Intellectual property: international firms in Vietnam

Baker McKenzie

Baker McKenzie has expertise in both contentious and non-contentious matters, with its work covering trade marks, patents and copyright matters. IP portfolio management work is a notable driver of mandates, with owners of well-known brand names and trade marks turning to the firm for advice on the acquisition, protection, enforcement and monetisation of IP rights. Practice head Manh Hung Tran has been very active in the consumer goods and retail sector recently, advising clients on trade mark prosecution, opposition and enforcement issues. He works with Minh Tri Quach , who has expertise in advising on anti-counterfeiting measures.

Practice head(s):

Manh Hung Tran 

Other key lawyers:

Minh Tri Quach

Testimonials

‘The team has great expertise in IP subjects, especially on opposition and invalidation matters. They always answer our questions quickly and alert us when they find TM applications that might be of interest to us.’

They have great deal of experience with trade mark issues. They have a deep understanding of the law but at the same time can provide practical and constructive options in a timely manner.’

They understand the business goals of their client as well as the character and likely options available to adverse parties. This facilitates communication and alignment on strategy.

‘Baker & McKenzie is a top-tier firm. They are very responsive and the quality of their work is excellent, relative to other firms I have worked with. I appreciate how they balance attention to detail without losing sight of the big picture. A very trustworthy firm.’

‘The individuals I have worked with at Baker McKenzie are very talented people. I feel confident that I am getting the best advice for my business. I most value their responsiveness and clear and concise communications.’

Tilleke & Gibbins

Tilleke & Gibbins distinguishes itself in the life sciences sector, where it acts for seven of the 10 largest pharmaceutical companies in the world. Elsewhere, other areas of strength include TMT, automotive, fashion and footwear, electronics and luxury goods. The firm has one of the largest IP registration practices in the Vietnam market, and it also excels in IP prosecution and enforcement, domain name issues and data privacy, among other areas. Loc Xuan Le specialises in patent litigation and represents a number of pharmaceutical and agrochemical companies. Linh Thi Mai Nguyen is a key name for trade mark work and often assists major corporates with contentious and non-contentious matters. Managing director Thomas Treutler leads the team.

Practice head(s):

Thomas Treutler

Testimonials

‘We continue to work with them on extensive number of trade mark matters, especially important matters needing immediate and careful handling, because they have an outstanding team that consist of professionals who we can always rely on.’

‘With high degree of professionalism and understanding of the legal issues, they always seek to find a solution to every problem. I believe these are some of the many reasons why we choose to work with them for more than a decade. ’

‘Thomas  Treutler, is always on our top list of attorneys in the firm that comes to mind. His many years of experience and professionalism is top-notch.’

The lawyers understand the client’s needs fast and act upon it. Their expertise is excellent and their responsiveness as well as structured way of working is impressive.’

They provide excellent legal services and advice, are fast and straight to the point. They seem to have a very good network with the local authorities, which is a great asset.’

Key clients

Bayer

BMW

Boehringer Ingelheim

Christian Louboutin

Eli Lilly

General Electric

L Brands/Victoria’s Secret

Les Laboratoires Servier

Merck, Sharp & Dohme

Work highlights

  • Filed nearly 1,000 patent applications for clients across all technical fields.
  • Advised on a trade mark opposition on behalf of Rolls-Royce.
  • Acted for Vilube which forced a trade mark infringer to cease infringement and change its company name, along with paying damages and legal fees.

Frasers Law Company

Frasers Law Company’s recent work included assisting clients with trade mark registrations and regulatory compliance, as well as the IP aspects of M&A transactions and franchising agreements. It also handled challenges to infringements of patents, copyrights and trade marks. The practice is led by senior intellectual property lawyer Nguyen Van Vien, who has over 30 years of experience and is a qualified patent attorney. He has been instrumental in the development and enforcement of legislation in Vietnam. Mark Fraser and Justin Gisz also assist with IP issues.

Practice head(s):

Nguyen Van Vien

Other key lawyers:

Justin Gisz ; Mark Fraser

Testimonials

‘This firm provides a comprehensive legal strategy and can lead legal negotiations to meet the expectation of all parties.’

‘Justin Gisz has extensive knowledge in legal matters. He provides a high quality legal advices which not only can identify the risk to our company and also protect the best interest of our company.’

Hands-on partner involvement, depth of talent, knowledge driven, high level of professionalism, ability to advise across sectors and functions. Frasers provides a very personalized and an engaging client service environment. We feel very welcome when dealing with the team.

Mark Fraser: extremely knowledgable, commercial and someone that can get complicated deals across the line. Justin Gisz: detail oriented with a very good understanding of the technical aspects of the Vietnam legal system.’

Key clients

Familymart Co. Ltd

Stark Corporation

Bellamy’s Organic

Work highlights

  • Assisted Stark Corporation with all of the post-completion intellectual property aspects of a high-profile $240m M&A transaction, including transfers of trade mark registrations and domain name registrations.
  • Advised Bellamy’s Organic on registration of international trade marks in Vietnam.

Rouse Legal

At international IP firm Rouse Legal, the practice in Vietnam operates under the leadership of principal Yen Vu, who has almost 20 years of experience in IP enforcement and litigation. She is particularly active in trade mark oppositions and litigation, patent disputes and domain name disputes.

Practice head(s):

Yen Vu

Key clients

Google LLC

HERMES SELLIER

Hitachi Metals

Nissan Tanaka Corporation

Sekisui Chemical Co., Ltd.

CJ CheilJedang Corporation

Korea Intellectual Property Strategy Agency (KISTA)

Western Digital Technologies, Inc.

ABB Asea Brown Boveri Ltd

Viacom International Inc.

Pulmuone Co., Ltd.

A.O. Smith Corporation

Work highlights

  • Entrusted by the Korean Government’s Trade Promotion Agency to create IP guides to support Korean companies doing their business across Southeast Asia, including in Vietnam.
  • Initiated a civil litigation on behalf of A.O. Smith Corporation against a local infringer based on trade mark and trade name claims.
  • Advised a supermarket operator in South Korea on entering into a franchise with a major Vietnamese company to open a very large supermarket chain in Vietnam.

Schmitt & Orlov

Schmitt & Orlov advises domestic and multinational companies on the acquisition, protection, enforcement and exploitation of their IP rights. Areas of expertise include trade marks, patents and copyrights, among others. The firm's client roster includes well known brands operating in the sport, consumer and fashion industries. Hau Nguyen (who is based in Ho Chi Minh City) leads the Vietnam office and is deputy director of the firm’s regional office for Southeast Asia. She works with Daniel Greif, who is based in Thailand and leads the Southeast Asia practice.

Practice head(s):

Hau NguyenDaniel Greif

Other key lawyers:

Yen Pham; Tu Nguyen

Work highlights

  • Assisting a client with opposing the application for a trade mark filed by a third party.
  • Advising a client in running enforcement programs in Ho Chi Minh city in Vietnam to monitor and clean the markets of counterfeits.
  • Advised another client in providing enforcement strategies to organize enforcement actions with an aim to successfully clean the counterfeits from a series of well-known brands in the market.