Kenfox IP & Law Office

No. of Partners : 4

No. of Lawyers : 10

Languages : English, Vietnam

Offices : Hanoi, Ho Chi Minh, Cambodia, Laos and Myanmar

Since its establishment in 2010, KENFOX IP & Law Office has grown to become one of the most respected and leading IP firms in Vietnam. We have consistently been recognized for our excellence, being named "Boutique Trademark Law Firm of the Year in Vietnam – 2022" by Global Law Experts and "Boutique Trademark Law Firm of the Year in Vietnam – 2021" by the Lawyer Network. In 2023, Asia IP ranked us in Tier 3 for Patent and Trademark prosecution and Tier 2 for Copyright in Vietnam. In Laos, we are consistently ranked Tier 1 in Patent and Trademark.

Our areas of practice encompass intellectual property rights, litigation and dispute resolution, commercial law, and other legal services. We have been pioneers in trademark, patent, IP confirmation, and both administrative and judicial IP protection. Our team comprises high-caliber lawyers and sharp IP experts dedicated to protecting your legal rights with efficiency and integrity.

With over a decade of litigation experience, KENFOX IP & Law Office has cultivated a positive rapport with a variety of governing bodies (e.g., Inspectorate of the Ministry of Science & Technology, Inspectorate of the Ministry of Culture, Sports and Tourism, Market Management Bureau, the Economic Police, Vietnam Intellectual Property Research Institute, Expertise Center of Copyright, Related Rights, Court, etc.). We have a long track record of successfully working with the aforesaid law enforcement agencies and police investigators to conduct raids that have resulted in the seizure of hundreds of thousands of counterfeit products.

At KENFOX IP & Law Office, you will find the knowledge, experience, and professionals to handle all aspects of law in both domestic and international matters. We are the trusted partner of many multinational and international enterprises, helping them develop strategic decisions and secure their interests in Vietnam, Laos, Cambodia, and Myanmar.

Our firm is highly regarded for its strong reputation in intellectual property and litigation. Our attorneys are distinguished by their extensive experience and success in assisting leading international and domestic corporations with IP prosecution and enforcement in Vietnam, Laos, Cambodia, Myanmar and beyond.

Testimonials

• “Counsel – this is an excellent summary of the circumstances and incredibly helpful.  We are so appreciative of your excellent and prompt and comprehensive help”
• “Our team greatly appreciates working with you”
• “We will do as KENFOX suggests. As long as our company exists, only KENFOX is working as a partner”.

Key clients

OPPO, Media, TCL, UCB, Amway, SICPA, Grabtaxi, BAYER, Bose Corporation

Work highlights

• Acted for a Vietnamese pharmaceutical giant (with nearly 2000 drug stores across Vietnam) in a complex trade mark infringement case at Ho Chi Minh City Court.
• Assisted a US nutritional company to deal with advertisement of genuine products on websites, reversing VIPRI’s initial Assessment Conclusion.
• Acted against a professional trademark squatter in Vietnam.

1. What do you see as the main points that differentiate KENFOX from others?

Recognized as one of the most professional IP law firms in Vietnam, Laos, Cambodia and Myanmar, KENFOX IP & Law Office can be distinguished from others in the following aspects:

[i] Regional expertise and local presence: KENFOX has a strong local presence and deep understanding of the IP landscapes in Vietnam, Laos, Cambodia, and Myanmar. Our regional expertise allows us to handle the specific legal complexities and regulatory requirements of each country, providing tailored solutions that meet the unique needs of our clients.

[ii] Exceptional legal expertise: Our attorneys and lawyers are highly proficient in their respective legal fields. Many of our senior lawyers have dedicated over 15 years to serving the same client accounts. Their expertise is continually enhanced through collaborative teamwork and our corporate management structure.

[iii] Comprehensive legal services: We offer a full range of IP services, from registration and enforcement to litigation and advisory. Whether it's patents, trademarks, copyrights, or trade secrets, KENFOX handles all aspects of IP protection, ensuring our clients receive comprehensive support throughout the entire IP lifecycle.

[iv] Competitive pricing: We provide competitive and flexible pricing structures that provide excellent value for the high-quality services we deliver. Our goal is to make top-tier IP protection accessible to businesses of all sizes.

2. What emerging trends do you foresee in the IP landscape in Vietnam over the next 12 months, and what factors are driving these changes?

The intellectual property (IP) landscape in Vietnam is undergoing significant changes, and several trends are emerging. In our opinion, 4 key developments are expected to happen in the next 12 months as follows:

[1] Increased IP Litigation: Historically, IP disputes in Vietnam rarely escalated to court proceedings. However, there has been a noticeable uptick in IP infringement cases reaching the courtroom recently. However, there has been a notable increase in IP infringement cases recently. This surge indicates a shift in the enforcement of IP rights. The rise in litigation suggests that IP holders are becoming more proactive in protecting their rights and seeking legal remedies.

[2] Criminal IP Litigation: In 2022, Vietnam saw 220 criminal investigations related to IP rights infringement, with 112 cases going to trial, predominantly involving counterfeiting. While Vietnamese courts have traditionally been hesitant to prosecute IP infringement under Article 226 of the Criminal Code, there has been a marked increase in such cases. IP rights holders are increasingly involved in verifying materials or products under investigation and can seek damages in these criminal proceedings.

[3] Civil IP Litigation: Civil litigation remains a less utilized method for enforcing IP rights compared to administrative measures. The challenges here include lengthy and costly processes and the complexity of legal proceedings. Cases can drag on for years, and the courts may lack expertise in IP matters, leading to dissatisfaction among stakeholders. Despite these hurdles, court judgments provide a stronger deterrent to infringers than administrative decisions.

[4] IP Application Examination: The Intellectual Property Office of Vietnam (IP Vietnam) is working on improving its processes and setting new targets for 2025. Enhancing the efficiency of IP application examinations could result in faster processing times and better protection for IP rights holders.

3. Can you provide a practical example of how KENFOX IP & Law Office has added value to a client's business?

Our firm, KENFOX IP & Law Office, has effectively assisted a Korean company to deal with a bad faith trademark squatter. This case is quite complicated and requires practical experience and expertise from our team. You may see how we successfully transformed this company’s position from having no registered IP rights to significantly strengthening their position in the dispute against the professional squatter.

[1] Background

LAORGANIC, a leading manufacturer of healthcare products in Korea, has been successfully marketing its Foellie inner perfume products across various countries, including Vietnam, since 2017. However, they encountered a significant issue when a Vietnamese individual applied to register the "FOELLIE" trademark for cosmetic products in Class 03, potentially causing confusion with LAORGANIC's well-established brand.

[2] Detecting infringement

Upon investigating, we discovered that a Vietnamese company was openly selling products under the "FOELLIE" trademark on their websites and e-commerce platforms, falsely claiming them as Korean imports. Moreover, the director of this company was the same individual who had filed the trademark application, indicating prior knowledge of LAORGANIC's brand.

[3] Challenges: Obstacles faced by LAORGANIC in Vietnam

• Lack of registered rights: Although LAORGANIC had been commercializing their products in Vietnam since 2018, they had not registered their trademark until 2020, after discovering the infringement.
• No direct business relationship: There was no direct connection between LAORGANIC and the Vietnamese applicant, complicating the assertion of bad faith.
• First-to-File system: Vietnam follows a "first-to-file" system for trademark registration, making it difficult for unregistered marks to prevail in opposition proceedings.
• Evidence reluctance: Despite evidence of widespread use of the Foellie brand, IP VIETNAM's examiners are often reluctant to favor unregistered marks unless the case is exceptionally strong.

[4] Actions: Steps taken to strengthen LAORGANIC’s position

Given the complexities, we devised a strategic approach to bolster LAORGANIC’s case:

• Formal opposition: We initiated an opposition against the Vietnamese party's trademark application, citing malicious intent and highlighting LAORGANIC’s extensive use of the mark.
• Additional protection: We applied to register the Foellie product label as applied-art works in Vietnam, adding an extra layer of IP protection.
• Copyright infringement assessment: We filed a copyright infringement assessment with the Examination Center of Copyrights and Related Rights (ECCR). The ECCR confirmed the blatant resemblance between the two logos, supporting our claim of infringement.
• Complaint to authorities: We lodged a formal complaint with Vietnam's Market Management Authority to address the Vietnamese company's illicit activities.
• Raising awareness: We participated in IP seminars organized by KOTRA in Vietnam, involving IP VIETNAM and other stakeholders, to raise awareness and garner support against trademark squatting.

[5] Outcome and Value Addition

• Our strategic interventions not only halted the infringing activities but also strenthened LAORGANIC’s IP rights in Vietnam. The case attracted significant attention from KOTRA and KOIPA, leading to discussions with IP VIETNAM about cooperation initiatives and highlighting the importance of combating trademark squatting.

By protecting LAORGANIC’s Foellie brand, we helped secure our client’s market position, ensuring continued business growth and protecting their reputation

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