Nguyen Vu Quan
KENFOX IP & Law Office - Position: Partner
IP Attorney; Bachalor of English
Intellectual Property Law (Patent, Industrial Design, Trademark, Copyright and handling IPR infringements)
18 year of experience in intellectual property field
1. Engelhard Arzneimittel GmbH & Co. KG. v. Vinh An Thang Long Investment JSC
Represented Engelhard Arzneimittel GmbH & Co. KG. (“Engelhard Arzneimittel”), a 140-year-old Germany-based pharmaceutical company with a strong commercial presence in Vietnam through the sale of cough medicine bearing the mark (PROSPAN). Engelhard Arzneimittel’s Vietnamese distributor, Sohaco Pharmaceutical Group, provided QUAN with initial information that a Vietnamese entity named “Vinh An Thang Long Investment JSC” (“Vinh An Thang Long”) manufactured and marketed cough dietary supplement products bearing the mark contained in packages of which outer representation carrying a high degree of the Prospan cough dietary supplement package. The case was submitted to Vietnam Competition Administration Department (“VCAD”), which is now known as “Vietnam Competition and Consumer Authority” (“VCCA”) for settlement under unfair competition proceedings. VCAD sought expert opinions/expert witness from the “National Office of Intellectual Property of Vietnam” (“NOIP”), which is currently known as the Intellectual Property Office of Vietnam (“IP Vietnam”). NOIP, after reviewing the case, gave its written opinion that the use of packages with an outer layout similar to that of Engelhard Arzneimittel constituted unfair competition. The working session was then held with the participation of the director of Vinh An Thang Long as the infringer, QUAN, as the IP attorney of Engelhard Arzneimittel, and VCAD officials. Vinh An Thang Long was forced to terminate its unfair competition and a huge fine was imposed on the infringer.2. DIHON Pharmaceutical Group Co., Ltd. v. Asem Vina JSC
Represented DIHON Pharmaceutical Group Co., Ltd. (“DIHON”), a China-based reputable pharmaceutical company with a significant commercial presence in Vietnam through the sale of medicated shampoo branded “” (Haicneal). DIHON’s Vietnamese distributor, Dong A Pharmaceutical JSC, informed QUAN that a company in Hai Duong Province, Vietnam named “Asem Vina JSC” manufactured and marketed cosmetic shampoo under the mark (HAINOZAL), but the shampoo packaging's outer appearance is strikingly similar to that of DIHON. Under the leadership of QUAN, an in-depth investigation revealed that a large quantity of HAINOZAL cosmetic shampoo was being manufactured at the Asem Vina JSC factory. The case was submitted to the Inspectorate of the Ministry of Science & Technology (“IMOST”). After securing the NOIP’s expert opinions/expert witness in favour of DIHON, a raid was conducted against Asem Vina JSC. Thousands of infringing products were seized and destroyed before the witness of DIHON and IMOST.3. SPY v. SPY
Represented MASSCO JSC (MASSCO), a well-known chemical and cosmetic manufacturer in Vietnam, who is the owner of the mark “SPY” for the goods in Class 05 under Trademark Registration No. 231175. In June 2020, sales agent of MASSCO in Hanoi informed us that a third party advertised to sell SPY washing liquid bearing the mark “SPY” on ZALO online platform. We found that the above products might be imported from Thailand. KENFOX conducted a market investigation and found that one company in Ha Tinh, DAHACHI Joint Stock Company, had imported a huge quantity of laundry detergents bearing the SPY brand from Thailand to Vietnam. KENFOX has submitted a dossier requesting that the Institute of Intellectual Property Science render its expertise opinion on the infringement, and has also sent an intervention request to the Vietnamese authorities, including the General Department of Customs, Market Management Department, and Sub-Department of Hai Phong Customs, requesting that they conduct post-inspection and handle the trademark infringement committed by DAHACHI company.4. Handling advertisement of genuine branded goods bearing the mark “RULE 1”:
Represented an American manufacturer, RULE ONE Proteins LLC (RULE ONE), of dietary supplement to fight against advertisement of its branded goods bearing the mark “RULE 1” on the websites of an Vietnamese company named “Muscle Up JSC” (Muscle Up). Muscle Up used to be a former distributor of RULE ONE, but is no longer a distributor. However, Muscle Up continues to advertise for sales of the dietary supplement manufactured by our Americal Company on its two corporate websites. KENFOX has submitted a petition with the Vietnam Intellectual Property Research Institute (VIPRI), requesting this authority to render its expertise opinions on whether Muscle Up’s advertisement of RULE ONE’s branded dietary supplements constitutes a trademark infringement or not.
VIPRI, in its first assessment conclusion/expertise opion, concluded that: If it cannot be established that the dietary supplements advertised by Muscle Up are genuine, Muscle Up's advertisement constitutes trademark infringement.
Disagreeing with this conclusion, KENFOX analyzed the applicable legal requirements and sought VIPRI to reconsider the case. VIPRI, having been persuaded by KENFOX's arguments, has changed the first assessment conclusion and issued the second assessment conclusion in favor of RULE ONE, which concludes that the products advertised by Muscle Up Company are real, but if the advertisement is not authorized by RULE 1, it still constitutes trademark infringement.
Based on VIPRI’s second assessment conclusion, KENFOX sent a warning letter to to Muscle up. This company was aware of their wrong-doins and stopped the trademark infringements.5. “Cleo” vs. Royal Sofa
Our client’s, Nha Viet Furniture Manufacturing and Trading Co., Ltd. (“NHA VIET”) located at: Hanoi, Vietnam, is the ower of the above logo registered in form of trademark and is protected as applied-art work in Vietnam. NHA VIET specializes in manufacturing and supplying imitation leather products, moletkin imitation leather fabrics, leather covers, leather furniture covers with the brand "Cleo, Exclusive Synthetic Leather, picture". NHA VIETN registered the above trademark in 2010.
In October 2021, our client detected that a competitor in Hanoi, Da Anh Shop has imported, distributed and widely sold the imitation leather products bearing the mark “Royal sofa, device”. Obviously, the figurative element (device) is completely identical to our client’s figurative element athough the verbal elements “Cleo, Exclusive Synthetic Leather” in our client’s mark are different from the verbal element “Royal sofa” in the adverse party’s mark.
In order to claim trademark infringement, we assisted our client to conduct an onsite investigation and detected that a large of “Royal sofa” immitation leather products were being displayed at Da Anh Shop in Hanoi. We then filed a petition with Vietnam Intellectual Property Research Institute (VIPRI), requesting this body to render its expert opinion on whether use of the above sign by Da Anh Shop constitutes a trademark infringement. VIPRI, after reviewing our petion, issued its assessment conclusion that if DA ANH’s royal sofa logo constitutes an infringement over our client’s trademark.
Based on this VIPRI’s assessment conclusion, we sent a Cease & Desist Letter to Da Anh Shop. This infringer voluntarilily signed a Letter of Undertaking and commited that they would not trade in the immitation leather products bearing the log “Royal sofa, device” in the market any longer. Our client accepted Da Anh Shop’s undertaking and their apology
- Advising strategies on copyright infringement and obtaining the Bailiff’s Certification
In October 2021, a Korean IP Law firm, Logos approached us to seek our advice on actions against copyright infringers in Vietnam. The infringers unlocked the Ragnarok game and installed Ragnarok game on the website <https://rom.land/> for players in different countries to join. The game players just need to pay a certain money and granted access to online play the Ragnarok game.
The infringer is a Vietnamese individual allegedly named “Tran Vu Hoai” and runs the above website. In order to collect money from players in different countries, Tran Vu Hoai sought for collaborators/partners who are Vietnamese person living in such country in order to set up a bank account there and collect money from the players there. After that, the Vietnamese individual returned all the money to Tran Vu Hoai and received a certain commission. In Korea, a Vietnamese person named Nguyen Anh Tu opened an account and received money from the Korean players of Ragnarok game. The Korean Police found out Nguyen Anh Tu’s accounts set up via Industrial Bank of Korea and requested this person at the police station.
Nguyen Anh Tu, upon working with Korean Police, declared that he only assisted a Vietnamese person who is living in Vietnam to receive money from the Korean players of Ragnarok game and received certain commission. He is not the owner of the above website.
Because this is an internet-based infringement, we advised Logos to firstly secure infringement evidence via the Baliff in Hanoi who then witnessed the infringements and evidence of infringement, and issues a Bailiff's Certification. Such a Bailiff's Certification would serve as irrefutable evidence of infringement by the infringer before the enforcement authority if the infringer argues that they were not involved in the infringement or that they have removed the infringing material from their machines/computers.
After obtaining the Bailiff’s Certification, sought ways to contact Tran Vu Hoai, the alleged owner of the above website. We made a payment of VND 300,000 (US$ 13) to Tran Vu Hoai - the name appears on the website <https://user.rom.land/> to purchase the right to play the Ragnarok game online. After making payment, we accessed different fields/sectors on the website, but failed to work out where the Ragnarok game is installed in the website. Hence, posing as a new game player, we made a phone call to Mr. Tran Vu Hoai via his phone number <0901131413> informing him that we paid VND 300,000 to his Momo account. Mr. Tran Vu Hoai received our phone call and revealed that he actively removed the Ragnarok game out of the website <https://user.rom.land/>. We tried to ask the reason why the removal has been made, but Mr. Tran Vu Hoai declined to make any additional disclosures while suggesting that he might return the amount of VND 300,000 to us or we may choose other online game to play.
- Represented a Korean owner of the mark “Foellie” a well-known inner perfume for women to take actions against copyright infringement in Vietnam.
- Represented EVELINE Cosmetics, a well-known company in Poland to claim back its trademark via trademark opposition proceedings in Vietnam.