Email to: thao.dinh@bross.vn; vinh@bross.vn

When you suddenly receive a warning letter or cease and desist letter from a right holder or an official letter from an intellectual property enforcement agency informing that the right holder filed a request for handling of trademark infringement and asking for a rehearsal, or even get a summons from the police agency asking for presentation and interrogation, you need to calm down and pay your attention to the following 4 accepted defenses:

1. The mark or trademark used by you is not likely to cause misunderstanding as to origin of commerce (no likelihood of confusion) with the registered trademark of the right holder. Except for a well-known trademark (temporarily not mentioned here), a finding of likelihood of confusion – a required factor - always depends on the existence of both conditions: (a) the alleged mark is identical with or confusingly similar to the registered mark; and (b) goods/ services bearing the alleged mark and the registered mark must be identical with or similar to, each other. Only one of these two conditions is broken you would successfully defense yourself.

2. The alleged mark has been honestly used by you in the name of a person, or in the form of a symbol describing the type, quantity, quality, utility, value, geographical origin and other characteristics of goods/services. For example: “Rice is life”, a tagline by FAO, or “Tinh Hoa Qua Viet” (translated as “the essence of Vietnamese gifts”) can be freely used without violating the rights of registered trademarks “Tinh Hoa” (translated into English as “the essence”) and “Lotus Foods, Rice is Life”;

3. You are using the alleged trademark pertaining to a particular product which is circulated, imported, exploited from the very product of the right holder who had legally launched to the market, including foreign markets. Products subject to this defense are also known as "gray markets” or "parallel import" products and the Vietnamese law allows you to purchase, trade, circulate and exchange products in the gray market or parallel import without infringement; or 

4. More badly, if you are accused of criminal liability, such as crime of producing and trading counterfeit goods (Sections 192, 193, 194 and 195) or crime for infringing upon industrial property rights (Section 226) of  the Penal Code 2015 amended in 2017 taking effect from January 1 2018, the best way can pull you out of the most severe risk is that you must attempt to successfully convince the proceeding-conducting agency that you only inadvertently, not intentionally, performed the act of infringement in an innocent manner or without willfulness because where it is determined that the infringement has been done with unintentional fault, the required constituent elements of criminal responsibility are not satisfied under the laws.

Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057

 Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anti-counterfeiting, litigation and domain name matters.