Vietnam

One of the most vibrant emerging markets in Asia, Vietnam is steadily expanding its profile in the IP space. Its participation in the Trans-Pacific Partnership has necessitated amendments to domestic trademark law and the entry into force of a new Penal Code in July 2016 has made significant headway in this regard. Under the revised code, legal entities can now be held criminally liable for counterfeiting and the threshold for punishing infringers has been lowered. Commentators are also hopeful that new Prime Minister Nguyen Xuan Phuc will drive increased government support to improve awareness of IP rights protection. However, others still lament the lack of funding for and dearth of examiners at the National Office of Intellectual Property (NOIP); the registry’s backlog remains a vital concern.

Firms

1
BMVN LLC, a member of Baker McKenzie
Pham & Associates
Rouse Legal
Tilleke & Gibbins
Vision & Associates
2
D&N International
Hogan Lovells International
InvestConsult Group
LÊ & LÊ
3
Aliat Legal
Ambys
Bross & Partners
Invenco (Vietnam International Trademarks & Patents Agent)
Investip Intellectual Property Law Firm
IPMAX Law Firm
Schmitt and Orlov
T&T Invenmark Co Ltd
Aliat Legal
Punching well above its weight, the IP wing of Aliat has earned acclaim from peers and patrons alike. “The level of its clients and quality of its work are both impressive and it continues to grow rapidly.” As proof of its progress, it recently opened several new offices in Vietnam and Cambodia. Duong Thanh Long is the key to the firm’s success in the trademark sphere. “Very versatile and incredibly hardworking”, he is equally adept on both contentious and non-contentious briefs. “He is highly responsive and takes a results-oriented approach. Never afraid to provide an honest opinion, he won’t sugar-coat his advice.”
Ambys
Ambys devises incisive solutions to all manner of branding issues; the boutique has steadily built up a glowing reputation for its “forward-thinking and reliable advice”. A cutting-edge docket management system and multilingual capabilities make it a top choice for businesses throughout Southeast Asia and beyond. Founder and “excellent” practitioner Thu Anh Nguyen operates adroitly across the IP spectrum.
BMVN LLC, a member of Baker McKenzie
“BMVN is a valuable partner for any client; it is always responsive and matters are handled in a timely manner.” With a local team backed by a potent international network, it is “extremely strong in the trademark arena, particularly in enforcement”. The group shines brightest in the anti-counterfeiting domain and has proven a reliable partner to global mega-brands in quashing Vietnamese copycats. Playing an integral role in these campaigns is Minh Tri Quach, who offers an “exceptional professional service”. Likewise, managing partner Manh Hung Tran has represented leading rights holders in numerous raid actions. Well versed in all facets of trademark law, he has done much to promote the development of IP practice in Vietnam.
Bross & Partners
One of the newer faces on the scene, Bross & Partners maintains a dynamic and highly efficient trademark operation. Established in 2008, it has fast become the trusted adviser of many household names; tackling the branding issues of food and beverage companies is a forte. “Its trademark and design prosecution work is both prompt and professional.” Le Quang Vinh helms the practice.
D&N International
A fixture on the Vietnamese IP landscape since 1992, D&N International wins plaudits for its refined, forward-thinking counsel. The trademark team handles non-contentious mandates with aplomb, but also makes light work of multi-faceted litigation and transactions. It has a knack for getting patrons past tricky obstacles, as evidenced by recent successes for E-mart and British Sky Broadcasting Group; the NOIP initially rejected applications for both clients’ marks, but the refusals were overturned on appeal as a result of the team’s creative arguments. Both cases were masterminded by trademark head Dang Thi To Hang. Managing partner Thuy Dang also provided invaluable support with her 30-plus years of comprehensive patent, design, copyright and trademark experience.
Hogan Lovells International
Though smaller in size than some local competitors, Hogan Lovells’ Vietnamese operation has ably asserted its presence on the domestic market, thanks to its “broader and more strategic point of view, which you won’t find with many of the other longstanding firms here”. Its trademark team is supported by the firm’s formidable international resources, including auxiliary practices that infuse its branding advice with a distinctly commercial flavour. Based in Hong Kong, Henry Wheare “takes a big-picture perspective” and adeptly shepherds brand owners through the complexities of Southeast Asian markets and beyond. A dependable ally for myriad multinationals, Nga Nguyen focuses on enforcement across the IP spectrum, from protecting domain names to neutralising counterfeiters.
Invenco (Vietnam International Trademarks & Patents Agent)
Despite suffering a split in 2015, Invenco retains admirable depth and solid connections in the trademark arena. It continues to diligently serve a host of loyal patrons which have stayed for its responsive and value-packed services, which span the contentious/non-contentious divide. Le Xuan Truong is the one to see for any branding concerns.
InvestConsult Group
“Leading IP firm” InvestConsult provides serious value for money at every turn, thanks to its intuitive grasp of commercial realities. With up-to-the-minute knowledge of clients’ industries, the trademark squad offers a streamlined service for all branding matters, from advising on complex strategy to executing intricate licensing deals. Thi Thu Ha Pham runs the Hanoi office; she is an adroit portfolio manager for companies of all shapes and sizes.
Investip Intellectual Property Law Firm
Having been in operation for nearly three decades, Investip has a sophisticated understanding of IP rights protection on the Vietnamese market. Leveraging its strength in the patent domain, it takes a holistic approach to brand protection that leaves no stone unturned. Director of trademarks and litigation Anh Ngoc Nguyen is a striking all-rounder who dispatches trademark, copyright, design and unfair competition briefs with equal finesse.
IPMAX Law Firm
The cost-effective yet top-quality service on offer at IPMAX belies the size of this nimble boutique, easily rivalling that of much larger firms. It owes much of its success to star player Son Doan, a “really exceptional practitioner with a strong following of clients”. He wins accolades from many contemporaries and is a boon to both domestic and foreign entities, which appreciate his vast international experience and intimate familiarity with local markets.
LÊ & LÊ
LÊ & LÊ pulls out all the stops to secure watertight protection for clients’ most valuable brands. Although it can assist across all phases of the trademark lifecycle, the compact outfit attracts the warmest praise for its savvy strategic counsel. US-educated and multilingual Le Hoai Duong is the cornerstone of the impressive group. His “professor-like knowledge” has earned him much-deserved veneration from peers.
Pham & Associates
The “clever people” at Pham & Associates “know what works best for clients and how to make it happen”. A prolific trademark filer, the firm is revered for its shrewd handling of domestic and international portfolios. However, it is also a prominent player on the contentious stage and plays a key role in numerous crucial infringement and unfair competition disputes. Many stakeholders on the Vietnamese market consider managing partner Vu Khanh Toan Pham a mentor and profess deep admiration for his “extensive knowledge”. The “widely respected IP expert” is “smart and insightful, and you can always learn from him”. Trademark guru Xuan Thu Nguyen is a major pillar of support on the soft IP front.
Rouse Legal
Virtually no other international firm has more Asian IP experience than Rouse; it has had a presence in the region for nearly 25 years, with boots on the ground in Vietnam since 1997. Under the watch of country manager Chris Vale, the “outstanding team” has expanded significantly in the past two years, attracting talent away from other international firms. Vale “has a total understanding of what it means to protect a mark in Southeast Asia” and has put together a formidable crew of contentious specialists, who take the fight to counterfeiters in no uncertain terms. However, the group also excels at portfolio management and dispute resolution. All-rounder Yen Vu is a senior associate on the team who works regularly with Vale, but also thrives when taking the lead on tricky oppositions for the likes of the French Institut National de l’Origine et de la Qualité and Mars. “An analytical approach helps her to solve hard problems and she always puts the client first.”
Schmitt and Orlov
A prime choice for international brand owners, Schmitt and Orlov makes its debut in the rankings this year. Navigating European and Chinese patrons through uncharted territories is a forte; however, it is fast becoming a favourite of many local enterprises, too. “Accomplished in both trademark prosecution and enforcement”, Vanja Kovacevic has companies queueing up to instruct her. “Her performance always goes beyond expectations and she is well known for her strong business acumen, IP expertise and creative and strategic thinking. She is also really efficient and pays close personal attention to all matters.”
T&T Invenmark Co Ltd
Founded by former members of Invenco, T&T Invenmark breaks into the WTR 1000 this year as an enticing new option for brand owners. Having acquired much of the legal talent of its predecessor, the boutique has hit the ground running and already gained the custom of a noteworthy and varied range of clients. It may be fresh on the market, but its seasoned practitioners collectively represent an enviable knowledge base. Group leader Le Xuan Thao is a key contact.
Tilleke & Gibbins
“Vietnam isn’t the easiest jurisdiction to protect a mark in, but you are in good hands with Tilleke & Gibbins; it certainly eases a lot of the stress.” It plays host to one of the largest branding teams in the country and consistently places among the top filers each year. It has also enjoyed a surge of contentious work of late, which has been spearheaded by Loc Xuan Le. He has recently racked up a string of enforcement victories, brought domain name issues to a successful close and orchestrated key raids against imitators. Newly promoted trademark head Linh Thi Mai Nguyen has complex opposition and cancellation actions sewn up; she recently safeguarded Mitsubishi’s famous marks by persuading the NOIP to shoot down a competitor’s application for a confusingly similar mark. Last but not least is Thomas Treutler, an adroit counsellor who is admitted to practise in both Vietnam and the United States. “He is a strong lawyer and fluent in Vietnamese; he has done a great job of coordinating the firm’s IP practice.”
Vision & Associates
Vision & Associates impresses with its “tireless dedication to customers and impeccable quality of work”. “It is a top-tier firm; its workload is considerable and it is always a major competitor in this market.” Prevailing in high-stakes infringement disputes, managing substantial cross-border portfolios and running crucial raids for heavyweight brand names are all in a day’s work for its well-organised team. Firm captain Pham Nghiem Xuan Bac draws on decades of legal experience – including a stint as a legal expert and examiner for the NOIP – to maximise the value of brands. The same can be said of Le Thi Kim Dzung; she steers the IP practice and astutely advises businesses operating in Vietnam, Laos and Cambodia. Contentious whizz Do Quang Hung has secured favourable results in thousands of IP cases for both domestic and international clients.

Individuals

Pham Nghiem Xuan Bac - Vision & Associates
Son Doan - IPMAX Law Firm
Le Hoai Duong - LÊ & LÊ
Le Thi Kim Dzung - Vision & Associates
Vu Khanh Toan Pham - Pham & Associates
Manh Hung Tran - BMVN LLC, a member of Baker McKenzie
Thomas J Treutler - Tilleke & Gibbins
Chris Vale - Rouse Legal
Henry Wheare - Hogan Lovells International
Thuy TH Dang - D&N International
Dang Thi To Hang - D&N International
Do Quang Hung - Vision & Associates
Vanja Kovacevic - Schmitt and Orlov
Loc Xuan Le - Tilleke & Gibbins
Duong Thanh Long - Aliat Legal
Thu Anh Nguyen - Ambys
Linh Thi Mai Nguyen - Tilleke & Gibbins
Bich Thuy Nguyen - Viet IP
Nga Nguyen - Hogan Lovells International
Anh Ngoc Nguyen - Investip Intellectual Property Law Firm
Xuan Thu Nguyen - Pham & Associates
Duc Hieu Nguyen - Phuoc & Partners
Minh Huong Nguyen - Ahoa Law Office
Thi Thu Ha Pham - InvestConsult Group
Minh Tri Quach - BMVN LLC, a member of Baker McKenzie
Yen Vu - Rouse Legal
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Issue 68