The best way for businesses to handle trademark disputes. - Tran Tran Law

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Trademark disputes in Vietnam represent a state of legal conflict between parties regarding ownership or usage rights of a brand, requiring rigorous resolution through civil, administrative, or border control measures. Mastering the litigation sequence not only protects intellectual property (IP) assets but also affirms a fair market position for businesses. The following article is synthesized and compiled by the expert team at Trần & Trần, providing profound insights into the current legal framework to help businesses identify risks and equip themselves with a solid protection roadmap for sustainable development in Vietnam and across the Southeast Asian region.

1. Legal Nature and Reality of Trademark Disputes in Vietnam

In the digital economy era, a trademark is more than just a logo or a name; it is the crystallization of trust and the brand-building efforts of an enterprise. Trademark disputes arise when there is an overlap or confrontation of interests between parties regarding an identification mark.

1.1. Definition and Common Types of Trademark Disputes

According to general regulations in Vietnam, a trademark dispute typically centers on determining the lawful owner or whether a specific use of a sign causes confusion for consumers.

Disputes over Registration Rights: Occurs when two or more parties concurrently file for identical or confusingly similar trademarks. In Vietnam, the First-to-file principle is usually the decisive metric.
Disputes over Infringement Acts: One party uses the protected trademark of another for similar goods or services without authorization.
Disputes arising from Contracts: Related to the assignment of ownership or licensing (renting the right to use) a trademark that does not comply with commitments.

1.2. Similarity Classification Table in Trademark Disputes

Criteria	Identification Characteristics	Likelihood of Confusion
Identical	The sign is exactly the same as the reference mark in structure, color, and presentation.	Very High (Counterfeiting)
Visual Similarity	Graphic presentation, layout, or font styles share significant similarities.	Medium – High
Phonetic Similarity	Pronunciation of the brands is identical or nearly identical (e.g., “Kaka” and “Caca”).	High (Likely in audio advertising)
Semantic Similarity	Both express the same content or are translations (e.g., “Apple” and “Quả Táo”).	Medium

2. Regulatory Framework Governing Trademark Disputes

The Vietnam legal system regarding intellectual property has made great strides to align with international agreements such as TRIPS, CPTPP, and EVFTA.

2.1. Current Law on Intellectual Property

The core document is the Law on Intellectual Property 2005 (amended and supplemented in 2022). This serves as the compass for all activities from rights establishment to resolving trademark disputes. Notably, the 2022 amendment tightened regulations on well-known trademarks and protection measures in the electronic environment.

2.2. Guiding Decrees for Enforcement

Decree 65/2023/ND-CP: Details industrial property, registration procedures, and the basis for determining elements of infringement.
Decree 99/2013/ND-CP: The most important document for administrative sanctions, specifying fine levels and forms of confiscation or destruction of infringing goods.
Decree 17/2023/ND-CP: Provides detailed guidance on copyright, which is sometimes applied in trademark disputes involving applied fine arts.

3. Competent Authorities for Dispute Resolution and Enforcement

In Vietnam, rights holders can choose various channels to protect their trademarks depending on their objectives (immediate cessation of violation vs. financial compensation).

3.1. Administrative Authorities

This is the most common channel due to its speed.

Inspectorate of the Ministry of Science and Technology: Competent to resolve complex cases requiring deep IP legal expertise.
Market Management Bureau: Specialized in inspecting, seizing, and sanctioning acts of trading infringing goods in the domestic market.
Police Force: Intervenes when infringement shows signs of a criminal offense (large-scale counterfeiting).

3.2. Customs Authorities

Customs acts as the “border gatekeeper.” Enterprises can file requests for inspection and supervision of imported/exported goods to prevent infringing items from entering Vietnam.

3.3. People’s Court

The Court resolves disputes via civil procedures. This is the only authority competent to declare that an infringer must pay financial damages to the trademark owner. Currently, cases are often handled at the People’s Court at the provincial level or specialized courts in Hanoi and Ho Chi Minh City.

4. Administrative Procedures for Handling Trademark Infringement

Administrative procedures focus on deterrence and the immediate cessation of unlawful acts.

4.1. Preparation and Evidence Collection

Before filing a request, the rights holder must prove ownership and the opponent’s infringement.

Protection Title: Provide a certified copy of the Trademark Registration Certificate still in effect.
Evidence of Infringement: Samples of infringing products, photos of signage, advertising materials, or infringing websites.
Expert Assessment: File an application for an Assessment Conclusion from the National Institute of Intellectual Property. This is the most crucial evidence for administrative agencies to issue a sanction decision.

4.2. Market Raid Sequence

Step 1: File an Enforcement Request: Submit the application to the Inspectorate of Science and Technology or Market Management.
Step 2: Information Verification: Functional agencies conduct reconnaissance and verify the business location and warehouse of the suspected party.
Step 3: Conduct Inspection: Form an inter-agency team to raid the scene. If infringing goods are found, the team will record a violation and temporarily seize exhibits.
Step 4: Issue Sanction Decision: Based on the value of goods and the level of violation to determine fines and remedial measures.

Administrative Sanction Levels for Trademark Violations (Reference)

Value of Infringing Goods	Fine Amount (For Organizations)	Supplementary Measures
Under 5,000,000 VND	10,000,000 – 20,000,000 VND	Confiscation/destruction of infringing elements.
50,000,000 – 100,000,000 VND	80,000,000 – 120,000,000 VND	Suspension of business for 1-3 months.
Over 500,000,000 VND	Up to 500,000,000 VND	Confiscation of violation means/tools.

5. Civil Litigation Procedures for Trademark Disputes in Court

If an enterprise needs to claim material damages (due to revenue loss) or moral damages, civil litigation is the only path.

5.1. Filing and Acceptance

The plaintiff files a lawsuit along with documents that have been consularly legalized (if it is a foreign enterprise) to the Court. After paying the court fee advance, the case is officially accepted.

5.2. Mandatory Mediation

According to the Civil Procedure Code 2015, the Court will organize mediation sessions for parties to reach an agreement. This is an opportunity for the infringer to voluntarily stop the act and for the infringed party to recover damages without waiting for a long-term judgment.

5.3. First Instance Trial and Remedies

If mediation fails, the case is tried publicly. Measures usually applied by the Court include:

Compulsory cessation of the trademark infringement.
Compulsory public apology and correction in the media.
Compensation for material damages and reasonable attorney fees.

6. Methods for Determining Damages in Trademark Disputes

The determination of compensation in Vietnam is based on the principle of compensating for actual losses incurred.

6.1. Material Damages

Pursuant to Article 205 of the Law on Intellectual Property, material damages include:

Loss of Property: Costs for destroying counterfeit goods, advertising costs to restore reputation.
Decrease in Income/Profit: Loss of sales volume due to consumers mistakenly buying the infringer’s goods.
Loss of Business Opportunity: Contracts canceled due to the trademark being disparaged or causing confusion.

6.2. Moral Damages and Attorney Fees

If the infringement damages the brand’s reputation, the enterprise can claim moral damages ranging from 5,000,000 to 50.000.000 VND. Importantly, the rights holder has the right to demand the infringer pay for attorney fees incurred for legal procedures.

7. The Role of Expert Assessment at the National Institute of IP

In most trademark disputes, the expert opinion of the National Institute of Intellectual Property (VIPRI) is considered “steel evidence.”

Assessment Content: Evaluates the confusing similarity between the alleged infringing mark and the reference mark.
Legal Value: Although the assessment conclusion does not have absolute binding value like a Court judgment, enforcement agencies like Market Management or the Inspectorate of Science and Technology almost entirely rely on this document to issue sanction decisions.

8. Border Control Measures for Infringing Goods

This mechanism is particularly important for businesses producing components, electronics, or consumer goods at risk of being counterfeited abroad and imported into Vietnam.

8.1. Recordal at the General Department of Customs

Trademark owners file a recordal application at the Customs Supervision and Management Department. The dossier includes images of genuine and fake goods and a list of authorized importers.

8.2. Suspension of Customs Procedures

Upon detecting a suspected shipment, Customs will suspend clearance for 10 working days. During this time, the trademark owner must confirm the goods and perform deposit security measures to request official handling.

9. Defense Strategies When Accused of Trademark Infringement

Enterprises facing infringement allegations should calmly review legal bases for counter-arguments.

Request for Cancellation of Plaintiff’s Trademark: If the plaintiff’s mark has not been used continuously for 5 years, you have the right to request the Intellectual Property Office to terminate their title.
Proof of Prior Use Rights: If you have used the mark in good faith and extensively before the plaintiff’s registration, you may be entitled to prior use rights under the law.
Fair Use (Descriptive Use): Argue that the use of the term is merely descriptive of the characteristics or origin of the goods rather than being used as an exclusive trademark.

10. Professional IP Services at Trần & Trần

With over a decade of experience accompanying the business community, Trần & Trần ( Trần & Trần Intellectual Property Co., Ltd.) affirms its position as a leading reputable industrial property representative. We understand that each trademark is a strategic asset, and protecting that asset requires a thorough understanding of the law in multiple countries.

10.1. Core Services of Trần & Trần

Our team of experts provides comprehensive solutions for enterprises to confidently develop their brands:

Trademark, Design, and Patent Searches: Conduct in-depth searches on national and international databases to evaluate protection possibilities, helping businesses avoid dispute risks from the start in Vietnam, Laos, Cambodia, and Myanmar.
Consulting on Registration and Usage Feasibility: Analyze current status and provide optimal solutions so that trademarks can be successfully registered and used legally.
Trademark Rights Establishment Registration: Perform full procedures for registering trademarks, industrial designs, patents, copyrights, and new plant varieties in Vietnam and internationally.
Amendment and Assignment of Trademarks: Handle changes regarding owners, addresses, or the assignment of IP assets between enterprises.
Infringement Handling Advice and Procedures: Assist rights holders in drafting cease and desist letters, preparing assessment dossiers, and coordinating with functional agencies to handle IP rights infringement.
Intellectual Property Asset Management: Build management systems and optimize the value of IP assets for enterprises, ensuring long-term and sustainable development.

10.2. Why Choose Trần & Trần?

At Trần & Trần, we do not just work on files; we work with the enthusiasm of companions.

Practical Experience: We have been on the ground since the early days to introduce IP to Vietnamese enterprises, turning IP from a “cost” into a “long-term investment.”
International Capacity: With resounding success in establishing rights in Laos and Cambodia, we are ready to take Vietnamese brands to the Southeast Asian level.
Expert Team: Lawyers and consultants with deep understanding of intellectual property law, always updated on the latest developments in the global economy.

Summary and Strategic Advice for Businesses

Trademark disputes and litigation procedures in Vietnam are a complex field requiring a combination of legal knowledge and practical experience. Understanding your rights, from rights establishment to enforcement at Customs or the Court, is the foundation for building a strong brand. In today’s integration context, a trademark is the “passport” for your goods to enter the world.

Do not let your trademark be infringed due to a lack of preparation. Invest in searching and registering rights today to create a barrier against any intent to profit from your brand’s reputation.

CONTACT TRẦN & TRẦN NOW FOR THE MOST IN-DEPTH PROTECTION CONSULTATION!

Contact Information

Trần & Trần Intellectual Property Co., Ltd.

Email: ip@trantran.vn
Address: P802, Talico Building, No. 22 Ho Giam Street, Quoc Tu Giam, Dong Da, Hanoi.
Hotline: 024 3732 7466
Working Hours: 8:00 AM – 18:00 PM (Monday – Friday)