Pham & Associates

The firm
Established in 1991, Pham & Associates is recognized as a premier Vietnamese intellectual property law firm with strong practice groups in both prosecution and contentious matters. Not only has been and continues to be one of the largest filers in Vietnam, Pham & Associates is also a reputable firm on appeal/opposition proceedings before the National Office of Intellectual Property (NOIP), filing a lawsuit or negotiating to reach out-of-court settlement regarding IP disputes.

Pham & Associates’s experience in trademark prosecution in both Vietnam and abroad is clearly demonstrated by thousands of trademark successfully registered yearly. Regarding trademark contentious matters the firm is particularly experienced in preparing arguments for and against trademark invalidation due to non-use or bad faith filing and in handling unfair competition relating to IP rights. This strength of the firm is built on nearly 30-year experience of trademark practice, a clear understanding of all aspects of IP legislation and knowledgeability of the specifics of business environment  and commodity markets of Vietnam.

Regarding patent prosecution, Pham & Associates is the largest filer of Patent Cooperation Treaty (PCT) applications in Vietnam. The firm’s attorneys work in a wide range of technical areas, including chemistry, mechanics, electronics, biotechnology, pharmaceuticals, energy, material science and telecommunications. This permanent staff is assisted by part-time working collaborators who are scientists or researchers from leading R&D institutions and universities. Our clients can rest assured that their patent applications will be prepared and filed to the very highest standards.

At present, the firm’s staff is 110 people, including 14 attorney at-law, 34 registered IP attorneys and 28 consultants. Before joining the firm, some of our consultants used to work at NOIP as a senior patent or trademark examiner.

As a founder and managing partner, Mr. Pham Vu Khanh Toan has a profound understanding of intellectual property, is very creative and able to come up with solutions. He has been building a good team around him – the key factor for sustaining development and ensuring the long-term success of the firm. He is currently serving as vice president of the Vietnam Anti-Counterfeit Goods Association and the Ho Chi Minh City Intellectual Property Association.

So far, the total number of applications that Pham & Associates has filed is nearly 50,000, of which the number of patent, trademark and design applications are 16,000, 25,000 and 4,000 respectively. Curently, the firm is representing about 2,000 clients and manageing over 10,000 IP right registration/application portfolios covering more than 50 countries. Among our clients there are well-known names such as Adidas Group, Honda Motor Co, Ltd, Panasonic Corporation, Yamaha Corporation, Huawei Technologies Co. Ltd, Perfetti Van Melle SpA, Microsoft, Johnson & Johnson, AstraZeneca AB, Bristol-Myers Squibb, Procter & Gamble, Colgate-Palmolive, Pfizer Inc., Bosch, Kikkoman, Takeda Pharmaceutical Company Limited, Akzo Nobel N.V, Vietnam Airlines, AceCook Vietnam, Honda Vietnam, Vifon, VietinBank.

In addition to IP services, the firm also offers a range of legal services relating doing business in Vietnam, including corporates, investment, real estate, commerce, tax, finance, banking and labor law.

Representation highlights
As noteworthy cases, Pham & Asociates helped Vietnam National Tobacco Corporation (Vinataba) regain ownership of the “Vinataba” trademark in Cambodia and Laos and now continues in Thailand, Malaysia, Korea, Japan and Indonesia; helped Vifon Food Industry Joint Stock Company (VIFON) win the dispute relating Vifon Acecook trademark in Poland, Germany, Japan; helped Saigon Cosmetics Company successful cancel the Miss Saigon trademark registered in bad faith by a Philippino company in the Philippines; helped to cancel the 333 Beer trademark registered in bad faith in Japan by a Japanese company; helped Buon Ma Thuot Coffee Association claim the cancellation of “BUON MA THUOT COFFEE” trademark registered in bad faith by the Chinese Trademark Agency for a local coffee company; helped Duy Loi company win the case of “hammock” industrial design infringement in Japan; assisted Vietnam Petroleum Corporation (Petro Vietnam) in winning the “Petro Vietnam” trademark dispute in the USA; helped the International Chemical Industries PLC protect its eligible rights under the “Super Maxilite” trademark against Nippon Paint in Vietnam; helped Honda (Japan) fight against the production and trading of counterfeit motorbikes which violates the industrial design and trademark rights of Honda in Vietnam.

In the field of copyright, Pham & Associates has consulted and actively supported the Vietnam Center for Protection of Music Copyright (VCPMC), International Software Association (BSA | The Software Alliance) in copyright protection of software for members of BSA such as Microsoft, PTC, Siemens, AutoDesk, Adobe and most recently represented artist Le Linh in resolving disputes over the authorship of the comic series “Vietnamese Prodigies” etc.

Recent awards and rankings
Pham & Associates was ranked Tier1 in Vietnam for patent, trade mark prosecution and contentious matters (consecutively from 2008-2019) by Managing IP; winner of the Vietnam Patent Firm of the Year Award (consecutively from 2009-2019) and shortlisted as one of five firms for the Vietnam Trademark Firm of the Year Award (consecutively from 2009-2018) by Asia IP; winner of ‘Intellectual Property Advisory Firm of the Year’s award 2014, 2015, 2017 by Corporate Intl Magazine global UK; Top-five Leading Firms in Vietnam in IP field in 2016, 2017, 2018 by Chambers and Partners in the UK.

A very noticeable point is that the composite trademark “PA- Pham & Associates, figure” registered for counseling and representing services on copyright and related rights; counseling and representing services on industrial property rights; technology transfer services” in Class 42 is recognized as a well-known trademark in Vietnam by the Ministry of Science and Technology (under the framework of the “Well-known Trademark Project” co-organized by the MoST and the International Trademark Association (INTA) in 2016) and by the Vietnam Intellectual Property Association (VIPA). This recognition is based on Article 75. Criteria for recognition of a well-known mark of the IP Law, of which two important criteria are the number of the related consumers who are aware of the mark through purchase or use of the goods/services bearing the mark and the firm’s turn-over of the goods/services sold or supplied. The trademark “PA- Pham & Associates, figure” is in the list of 50 leading well-known trademarks in Vietnam.