Baker McKenzie allied with IP firm BMVN International LLC and assists both multinational and major domestic clients with the management, protection and enforcement of IP portfolios. Praised for its ‘deep knowledge of IP enforcement’, the group’s offering extends across contentious and non-contentious mandates, covering trademarks, patents and copyright. Manh Hung Tran leads the firm’s IP practice in Vietnam with a wide ranging practice, advising high-profile clients, as well as start-up companies, on trademark prosecution and enforcement matters. Another name of note is ‘talented and reliable’ Minh Tri Quach, whose practice focuses on anti-counterfeiting mandates. Special counsel Kieu Hoa Tran is another key team member.
Intellectual property: international firms in Vietnam
Baker McKenzie
Practice head(s):
Manh Hung Tran
Other key lawyers:
Minh Tri Quach; Kieu Hoa Tran
Testimonials
‘The team are people-oriented, friendly and turn-around times are fast.’
‘Team of experienced lawyers with deep intelligence of local regulations and practices. The team provides practical and tailor-made advice for each case depending on its nature. Furthermore, they manage the cases very well and keep their clients posted in a timely manner of any developments.’
‘A reliable law firm. They have deep knowledge of IP enforcement, and the services are rendered according to the highest standards, following a structured approach and reasoning. The communication is clear and easy to understand.’
‘The team is professional and very well equipped with the necessary legal knowledge.’
‘Mr. Minh Tri Quach is good and very professional, and his legal advice is on point and practical.’
‘Manh Hung Tran manages a big team of IP lawyers and paralegals. He and his team are very responsive to enquiries and requests and make the client feel confident when handling the case to them. Manh Hung Tran always maintains a high standard of professionalism.’
‘Mr. Minh Tri Quach is a person with people-oriented leadership and, more importantly, practical in approaching legal matters, both commercial and legal.’
‘Minh Tri Quach is a talented and reliable lawyer. His work is very accurate and qualitative. He understands the clients needs and has a result-oriented approach. He has very good connections with local law enforcement authorities too.’
Tilleke & Gibbins
Praised as ‘one of the leading teams in the country’, Tilleke & Gibbins’ ‘strong sector focus on life sciences and healthcare makes it a go-to firm’, as demonstrated by its advice to several multinational pharmaceutical companies. Other sectors of focus include technology, media, fashion, automative, electronics and luxury goods. In addition to its expertise in patent litigation, the team expertly handles a wide range of other IP work, including anti-counterfeiting matters, strategic filing advice, and commercial IP issues, and also boasts one of the largest IP registration practices in the country. Managing director and IP enforcement expert Thomas Treutler heads the practice and is commended as ‘a great lawyer who knows the nitty gritty of the IP market in Vietnam’, while Linh Thi Mai Nguyen leads the trademark group with local and international experience. Other names of note include Thanh Phuong Vu, who leads the patent group, Loc Xuan Le and Trung Nguyen, who head the IP enforcement teams in Hanoi and Ho Chi Minh City respectively.
Practice head(s):
Thomas Treutler
Other key lawyers:
Loc Xuan Le; Linh Thi Mai Nguyen; Trung Nguyen; Thanh Phuong Vu; Hung Tuan Nguyen
Testimonials
‘The IP team in Vietnam is one of the leading teams in the country. Their strong sector focus on life sciences and healthcare makes it a go-to firm.’
‘Reliable, responsive and a pleasure to work with.’
‘High quality team in the local market; a trusted brand.’
‘The professionals have in-depth knowledge on a wide range of IP matters. Their team consists of members with high professionalism, expertise, and experience, and they have a very good understanding of the clients’ needs and expectations. They stand out as one of the best.’
‘This team is very pro-active and fast in their responses. Their commercial and industry knowledge is a real asset. They are also very good lawyers and sound in their advice.’
‘Linh Thi Mai Nguyen is responsible for trademark matters in Vietnam. She provides high quality services and has in-depth knowledge on all trademark matters, including filing and prosecuting trademark applications, handling oppositions, as well as invalidation and cancellation actions.’
‘Thomas Treutler is the managing director of Tilleke & Gibbins’ Hanoi and Ho Chi Minh City offices. He is highly responsive, professional, and well respected and liked by his peers and clients.’
‘Thomas Treutler is a great lawyer who knows the nitty gritty of the IP market in Vietnam. His insight and understanding is valued by all clients.’
Key clients
Bayer
BMW
Boehringer Ingelheim
Christian Louboutin
Eli Lilly No
General Electric
Victoria’s Secret
Les Laboratoires Servier
Merck, Sharp & Dohme
Moët Hennessy
Work highlights
- Acted for CTC Global Corporation in successfully negotiating an amicable and mutually beneficial settlement in a dispute against a Vietnamese company that was distributing products suspected to be infringing CTC Global’s patents.
- Acted for a client in the successful registration of the trademark THERMOS, despite initial objections from the IP Office that the term was generic.
Frasers Law Company
The IP team at Frasers Law Company
provides ‘a very strong international approach to the local area’ and advises clients across a broad range of matters, from registration and enforcement of IP rights, drafting contracts, IP licensing and protection of trade secrets, to contentious copyright mandates and patent and trademark infringements. IP-related M&A is a key area of expertise for the group, with sectors of focus including education, food and beverage, banking, manufacturing, retail, and biotechnology. Nguyen Van Vien chairs the practice, and has substantial expertise in developing and enforcing IP legislation in Vietnam. Managing partner Mark Fraser
and Justin Gisz are key contacts in the practice.
Practice head(s):
Nguyen Van Vien
Other key lawyers:
Justin Gisz; Mark Fraser
Testimonials
‘Frasers Law are unique in Vietnam as they bring a very strong international approach to the local area. They apply this international know-how to the needs of multinational clients within Vietnam and ensure that local requirements are understood and met.’
‘They understand what is required and how to protect the interests of the client.’
‘Mark Fraser leads a team of talented and experienced lawyers who understand the value of IP and know how to preserve and retain this.’
‘Frasers have developed creative solutions in branding across different countries and have developed solutions that work with other areas of law, such as M&A.’
Key clients
Moov
Abu Dhabi Investment Authority
Dr. Reddy’s Laboratories
Work highlights
- Acted for Abu Dhabi Investment Authority in relation to a $240m investment transaction involving a complex structure of assigning or licensing the right to use the registered trademarks and designs from parent companies who own such trademarks and designs to the Vietnam based subsidiary.
- Acted for Timo Digital Bank on its restructuring of its corporate group, including the holding of the software and IP assets which comprise the Timo Digital Bank platform.
- Acted as local counsel for Dr. Reddy’s Laboratories relating to its cross-border extension of licence granted to it by Veeva.
Rouse Legal
IP-focused firm Rouse Legal expertly handles trademark and patent prosecutions and portfolio management for clients in the chemical, consumer, energy and life sciences, manufacturing and technology sectors. The group has also been growing its Northeast Asian client base. Practice head Yen Vu has an impressive roster of clients, advising international brands on both contentious and non-continuous IP matters, including protection, enforcement and commercialisation of patents, trademarks, copyright, and domain names. Tue Do and Dung Vu are key figures in the team.
Practice head(s):
Yen Vu
Other key lawyers:
Tue Do; Dung Vu
Key clients
Hitachi, Ltd.
Hermes Sellier
CJ CheilJedang Corporation
Western Digital Technologies, Inc.
Hanoi Capella Hotel
Yuhan Corporation
Korea Intellectual Property Strategy Agency
Pulmuone Co., Ltd.
Korea Trade-Investment Promotion Agency
The Siam Cement PLC
An Phat Holdings Jsc.
Work highlights
- Assisted an American fast food restaurant chain in successfully securing the trademark registration of their slogan.
- Assisting a US-based healthcare product provider with enforcement actions against a highly sophisticated chain of manufacturing-distributing companies who use the client’s various trademarks on their nutritional products.
- Represented a paints and coatings manufacturer, and coordinated with the Economic Police in Da Nang City to arrange a raid action and prosecute the counterfeiter of the client’s paint products.
Schmitt & Orlov
Specialist firm Schmitt & Orlov handles the entire spectrum of IP matters, advising clients on trademarks, patents, industrial designs, copyrights and related infringements, enforcement and contractual drafting. Its client roster includes established multinational companies and local start-ups on the acquisition, protection, enforcement and exploitation of their IP rights. Country manager Hau Nguyen is also deputy director of the firm’s Southeast Asia IP practice, and has considerable experience in IP mandates. Bangkok-based Daniel Greif leads the Southeast Asia IP group, while senior trademark attorney Yen Pham spearheads the trademark practice.
Practice head(s):
Hau Nguyen; Daniel Greif; Yen Pham
Other key lawyers:
Yen Pham; Tu Nguyen
Testimonials
‘The team is experienced, extremly service oriented, quick and always has a practical approach to meet the client’s best interest.’
‘Daniel Greif is experienced, as he has in-house expertise and therefore perfectly understands the client’s needs.’
‘Hau Nguyen is an excellent lawyer with clear language and advice, and always does an excellent job.’
Key clients
LVMH Group
Casas Del Toqui S.A.
Active Brands AS
Coach IP Holdings LLC
Sonder Canada Inc.
Work highlights
- Assisted the LVMH Group in providing enforcement strategies and organising successful enforcement actions that resulted in removing counterfeits for a series of well-known brands in Hanoi and Ho Chi Minh City.
- Assisted Coach IP Holdings to implement enforcement programs in Ho Chi Minh City, and to remove counterfeits through market monitoring.
- Assisted Casa Del Tolqui S.A. in responding to a provisional refusal notice from Vietnam’s Intellectual Property Office due to a cited mark, and the firm was successful in registering the client’s mark in Vietnam.