The Legal 500

Baker & McKenzie advises on trade mark registration, enforcement and portfolio management, and, to a lesser extent, on patents and copyright. With particularly strong representation in the pharmaceutical and apparel sectors, it recently advised a pharmaceutical multinational on a trade mark opposition after a local company sought a similar brand name and trade dress; and represented another drug manufacturer in pursuing a patent infringement action. Department head Manh Hung Tran is well connected and knowledgeable.

‘An excellent resource with deep industry knowledge’, Hogan Lovells International LLP advises multinationals operating across the Mekong Delta region. It provides IP portfolio management services including advice on applications, registration, oppositions, enforcement and rights transfers across trade marks, domain names and copyright, as well as some patents. Its clients include banks, manufacturers, and heavy industry: among them Anheuser-Busch InBev, Biofarma, Cadbury plc, Deutsche Telekom, ExxonMobil, Ford, Land Rover and Prudential plc. Of counsel Gregory Buhyoff heads the practice in Vietnam, and is recommended.

Tilleke & Gibbins advises multinational manufacturers on portfolio management, oppositions and enforcement of trade marks, patents, domain names and copyright. It represented Panasonic and Lacoste in successfully opposing applications seeking marks similar to their own trade marks. It also successfully pursued several pharmaceutical and chemical patent infringement cases. Senior associate Nga Thi Phi Nguyen heads the department, and is recommended along with newly promoted partner Thomas Treutler. Hien Thi Thu Vu joined from Invenco in November 2010.

Frasers advises on trade mark and copyright rights transactions, including licensing and franchising. Clients include fast food restaurant and café chains, consumer goods manufacturers, and life sciences companies. Van Vien heads the practice with support from managing partner Mark Fraser.

Rouse Legal’s IP practice spans patents, designs, copyright, domain names, and its core work in trade marks. The nine-associate team frequently works alongside colleagues regionally advising clients on brand management. The firm is representing a pharmaceutical company in pursuing a legal case following a raid on a counterfeiter’s premises, and is advising another drug manufacturer on a trade dress dispute. Associate Stanislas Barro is the key contact in Vietnam, and Vietnam country manager Chris Vale is frequently involved from his Hong Kong base. Associate Hien Dao is the key figure for disputes.

D&N International is beginning to expand into other areas of law but IP work – especially patents and trade marks – remains very much its core expertise. The firm advises on application, prosecution, rights transfers, infringements and enforcement. In February and March 2011, it represented Samsung Electronics at the court of first instance and then the Supreme People’s Court in Hanoi in successfully asserting the client’s rights to the domain name samsungmobile.vn, which had been appropriated by cyber-squatters. In so doing, the case set precedent as the first such dispute to come before Vietnamese courts. Other clients include LG, Generali S.p.A., and Royal Doulton. Managing partner Dang TH Thuy, Dang Thi Hong Nga, Ha Hoang Le and Dang Thi To Hang are all recommended.

Pham & Associates is Vietnam’s most famous IP firm and it remains a go-to option. It has a ‘very good’ reputation for registering or opposing patents, trade marks, designs, and copyright. Its key clients include adidas, Bristol-Myers Squibb, Eli Lilly, Honda, Kawasaki and Nokia. Patent specialist Duong Tu Giang and trade mark expert Nguyen Xuan Thu are recommended. Managing partner Pham Vu Khanh Toan is excellent when available.

Vision & Associates is ‘a very good IP firm’, primarily advising on prosecution, enforcement and franchising of trade marks, copyright and domain names. Recent highlights include advising BASF on trade mark and patent licensing agreements with Construction Research & Technology GmbH; advising Omega Pharma regarding a trade mark infringement by Vifranco Pharma; and acting for Yahoo! Inc in pursuing action against an infringer that had registered the name “Yahooooo!!! Private Company”. Le Thi Kim Dzung, Do Quang Hung and managing partner Pham Nghiem Xuan Bac are recommended.

Invenco has ‘some very good lawyers’ who advise comprehensively on all matters pertaining to patents, trade marks, industrial designs and copyright, including franchising and IP rights transfers. Le Xuan Thao and Le Dang Tho are recommended.

InvestConsult Legal Services’ IP department advises international and local clients on patent and trade mark registration, enforcement, and IP rights transfers.

‘Very small, but very good for patents’, Trung Thuc JSC makes patent and trade mark applications for pharmaceutical companies, vehicle manufacturers and telecoms companies. It gains substantial referral work from foreign law firms. Thieu Hai Yen is ‘a very good patent lawyer’.

Bizlink Lawyers & Consultants advises clients from across Southeast Asia on technology transfer and IP licence agreements, as well as trade mark registration and enforcement. Clients include Hanoi Electronics and Honda. Tran Duc Son is the key contact.

Tra & Associates advises on registration and enforcement of patents, trade marks and designs. Patent work remains the core of the practice under managing partner Tran Huu Tra, but the trade mark practice is growing fast.

VCI Legal handles IP portfolio management, including franchising, for clients such as Coca-Cola and Unilever. Phung Anh Tuan is the key contact.