advantage of legal loopholes to create "similar" trademarks which cause confusion for consumers, lead to trademark disputes and cause damages for consumers and businesses in the process of business development. Therefore, Trademark Infringement Lawyer plays an important role in supporting and providing effective legal solutions to protect the legitimate rights of businesses in case of trademark infringement.

1. What is a trademark?

“Trademark” is a commonly used term in Vietnam. From a commercial perspective, "Trademark" is a combination of tangible elements (brand name, design, logo, commercial image, concept, photo) and intangible elements (business reputation). A trademark is considered a form of intangible asset of the business that is built, developed and exists in the perception of consumers. It is aslo one of the important tools to promote commercial business activities of the business. In addition, the value of the trademark also plays an extremely important role in promotion and marketing strategies. However, from a legal perspective on intellectual property, it does not use "Trademark" but uses the term "Brand”.

2. What is trademark infringement?

Trademark infringement is the act of using a trademark (also known as a brand) including symbols, names, slogans, colors, designs... that has been registered for protection by another business without consent of the owner, with the purpose of earning profits from the trademark promotion on social media platforms, e-commerce, by printing the trademark on the packaging, labels of other products, etc. Specifically, the acts of trademark infringement are stipulated in Article 129.1 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019 as follows:

Using signs identical to the protected trademark for goods/services that are identical in the registered list accompanying such trademark;
Using signs identical to a protected trademark for goods/services that are similar to or related to goods/services on the registered list accompanying such trademark, if the use is likely to cause confusion about the origin of goods/services;
Using signs similar with protected trademark for goods/services that are identical, similar or related to goods or services in the registered list accompanying such trademark, if the use is likely to cause confusion about the origin of goods/services;
Using signs identical/similar to famous trademarks or signs translated/ transliterated of famous trademarks for any goods or services, even if the goods, services are not identical, not similar or not related to those listed in the category of goods, services bearing famous trademarks, if the use is likely to cause confusion about the origin of the goods or create a misleading impression of the relationship between the user of such sign and the owner of the famous trademark.

A typical example: Dispute over Trung Nguyen coffee trademark in the US

Bài học về xây dựng thương hiệu từ cà phê Trung Nguyên

In July 2000, Trung Nguyen and a US company named Rice Field Corp, had their first contact and negotiation to import coffee products into the US. After exporting to this market, Trung Nguyen started to proceed to register for protection, but in November 2000, “the Trung Nguyen coffee trademark” was submitted for registration by Rice Field Corp with the US regulatory agency. Trung Nguyen then urgently submitted an application to register trademark protection for its product and requested that the partner's application be declared invalid.

3. How is it important for companies to protect their trademark?

Trademark represents uniqueness, distinctiveness and identification for a business. Owning a trademark for oneself helps consumers remember the business more easily and quickly. Nowadays, with the strong development of the market economy, thousands of businesses compete to gain the attention of consumers. Therefore, building a trademark is also a step to optimize a business operations. The importance of trademarks to businesses can be shown through a number of main reasons as follows:

Creating a difference of the business, helping distinguish the products/services of the business in the market;
Building the reputation, stature and value of the business;
Creating competitive advantages for the business;
Easily promoting products and services;
Increasing attraction and creating trust for consumers;
Changing consumer perception of customers.

4. Why is it necessary to handle trademark infringement behavior?

Handling trademark infringement is a very important task to protect reputation, prestige, financial, trademark value and more specifically to protect the trust of consumers in the business's trademark. Here are some reasons below that highlight the importance and necessity of handling trademark infringement behavior of the businesses:

Protecting the rights and interests of trademark owner: When a business discover its trademark being infringed, it should immediately report the infringement to competent state authorities for handling. This action helps businesses minimize loss of reputation with consumers, limit damage to reputation as well as financial losses in the business development process;
Protecting consumer rights: When a business's trademark is infringed, it means that consumers are deceived by those violators. Consumers have to use products that do not meet the original quality and expectations. If the business can solve this issue, it will build trust with consumers, thereby attracting many other consumers to use its brand;
One way to communicate: In business, there are many ways to communicate and promote trademark, products of the business to consumers. But the best way to communicate is to quickly solve issues directly affecting the rights of consumers;
Preventing consumers from using products of other trademarks in the same segment: In case a trademark infringement occurs and the business does not quickly resolve the issue to maximize consumers rights protection, consumer trust in the product and trademark will decrease. This may lead customers to seek a more reliable trademark, a different product to use; This will cause heavy financial damage to the business as well as seriously affect the expansion of the business market.

5. What should you do to protect your business when the trademark infringement is detected?

The field of trademark protection is still new and not popular in Vietnam, the law still lacks many regulations to regulate this issue. In fact, cases of trademark infringement are increasingly occurring more frequently and more complex, while businesses are still handle trademark protection carelessly. The following is the way to protect the business when detecting trademark infringement if the trademark owner has a Trademark Registration Certificate, also known as a Trademark Protection Certificate according to regulations of Vietnam Intellectual Property Law and related legal documents:

Collecting information, evidence and establishing witness statements by a Bailiff to prevent the infringing party from removing the violation and make it convenient in filing a lawsuit in the court.
Enterprises may request a competent state agency to appraise intellectual property to protect their legitimate rights and interests.
Sending warning letters to individuals and organizations that infringe rights. In particular, the Trademark owner has the right to request: the immediate stopping of infringing the trademark; the removal of the infringing element; the destruction of publications, products that use the infringing trademark element; the deletion and removal of images, videos, posts using infringing elements on online social platforms…
Requesting a competent state authorities to handle violations: The owner has the right to request a competent state authorities to conduct examination, inspection and and make decisions on penalties for infringing acts.
Filing a lawsuit with a competent court if the act of infringement has enough elements to constitute the crime of infringing intellectual property rights according to the Criminal Code.

6. What are the forms of handling trademark infringement?

a. Administration

Article 211 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019, regulates acts infringement intellectual property rights subject to administrative sanctions as follows:

Conducting acts infringing intellectual property rights causing damage to consumers or society;
Failuring to stop an act infringing intellectual property rights despite being notified in writing by the intellectual property rights holder requesting to stop such act;
Manufacturing, importing, transporting, trading counterfeit goods on intellectual property according to the provisions of Article 213 of this Law or assigning others to perform this act;
Manufacturing, importing, transporting, trading in objects bearing trademarks or geographical indications identical or similar enough to cause confusion with protected trademarks or geographical indications, or assigning others to perform this act.

For the above-mentioned infringements, the level of administrative penalties is stipulated in Decree 99/2013/ND-CP. Accordingly, the highest fine for individuals is 250,000,000 VND, for legal entities is 500,000,000 VND. In addition, measures to remedy the consequences must also be applied.

b. Civil

Civil measures are applied to handle acts of infringement at the request of intellectual property rights holders or organizations or individuals that suffer damage caused by acts of trademark infringement, including that acts has been or is being handled by administrative or criminal methods. Article 202 of the current Intellectual Property Law stipulates that the Court has the right to apply civil remedies to handle organizations and individuals that commit acts of infringing intellectual property rights as follows:

Forced termination of infringing acts;
Forced public apology and correction;
Forced performance of civil obligations;
Forced compensation for damages;
Forced destruction or forced distribution or use for non-commercial purposes of goods, raw materials, materials and means used mainly to produce and trade goods that infringe intellectual property rights with conditions that it does not affect the ability to develop the rights of the intellectual property owner.

c. Criminal

Criminal measures are applied to handle acts of infringement in situations where those acts have elements constituting a crime. Article 226 of the Criminal Code 2015 (amended and supplemented in 2017) regulates criminal handling of trademark infringement as follows: Anyone who intentionally infringes the Industrial Property rights of a trademark that is protected in Vietnam among the following subjects shall be fined from 50,000,000 VND to 500,000,000 VND or reformed without detention for up to 03 years.

7. What does a Trademark Infringement Lawyer do?

As mentioned above, trademark infringement occurs more and more frequently. If businesses do not handle trademark infringement may lose their competitive advantage in the market, causing confusion and reducing credibility with consumer. Therefore, businesses need to take preventive measures handle cases of infringement of their trademarks. However, the field of resolving trademark infringement is still new to the Vietnamese market and the procedures for resolving it are complex, with many difficulties. Therefore, businesses can seek legal assistance from Trademark Infringement Lawyer to promptly handle the issue. Specifically, depending on the client's needs, a Trademark Infringement Lawyer may perform the following tasks:

Consulting on legal regulations related to trademarks;
Consulting on procedures related to registration, amendment, separation, transfer of trademark protection applications, trademark appraisal;
Reviewing and examining the signs and levels of trademark infringement by the disputing parties;
Reviewing and advising on the rights and obligations of the parties when a trademark dispute occurs;
Proposing negotiations, discussions options between the parties in the spirit of goodwill and respecting the law;
Representing businesses to participate in litigation, protect legitimate rights and interests in the process of resolving trademark disputes at state agencies.

8. How is the cost of resolving trademark infringement?

Depending on the business's need to resolve trademark infringement and the severity of the trademark infringement, the costs will vary. But in general, the process of resolving trademark infringement will include the following basic costs:

Cost of retaining a Lawyer to consult on trademark infringement: each law firm will have a different price depending on the services provided by such law firm and the different level of experience and expertise of each Lawyer;
Cost of intellectual property appraisal: regulated by the Intellectual Property Science Institute;
Cost of retaining a Lawyer to participate in litigation if a lawsuit is requested;
Cost of filing a lawsuit in Court;

If the business is successful in suing for trademark infringement, according to the Intellectual Property Law, the business has the right to request the Court to force the infringing party to pay the above costs to the enterprise. This is an international practice only stipulated in the Intellectual Property Law. In other disputes, the law does not provide for it.

9. What are the criteria for choosing Trademark Infringement Lawyer ?

Intellectual property is a complex legal field that requires Lawyers not only be proficient in intellectual property law but also knowledgeable about the trademark market, copyright, and industrial property rights...in resolving disputes. Therefore, when choosing a qualified Trademark Infringement Lawyer, it is necessary to consider the following criteria:

Must have reputable, ethics and dedicated for the profession;
Have extensive knowledge in many fields, especially the field of trademark infringement;
Have experience in resolving intellectual property disputes in general and trademark infringement in particular;
Have good communication skills, experience in bargaining and negotiation;
Have a high sense of responsibility and discipline;
Have sharp logical thinking and high legal thinking.

10. Where can you find a Trademark Infringement Lawyer?

Businesses in need for legal issues related to trademark infringement in particular and other legal fields in general may seek consulting services and legal support at reputable Law Firms with complete public information.

Phong & Partners Law Firm (Phong & Partners) is proud to be a reputable and professional Law Firm in the Central region in particular and other provinces and cities across the country in general. Phong & Partners provides comprehensive legal services in many fields, including consulting on resolving trademark infringement. With the guiding principle of "Quality of service and client satisfaction as the goal of operation", operating for the philosophy of "Honour justice – Respect goodwill", Phong & Partners is one of the top choices reliable for clients by:

A large team of Lawyers and legal experts with solid expertise and professionalism, providing dedicated and attentive advice;
A team of Lawyers is experiencedin in consulting and resolving intellectual property disputes;
Providing intellectual property legal services, especially in the field of trademark infringement, with the best quality - the result of professionalism and, dedication and cohision, for the highest benefit of clients;
Always be aware of improving service quality, regularly update legal regulations and practical situations to enhance the value of legal products sent to clients;
Committing to absolute confidentiality of client information to ensure clients feel completely secure when using the service.

11. Some frequently asked questions, related to Trademark Infringement Lawyer

(1) Are businesses required to register for trademark protection?

Vietnamese law does not stipulate that individuals, organizations, and businesses are required to register trademark protection, however, trademark protection registration will establish legal basis for ownership rights to trademarks, this may bring many benefits to the owner and limit risks related to intellectual property ownership in the future.

(2) Why is it necessary to retain Trademark Infringement Lawyer?

Trademark is the "soul" of every business. When trademark infringement occurs, businesses not only lose their competitive advantage but also lose credibility and the market they have built over time. However, intellectual property law is specific, not everyone may clearly understand the regulations on intellectual property in general and trademarks in particular to effectively resolve trademark infringement, it is absolutely necessary to retain a Law Firm to consult and participate in dispute resolution. Lawyers consulting and resolving trademark disputes who are knowledgeable about intellectual property law and have practical experience will help businesses resolve infringements quickly and legally, while limiting maximize unnecessary damages.

(3) What is a professional Intellectual Property Lawyer?

https://phong-partners.com/luat-su-so-huu-tri-tue-tai-da-nang

(4) What should be done to handle trademark infringement?

https://phong-partners.com/luat-su-xu-ly-vi-pham-thuong-hieu-tai-da-nang

(5) What are common copyright disputes?

https://phong-partners.com/luat-su-quyen-tac-gia

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