Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Pham & Associates offers services in practice areas like corporate and banking, but it is its IP practice that has gained it most attention. And with good reason. The firm is the standout IP practice in Vietnam, with a roster of international clients like Johnson & Johnson, Honda R&D and BMW Group. Its IP service covers everything from litigation, to patent work and licensing. One high-profile court case saw Pham & Associates argue the case for International Consumer Products, a Vietnamese cosmetics company, against US company Marvel Characters. The US company alleged that ICP’s use of X-Men on cosmetic products infringed its copyright, but Pham & Associates successfully argued this was not the case in Vietnam.

Honda used the firm to establish the enforcement of its trade mark rights in Vietnam. The case was mainly against unauthorised dealers in Vietnamese cities using the Honda name. In total, Pham & Associates handled more than 40 cases successfully on this matter. Other recent cases have seen the firm represent the Rough Guides travel guidebooks and confectionary maker Perfetti Van Melle. The firm’s managing partner Pham Vu Khanh Toan is one of the best known patent practitioners and IP lawyers in Vietnam. He is ably backed up by Duong Tu Giang.

Baker & McKenzie brings all the nous expected of an international firm to this market. The firm has a broad IP practice that includes copyright work, IP enforcement, lobbying, patent prosecution and litigation. Baker & McKenzie has also started a commercial IP group, to help franchisers looking at the Vietnam market. Microsoft employed the services of Baker & McKenzie in a case before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center. The dispute was over the registration of the domain name microsoftvietnam.net by a Vietnamese individual. Baker & McKenzie successfully argued the case that Microsoft had the trademark rights no matter where the case was located.

Singaporean company FJ Benjamin used the firm in filing an opposition against the trade mark application of a Vietnamese company. The dispute was over use of the name Raoul, which the Vietnamese company had registered before FJ Benjamin in Vietnam. Baker & McKenzie successfully proved that its client’s trade mark was well known. Hung Manh Tran is the group leader for IP at Baker & McKenzie and is considered a leading expert in contentious IP matters, licensing and franchising. Other standout names include Hong Yen Vu, Kieu Hoa Tran and Hai Hoang Nguyen.

Vision & Associates is a Vietnamese firm that offers local and international IP legal advice. The firm is adept in areas like IP rights prosecution, anti-counterfeiting and copyright infringement. Vision & Associates also has offices in Cambodia and Laos, given it a unique presence. Recent years has seen the firm defend international clothing groups such as Lacoste. The firm argued the case for Lacoste over the use of its crocodile logo by another company called Crocodile.

Sony Corporation used the firm for copyright advice and on the legal aspects of the End User License Agreement. Western Union Holdings used Vision & Associates for advice on a domain name dispute and for representation in anti-cyber squatting in Vietnam. Pham Nghiem Xuan Bac is the managing partner of the firm and leader in this practice area. Do Quang Hung is a leading partner at Vision & Associates.

Invenco is an IP boutique formed in 1991 that also goes by the name Vietnam International Trademark & Patent Agent. It offers a full range of services on IP-related matters and the protection of IP rights. The core areas of the firm are divided into invention, industrial design, trade mark, copyright, technology transfer and the enforcement of IP rights in the country.

The InvestConsult Group predominantly focuses on corporate and commercial work, but it does have a solid offering on domestic IP law. Its senior lawyers are members of the Asian Patent Attorney Association and the group provides consultancy services on proceedings and IP violation resolution. Core services the firm provides include assisting clients check the status of registering protection of their IP rights in the country, preparing registration documents, advice on IP rights transfer, and dispute resolution in IP infringement cases.

Lovells can call on the experience of the Lovells network, including its large practice in Hong Kong. Highly-rated partner Henry Wheare leads the Vietnam team from Hong Kong, while Gregory Buhyoff is the on-the-ground leader. Recent cases have seen Lovells represent blue-chip clients like Anheuser-Busch, Ford Motor Company and Prudential Vietnam.

Rouse has a strong Vietnamese presence, aided by its association with Doan Hong Son Law Offices. The firm has fostered strong links with some large beverage companies. Recent work has seen it represent the Scotch Whisky Association and international drinks company Diageo, over an infringement with its Johnnie Walker brand. Chris Vale heads the firm’s IP operation.

Tilleke & Gibbins has a presence in Vietnam and Thailand, giving it good Southeast Asia coverage. The firm offers wide-ranging IP services and has been used by firms such as Diageio, Lacoste and Liberty Gold to defend their IP rights. Nga Thi Phi Nguyen is the head of the IP department, while Thomas Treutler is internationally recognised.

Detech & Associates

Detech & Associates fields a team of 20 IP professionals and offers clients nearly 20 years of experience as a reliable IP boutique firm. The practice concentrates on representing foreign and domestic clients in the establishment of their IP rights in the country and enforcing them within the country and overseas. The firm has a long-standing track record of experience in the consultation and prosecution of licensing agreements, and technology transfer arrangements.

Investip

Investip is a domestic IP firm that handles legal matter relating to copyrights, patents, industrial designs, trade marks, domain names, licensing, technology transfer, and IP litigation and enforcement. Founded in 1988, the practice includes trade mark and patent attorney Nguyen Anh Ngoc. In addition to its IP expertise, the firm is an investment consultancy.

VCI-Legal

VCI-Legal’s IP practice is led by managing partner Phung Anh Tuan and concentrates largely on enforcement and strategic management. Its clients span a variety of industry sectors and range from domestic small- and medium-sized enterprises to international corporates.