You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

April 30, 2015

Busy Spring for Enforcement Authorities in Vietnam

Subscribe to Updates
Managing Intellectual Property

In early 2015, Vietnamese authorities continued their stepped-up IP enforcement campaigns, showing a commitment to improve the IPR situation against the backdrop of TPP and EU FTA negotiations. Notable cases included:

Trade Name Infringement Precedent

In Vietnam, the law on resolving trade name disputes is quite complicated due to overlapping regulations that have changed several times. Moreover, the local Departments of Planning and Investment (DPI), which handle business registration matters, are typically reluctant to order a business to change its corporate name, even if there has been a decision from an IP authority declaring the name to be a trademark infringement. This is due to the rarity of such cases, so it is new territory for the local DPIs. Furthermore, it is an administrative burden for many parties, as bank records, tax records, signage, contracts, etc., all may be affected by a name change.

A creative approach was recently taken to enforce a trade name infringement decision. Specifically, a Vietnamese computer company had registered a corporate name identical to the name of a famous foreign insurance company, and had registered infringing domain names. A complaint for cybersquatting and trademark infringement was filed by the insurance company at the Ministry of Science and Technology (MOST) Inspectorate. Because the case was based on well-known trademark grounds (due to the companies being in different sectors), the MOST Inspectorate queried the National Office of Intellectual Property (NOIP—the Vietnam IP registry) for its opinion on the fame of the insurance trademark. The NOIP opined that the mark was widely used and recognized by the Vietnamese public. Accordingly, the MOST Inspectorate then issued a decision declaring the infringements.

After petitioning the Ministry of Information and Communications (MIC) based on MOST’s decision, the domain names were withdrawn by VNNIC (the Vietnam domain name registry), pursuant to an MIC directive. However, despite a petition from the rights holder, the local DPI declined to force the computer company to change its corporate name. Accordingly, counsel representing the insurance company petitioned the Ministry of Justice’s Division of Law Enforcement Supervision, which is charged with overseeing the consistent application of laws by all agencies, to intervene and compel the local DPI to order the infringer to change its business name, to be consistent with MOST’s conclusion on the case. Based on the MOJ directive, the DPI then ordered the infringer to change its name.

This case shows the complexities in handling IPR infringements in Vietnam, as many agencies may be involved in handling a case. For example, this case involved six authorities: MOST, NOIP, MIC, VNNIC, local DPI, and MOJ. The case also displays the transparency in the Vietnamese legal system, when various agencies can be petitioned and handle matters in correct accordance with their own authority, and proper procedures for intervention are found in the law and can be effectively utilized by legal counsel.

Strides in Patent Enforcement

Following several recent patent infringement victories last year in administrative and civil forums by foreign patent holders in the pharmaceutical and agrochemical sectors, patent litigation jurisprudence continued to develop in early 2015. Of note is the following recent case in which a major U.S.-based patent holder had obtained an expert opinion from the Vietnam Intellectual Property Research Institute (VIPRI) opining that a Vietnamese company’s diabetes medication was infringing. As a result, the MOST Inspectorate inspected the Vietnamese company and seized and ordered the re-export of the raw materials used to make the infringing product. Also, the packaging was ordered to be destroyed.

Most importantly, as part of a settlement with the authorities, the infringer agreed to withdraw the marketing authorizations of the products at the Drug Administration of Vietnam (DAV). This was possibly the first order to re-export a raw material infringing a pharmaceutical patent.

In another case involving a major European pharmaceutical company, the DAV expressly affirmed that it will only order the withdrawal of a marketing authorization for an infringing product upon receipt of a decision from a court or an IPR enforcement authority (such as the MOST Inspectorate)—this is a key point for practitioners and rights holders to note.

Parallel Imports Seized

Parallel imports of all products are generally allowed in Vietnam. They are especially popular in the ultra-competitive pharmaceutical sector, and can have a deleterious effect on pharmaceutical company revenues. In a precedent-setting case, the Hanoi Market Management Department (MMD) seized several parallel imports of a diabetes drug based on counsel’s successful argument that the product sub-label contained a false designation of origin, stating the wrong country of manufacture. Public policy arguments were also presented—that the storage standards for the actual zone of manufacture would not guarantee that the product would be preserved adequately in Vietnam, and that the country of export had banned the export of the product. The MMD fined the distributor and destroyed the goods, and sent a communique to the DAV requesting that order be restored in relation to parallel imports to protect the public

These cases were handled by Tilleke & Gibbins’ Vietnam offices. In other key IP news from early 2015:

  • INTA and the MOST Inspectorate inked an MOU for a project on well-known trademarks to culminate in a report on recommendations for best practices, and a roundtable meeting. This is an important initiative as Vietnam prepares to amend its IP Law.
  • Vietnam’s MOJ and other authorities are redrafting the IP crime provisions of the Criminal Code. Stakeholders hope for more application of criminal liability for IPR crimes.
Download Full Article
Related Professionals

Location

RELATED INSIGHTS​ 

September 23, 2026
Many multinational companies are familiar with the concept of “time off in lieu” (TOIL), under which employees receive compensatory time off instead of overtime pay for additional hours worked. While TOIL is common in many jurisdictions, employers in Thailand should be cautious, as Thai labor law does not expressly recognize TOIL as a substitute for statutory overtime-related compensation. Under the Labor Protection Act B.E. 2541 (1998) (LPA), employees who work overtime or perform work on holidays are generally entitled to statutory overtime, holiday, or holiday overtime compensation, including: Overtime Pay: 1.5 times the employee’s normal wage rate for work performed beyond normal working hours on a regular working day. Holiday Pay: 1 or 2 times the employee’s normal wage rate for work performed during normal working hours on a holiday, depending on category of employee. Holiday Overtime Pay: 3 times the employee’s normal wage rate for overtime work performed on a holiday. Importantly, the LPA does not contain any provision expressly permitting employers to substitute overtime-related compensation with compensatory leave, as such compensation is treated as a payment obligation rather than additional time off. Why TOIL Can Be Risky in Thailand Thai labor law is protective in nature, and statutory entitlements to overtime, holiday, and holiday overtime pay are generally regarded as minimum employee rights. As a result, these rights cannot be waived, even with the employee’s consent. Therefore, an employer who grants TOIL instead of paying statutory overtime-related compensation may still be exposed to claims for unpaid amounts, notwithstanding that compensatory leave has already been provided. Thai courts have affirmed this principle, holding that employers remain liable for statutory payments for work performed beyond normal working hours even where substitute time off has been granted. Are There Any Exceptions? Certain categories of employees are exempt from overtime-related compensation,
Read More
September 23, 2026
Arbitration under Thai law rests on consent. Section 11 of the Arbitration Act B.E. 2545 (2002) requires an arbitration agreement to be in writing and signed by the parties. This may also be satisfied by communications, an unchallenged allegation in pleadings, or incorporation by reference to a document containing an arbitration clause. A non-signatory cannot, as a general rule, be compelled to arbitrate merely because it participated in the transaction, received a benefit, or belongs to the corporate group of a signatory. Thai law nevertheless permits arbitration agreements and awards to affect third parties indirectly in limited circumstances. Under section 24, an arbitration clause is separable from the main contract; the invalidity of the contract does not invalidate the clause. In Supreme Court Judgment No. 3918/2563, an apparent sales contract concealed a construction contract and was void under the Civil and Commercial Code. However, the concealed construction contract and written arbitration clause remained effective. The tribunal had jurisdiction, and its award was enforceable under the Arbitration Act. Under the Arbitration Act, when a claim or liability is validly transferred, the transferee is bound by the related arbitration agreement. This includes assignment, transfer of obligations, legal succession, and subrogation. Depending on the facts and contract and agency law, consent may arise through execution by an authorized agent, ratification, assumption of obligations, or conduct accepting the contract and its arbitration clause. Thai law respects separate corporate personality. The group-of-companies doctrine has no statutory basis under the Arbitration Act, while alter egos or sham allegations require compelling evidence and an identifiable legal basis. Supreme Court Judgment No. 9161/2568 illustrates the procedural treatment of non-signatories. A consultancy contract required LCIA arbitration seated in Dubai. When the employer sued a consultant and his spouse in Thailand concerning a housing loan, the court disposed of
Read More
September 22, 2026
Tilleke & Gibbins has contributed the Thailand chapter to Shipping Law 2026 from the International Comparative Legal Guides (ICLG) series published by Global Legal Group. This comprehensive guide provides detailed legal analysis of shipping laws, regulatory frameworks, and maritime dispute resolution across key maritime jurisdictions worldwide. Each chapter follows a structured Q&A format, organized into critical sections covering key aspects of maritime law and practice, including: Marine casualties, collision liability, pollution regimes, salvage, and general average Marine cargo claims, statutory carrier obligations, liability limits, and misdeclaration of cargo Maritime passenger claims, personal injury liabilities, and consumer case procedures Vessel arrest, counter-security, provisional attachment, and maritime liens Evidence preservation, perpetuation procedures, and electronic document disclosure Court jurisdiction, specialized IP&IT litigation, arbitration, and alternative dispute resolution (ADR) Enforcement of foreign court judgments and arbitral awards under the New York Convention 1958 Offshore wind energy initiatives, regulatory permits, and cabotage restrictions Sector developments, including the Landbridge project and decarbonization trends The Thailand chapter, authored by Noppramart Thammateeradaycho and Panchaya Rattanaumnuaishai, examines these topics in detail, highlighting key statutory regimes such as the Carriage of Goods by Sea Act (COGSA), the Arrest of Ships Act, and the jurisdiction of the Central Intellectual Property and International Trade (IP&IT) Court. The complete Thailand chapter is available as a PDF below. The Thailand chapter—and the full Shipping Law 2026 guide—are also freely available on the ICLG website.
Read More
September 21, 2026
Thailand’s first-to-file trademark system has a serious vulnerability: it lacks both an explicit mechanism for refusing bad-faith registrations and any means of invalidating them in court after the five-year limitation period has expired. While brand owners worldwide confront trademark squatting, Thailand’s statutory silence stands out, particularly in light of AIPPI’s 2017 Resolution Q249, which recommended that every jurisdiction provide clear tools to address bad faith at all stages of the trademark lifecycle. Nearly a decade later, Thailand has yet to act. This article proposes a concrete reform blueprint, drawing on the legislative models of China, the United Kingdom, and the European Union. The Statutory Gap Under the Thai Trademark Act B.E. 2534, no provision expressly authorizes examiners to reject an application on grounds of bad faith. Section 8(10) addresses well-known marks but offers no relief where the targeted mark lacks well-known status. Practitioners have resorted to Section 8(9)—which bars marks “contrary to public order, morality, or public policy”—as a workaround. However, this provision was designed to address the characteristics of the mark itself, not the applicant’s intent. Thai Supreme Court decisions have split on whether it can reach bad-faith conduct, creating persistent legal uncertainty. The gap extends beyond examination. Civil actions to cancel a bad-faith registration must be brought within five years—a deadline that frequently expires before foreign brand owners discover the squatted mark. Cancellation through the Board of Trademarks remains available but is slow, costly, and subject to court appeal, leaving bad-faith registrations in force during protracted proceedings. The system effectively rewards squatters and penalizes legitimate owners. Lessons from International Best Practices Several major jurisdictions have already closed this gap. China’s 2019 amendment to Article 4 of the Trademark Law introduced an absolute ground for refusal: “bad faith trademark applications without intent to use shall be rejected.” Bad
Read More