Trademark Disputes Between Vietnamese and Foreign Enterprises in Vietnam

Trademark disputes between domestic and foreign-invested enterprises are on the rise, especially as the Vietnamese market becomes increasingly attractive, intellectual property procedures are improved, and consumers become more brand-conscious. This article summarizes the latest legal regulations in Vietnam, practical dispute resolution methods, and provides strategic recommendations for both Vietnamese and foreign businesses operating in Vietnam.

1. Current Trademark Regulations in Vietnam

1.1 Amended Intellectual Property Law (2022) and Key Reforms

The 2022 amendment to the Intellectual Property Law introduced several important updates on trademarks. For example, the law now allows termination of a conflicting registered trademark if it is identical or similar to the name of a protected plant variety.

The definition of "well-known" trademarks has also been revised: it no longer requires recognition "throughout the entire territory of Vietnam" but only by a "relevant public."

Additional grounds for refusing trademark applications have been added, including conflicts with names of plant varieties, trade names, geographical indications, industrial designs, copyrights, etc.

1.2 Rights and Procedures for Foreign Entities to Register Trademarks

Foreign individuals and organizations can register trademarks in Vietnam if they have a production or business base in Vietnam, or through a legally authorized representative.

If a foreign entity has no local presence, they must file through a licensed industrial property representative in Vietnam.

Foreign trademark applications must meet all legal requirements: being visually perceptible, distinctive, and not identical or confusingly similar to existing trademarks, trade names, or protected IP rights.

2. Common Trademark Disputes and Resolution in Vietnam

2.1 Typical Dispute Scenarios Between Vietnamese and Foreign Enterprises

Dispute due to earlier filed applications
If a foreign business applies to register a trademark that is already applied for by a Vietnamese company (or another foreign entity), the "first-to-file" principle is applied.

Disputes involving well-known trademarks
A well-known foreign trademark may be protected in Vietnam even without local registration or when registered for unrelated goods/services. The owner of such a well-known mark can oppose new applications that may cause confusion.

Conflicts between trade names and trademarks
Some Vietnamese or foreign enterprises may use trade names identical or similar to registered trademarks, or vice versa. This creates disputes over priority of use or protection rights.

Disputes from prior use vs. registration
In certain cases, even unregistered trademarks that have been widely used in Vietnam may receive protection or be used to oppose new filings, provided there is sufficient evidence that the relevant public widely recognizes them.

2.2 Methods of Dispute Resolution

Via the Intellectual Property Office (IPO):

• File oppositions to pending trademark applications based on prior rights (earlier trademarks, trade names, industrial designs, copyrights, etc.).

• Request cancellation of granted trademarks based on grounds like bad faith or likelihood of confusion.

Civil Litigation in Court:

• File lawsuits to stop infringement, claim damages, request public apologies or corrections, and demand destruction of infringing goods/materials.

• Request preliminary injunctions in case of urgent threats or risk of evidence being destroyed.

Administrative and Criminal Enforcement:

• Market surveillance, IP inspectors, customs, or police can impose administrative penalties: fines, seizure of goods, suspension of business, confiscation of tools.

• Serious violations may be subject to criminal prosecution under the Penal Code and IP Law.

3. Practical Challenges and Preventive Strategies for Businesses

3.1 Practical Difficulties in Trademark Disputes

• Proving a trademark is "well-known" requires extensive time and evidence. There is still no detailed guidance on defining the “relevant public.”

• Inconsistent assessment of similarity/confusion among authorities may lead to delays in handling IP violations or pending opposition/cancellation requests.

• Businesses (Vietnamese or foreign) that fail to register or monitor the market proactively may be preempted by bad-faith registrations. The first-to-file rule remains decisive.

3.2 Recommended Preventive Strategies

• Early Registration: Secure trademark rights as early as possible and conduct clearance searches to avoid conflicts.

• Evidence of Prior Use: If the mark is unregistered, keep documentation proving prior use (e.g., ads, invoices, product packaging, photos).

• Clear Scope of Goods/Services: Define the scope of protection carefully to avoid overlap with existing marks.

• Ongoing Monitoring: Keep track of new filings to file timely oppositions or cancellation requests.

• Appeal or Cancellation Dossiers: When an improper registration is discovered, businesses should prepare legal grounds (bad faith, well-known status, prior use).

• Professional Representation: Foreign entities should work with certified IP representatives to ensure legal compliance and effective follow-up.

Conclusion

Trademark disputes between Vietnamese and foreign enterprises in Vietnam are increasingly diverse, especially after the 2022 amendments to the Intellectual Property Law came into effect. While the rights and procedures for foreign entities are more clearly recognized, domestic businesses still have effective tools to protect their brands through early registration, opposition, and evidence of prior use.

If your business is concerned about potential trademark disputes or needs to evaluate brand protection strategies in Vietnam — consult a professional legal advisor to develop a safe and effective intellectual property plan.

Contact DEDICA Law Firm for expert legal consultation!

📞 Hotline: (+84) 39 969 0012 (Available on WhatsApp, WeChat, and Zalo)

🏢 Head Office: 144 Vo Van Tan Street, Xuan Hoa Ward, Ho Chi Minh City (144 Vo Van Tan Street, Vo Thi Sau Ward, District 3, Ho Chi Minh City)

🕒 Business Hours: Monday – Friday (8:30 AM – 6:00 PM)

Reach out today for a free initial consultation with our team of professional lawyers!