Vietnam’s trademark litigation evolution: strengthening civil proceedings amid dual enforcement system 

In summary

This article provides an outline of Vietnam’s trademark litigation system with a focus on civil proceedings and the current trends and perspectives, as well as analyses of notable legal issues raised in some of the latest lawsuits relating to intellectual property (IP) in general and trademarks in particular.

Discussion points

• Dual system of trademark litigation and its actual reforms
• Expert opinion and its value in determining trademark infringement
• Famous marks and bad faith issues
• Preliminary injunctions

Referenced in this article

• Law on Intellectual Property No. 50/2005/QH11 promulgated by the National Assembly on 29 November 2005, as amended in 2009, 2019, 2022 and 2025 (IP Law)
• Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP guiding the application of a number of legal provisions on resolution of disputes over IP rights at people’s courts, jointly issued by Supreme People’s Court; Supreme People’s Procuracy; Ministry of Culture, Sports and Tourism; Ministry of Science and Technology; and Ministry of Justice on 3 April 2008 (Circular 02/2008)
• Judgment No. 40/2025/KDTM-PT rendered by Ho Chi Minh High People’s Court dated 25 April 2025 in the trademark case Binh Minh Joint Stock Company v Binh Minh Viet Joint Stock Company
• Article entitled ‘“Bad Faith”, “Conflict of Rights”, and “IP Abuse” in Vietnam: What Lessons Can Be Drawn from the “Foellie” Trademark Dispute?’ by Duong Thuy of Kenfox IP & Law Office

A particular feature of Vietnam’s trademark litigation system is the coexistence of administrative and civil procedures with predominance of the former over the latter in terms of popularity and effectiveness. While in most countries it is common to go to court for dispute resolution and enforcement of IP rights, IP rights holders in Vietnam are still reluctant to engage in judicial proceedings as they consider the process to be overly cumbersome and time-consuming with uncertain outcomes. Statistics from the Supreme People’s Court show that for the period from 2022 to May 2025, only 17 IP-related cases were handled by Vietnamese civil courts at the first instance. At the same time, according to estimates by the Ministry of Science and Technology (MoST), the state authority in charge of intellectual property, up to 95 per cent of IP infringement cases have been handled by the administrative route.

In recent years, however, the country has made efforts to make civil proceedings more attractive for trademark owners with the aim of bringing its IP litigation system more in line with international practice. In spite of this, the expected shift to a court-dominant system for IP rights enforcement is difficult due to historical and structural weaknesses in the judicial system.

The dual system of trademark litigation

The dual system of IP protection exists in administrative and civil procedures that allow trademark owners to choose between administrative and civil actions to enforce their rights against infringers or to resolve other disputes relating to their trademark rights in Vietnam.

To deal with infringement, trademark owners may initiate a civil lawsuit before a competent court to obtain injunctive relief and claim compensation for damages, or request intervention by a competent administrative authority to apply administrative sanctions against infringing acts. The popularity of administrative over civil action is largely due to Vietnam’s strong administrative enforcement tradition and the wide network of competent authorities including Market Management Agencies, Inspectorates, Police, Customs and People’s Committees, which can directly impose fines, confiscate or destroy infringing goods, and thereby provide swift enforcement. By contrast, civil proceedings relating to IP matters remain relatively complex, costly and time-consuming, reflecting limitations in the judicial system and the lack of specialised expertise among many judges in IP law in general and trademark matters in particular.

The current situation is not satisfactory for trademark owners who are primarily interested in compensation for damages caused by infringements. In the past, when Vietnam was still a very small economy, trademark infringement was carried out on a limited scale and economic stakes were not sufficiently high for trademark owners to pursue long and costly lawsuits. Along with the growth of the economy in recent years, the scale and complexity of trademark infringement has also increased rapidly, giving trademark owners an economic stake in going to the court to claim for damages.

Research shows that many IP enforcement cases in recent years had been first handled by administrative measures before they were brought to the court. In one of the most recent and notorious trademark cases – Binh Minh Joint Stock Company v Binh Minh Viet Joint Stock Company – before going to the court, the plaintiff had already obtained a sanction from the Market Management Agency against a seller of plastic pipes manufactured by the defendant bearing the Binh Minh trademark. This case illustrates the limit of the administrative action even when it is successful. Not only is it impossible to obtain damages by this route, but also the value of decisions made by the administrative authority become questionable. In this case, though the Market Management Agency had determined, based on official expert opinion, that the plastic pipes manufactured by the defendant were infringing the plaintiff’s trademark rights, the court denied such infringement and decided otherwise.

With respect to disputes over other trademark matters than infringement, the two systems also coexist, but the courts have exclusive jurisdiction over a number of matters. According to Circular 02/2008, issued jointly in 2008 by the Supreme People’s Court, Supreme People’s Procuracy, Ministry of Culture, Sports and Tourism, Ministry of Justice and the MoST, the courts handle cases relating to the right to register trademarks, trademark priority rights, trademark ownership rights, trademark assignment and licensing, trademark attorney service contracts, trademark succession and unfair competition.

In practice, at least until a specialised IP court is created, trademark invalidation and cancellation actions may only be filed with the Vietnam Intellectual Property Office (VNIPO). VNIPO’s decision to accept or reject such a trademark invalidation or cancellation request is subject to appeal to a higher administrative authority or to an administrative court by either party to the invalidation or cancellation proceeding.

Vietnam has undergone major reform of both its administrative and judicial systems. The administrative reform aiming at decentralising certain aspects of IP state management to provincial-level local authorities has led to suppression of the IP-related section of the MoST Inspectorate, considered until recently as one of the most important venues for trademark owners to enforce their rights or to appeal against VNIPO decisions resulting from cancellation or invalidation actions. Under Decree 189 dated 1 July 2025, trademark owners must instead go to the provincial People’s Committees or to the VNIPO to seek administrative sanctions against infringement of their rights. In practice, it is still unclear how these administrative authorities will exercise this new responsibility, but some difficulties are foreseeable, at least during the transitional period.

With respect to judicial reform, it is worth noting that the 2024 amended Law on Organization of People’s Courts, effective from 1 January 2025, has paved the way for the establishment of two specialised IP courts under two newly created Regional Courts in Hanoi and Ho Chi Minh City. Specialised IP courts are expected to handle all IP-related disputes at first instance, including civil, commercial and administrative. They will also handle all IP-related matters, such as infringement, validity, assignment, licensing, other IP-related contracts, technology transfer, etc.

Since 1 July 2025, the two Regional Courts in Hanoi and Ho Chi Minh City have been officially established by Resolution No. 81/2025/UBTVQH15 of the Permanent Committee of the National Assembly. In practice, it may take some time for the two Regional Courts to establish their specialised IP Courts.

In the long term, the coexistence of administrative and civil mechanisms will continue to characterise Vietnam’s trademark enforcement landscape. However, the imminent creation of specialised IP Courts is expected to accelerate the shift of the IP protection system towards a more balanced and judicially driven system. This evolution will not only enhance consistency and transparency in IP adjudication but also strengthen the confidence of domestic and foreign rights holders in Vietnam’s commitment to effective IP protection in line with international standards.

Expert’s opinion and its value in question

One of the central issues in any trademark enforcement action is to determine whether infringement has actually occurred. Whatever route trademark owners take to enforce their rights, it is always challenging to prove infringement, especially in the digital environment where trademark infringement is becoming more sophisticated and volatile.

For very long time, due to the lack of knowledge and experience in the IP field and growing complexity of trademark disputes, IP rights enforcement authorities, including the courts, used to be reluctant to determine whether there is likelihood of confusion between two disputed similar marks. Instead, they would prefer to seek external expert opinions to rely on for conclusion of infringement, dragging on the court proceedings for many years. But the situation has begun to change.

The IP Law uses the term ‘intellectual property assessment’ to designate what is commonly called ‘expert opinion’. Article 201.1 defines IP assessment as the use by certified IP assessors or assessing organisations ‘of their professional knowledge and expertise to make an assessment of and conclusions on matters related to intellectual property rights’.

The Vietnam Intellectual Property Research Institute (VIPRI) under the MoST is so far the only organisation in Vietnam eligible for delivering expert opinions relating to industrial property. Until the 2022 IP Law reform, only four assessors were accredited with certificates to practice industrial property assessment, all of them practising under the VIPRI umbrella. The number of industrial property assessors has increased since then to 11 including two under VIPRI and nine independents. Only five out of 11 provide expert opinion regarding trademark matters. In practice, VIPRI still remains a reference for IP rights holders wishing to obtain an objective expert opinion on trademark matters.

Industrial property assessment is typically carried out at the request of one or both parties to a trademark dispute, but the court or administrative authority handling a trademark enforcement case may also ask for independent expert opinion, if they deem it necessary. Upon receiving a request for assessing trademark infringement, the assessor shall conduct a thorough analysis of the matter and provide the requestor with a document entitled ‘Industrial Property Assessment Conclusion’. Such expert opinion can be submitted to support claims against alleged infringers in an enforcement action before a competent administrative authority or a court.

Though not binding, expert opinions provided by VIPRI have served as valuable professional assistance to enforcement authorities to resolve many trademark disputes in the past. Until recently, enforcement authorities have relied on VIPRI’s assessment conclusion to resolve trademark disputes. However, the 2022 IP Law reform encourages the enforcement authorities to take charge of the task to determine IP rights infringement by adding a new provision to article 201 affirming that ‘IP assessment conclusion is one of the sources of evidence for the competent authorities to handle and resolve the case. IP assessment conclusion does not conclude on IP right infringing acts, nor conclude on the dispute’.

In the very controversial judgment of the Binh Minh trademark case, the Ho Chi Minh City People’s Court denied VIPRI’s assessment conclusion on infringement committed by Binh Minh Viet, a newly established company in the plastic pipes manufacturing sector, of the trademark ‘Binh Minh’ registered in the name of Binh Minh, one of the leading companies in the same industry. The judgment rendered by the first instance court was later confirmed by the appellate Ho Chi Minh High People’s Court by a judgment dated 25 April 2025.

Undoubtedly, Ho Chi Minh High People’s Court’s statement that VIPRI’s expert opinion is ‘only for reference and not evidence to resolve the case’ has come as a shock to IP specialists and the business community who for a long time used to believe that the VIPRI’s expert opinions had high legal value, because they were based on scientific and objective assessment criteria, and could therefore be easily accepted by administrative enforcement agencies as well as the courts.

The Binh Minh trademark case has shown how such a view may pose important risks for trademark owners in infringement lawsuits, because it may lead to the owner’s over-optimism about the chances of success based on VIPRI’s opinion, and thus they may not be sufficiently prepared with convincing arguments and evidence in case the court decides to make its own assessment that differs from expert opinion.

In this case, VIPRI’s expert opinions in favour of the plaintiff were obtained before initiating the lawsuit. Based on the general belief that the expert opinion was sufficient evidence to resolve the case, the plaintiff did not request a re-assessment during the court proceeding. Against all odds, the defendant succeeded in casting doubt on the legal value of the VIPRI’s expert opinion by convincing the Trial Panel that the samples used for infringement assessment were only products that the defendant had initially produced for market research purposes, and it had immediately recalled them. On this basis, the Court of Appeal agreed with the first instance judgment that the VIPRI conclusion was not sufficient as evidence to resolve the case because ‘one of the sources used to conduct the assessment was not consistent with the current trademark’.

While it is a good thing that the courts act proactively without excessively waiting for and relying on external expert opinions, the court judgment in the Binh Minh trademark case has largely been criticised by practitioners because it failed to protect a long-established brand widely known in its specific manufacturing sector from sophisticated attempts to take advantage of its goodwill by a newly created competitor. Some other recent disputes also show malicious strategies carried out by infringers of famous and widely known trademarks and arduous battles by owners to protect their rights.

Famous marks and bad faith issues

A well-known trademark is one of the most valuable intangible assets of a business as its reputation reflects the prestige, quality and consumer trust associated with the brand. In Vietnam, both local and international well-known marks are frequent targets of imitation or bad-faith registration as opportunists attempt to exploit their reputation.

Under previous regulations, for a trademark to qualify as well known it had to be ‘widely known by consumers throughout the territory of Vietnam’ and must satisfy all criteria prescribed in article 75 of the IP Law. Given these stringent conditions, only a limited number of trademarks were considered as well known, while many others – despite their strong market presence and reputation – —remained vulnerable to imitation and unauthorised registration.

To enhance the protection of well-known trademarks and align domestic practice with international standards, the 2022 amended IP Law introduced two major reforms.

First, the scope of assessment for trademark fame has been refined. A well-known trademark is now assessed within the awareness of the ‘relevant public’, rather than the entire consumer population as before. This amendment is expected to make protection of well-known marks more practical and ensure that a mark, well known within a particular sector or consumer group, can still qualify for protection as a well-known trademark.

Second, the 2022 amended IP Law provides greater flexibility in assessing notoriety. Under the amended article 75, some or all of the listed criteria may be considered, depending on the specific case. This means that a trademark may be recognised as well known even if it does not satisfy every criterion, thereby reducing the evidentiary burden for trademark owners and making the recognition process more practical and adaptable.

Despite these progressive developments, challenges remain as Vietnam’s IP Law still lacks a formal procedure for recognising well-known trademarks and does not provide quantitative benchmarks for determining fame. In practice, both VNIPO and the courts may recognise a mark’s fame indirectly through opposition, cancellation or infringement proceedings. Consequently, recognition continues to depend largely on the subjective judgment and experience of the competent authorities.

A recent opposition case at VNIPO illustrates this ambiguity in practice. In this case, Colart Scotland LP (Colart), the owner of an internationally respected brand sought to oppose the registration of a later mark ‘WINSOR & NEWTON, Device’ filed on 29 June 2021, for goods in Class 16 by a Vietnamese individual on the grounds that the applied-for mark was identical to Colart’s well-known mark, and that the application had been filed in bad faith as it is only a deliberate copy of Colart’s trademark.

Despite Colart’s submission of substantial evidence, such as the mark’s history dating back to 1832, its commercial presence in more than 90 countries including Vietnam, and ownership of 213 trademark registrations in 71 countries, the VNIPO, on 9 June 2025, dismissed the opposition, ruling that the evidence provided was insufficient to establish the notoriety of Colart’s mark.

This case highlights the practical uncertainty faced by trademark owners, who must navigate a system that recognises well-known marks in principle, but provides no explicit procedure or evidentiary threshold for such recognition. Such reluctance to recognise well-known trademarks has created favourable conditions for abusive and bad faith trademark filings.

The case also reflects shortcomings in how bad faith is currently reviewed and interpreted, contributing to significantly increasing numbers of bad faith filings over the past years. In a recent case reported by some trademark practitioners, an individual in Ho Chi Minh City had filed nearly 200 applications for registration of different well-known trademarks of foreign trademark owners in many countries.

The country’s first-to-file system of trademark registration is often exploited by opportunists who preemptively register trademarks belonging to legitimate brand owners, particularly those that are well known abroad. To address this issue, the 2022 amended IP Law for the first time expressly codifies the concept of ‘bad faith’. Accordingly, a trademark application may be refused, or an existing trademark registration may be cancelled if there is a sufficient case to determine that it was filed or registered in bad faith.

In a recent dispute opposing Laorganic Co., Ltd. (South Korea), the true owner of the stylised word mark ‘Foellie’ for cosmetic products and intimate perfumes, and Lưu Ngọc Anh, a Vietnamese individual who literally copied the mark and filed with VNIPO in 2020 an application for its registration. The opposition filed later by Laorganic against the application was rejected by VNIPO and a certificate of trademark registration for ‘Foellie’ was issued in the name of Lưu Ngọc Anh in January 2025 allowing him not only to use unfairly Laorganic’s ‘Foellie’ trademark, but also to take a series of legal actions against the Korean company and its long-established lawful distribution network in Vietnam, including sending cease-and-desist letters to its distributors threatening legal consequences, requesting e-commerce platforms, such as TikTok, Shopee, Lazada, to take down their ‘Foellie’ related accounts, demanding YouTube to remove advertising content and complaining to Vietnam’s E-Commerce and Digital Economy Agency. When Laorganic attempted to negotiate a possible transfer of the registered ‘Follie’ mark, Lưu Ngọc Anh demanded an unreasonable price for assignment.

Undaunted by the failure of the opposition procedure against registration of its trademark and an unsuccessful attempt to enforce copyright in its stylised ‘Foellie’ logo, Laorganic continued to file with VNIPO an application for cancellation of the ‘Foellie’ mark registered in the name of Lưu Ngọc Anh , and eventually obtained a cancellation of the trademark on 15 September 2025, ending the four-year dispute.

Interestingly, in this case, Laorganic had to pursue a clever strategy by registering with the Copyright Office its ‘Foellie’ logo as an applied art work, and then based on the copyright registration certificate, request the IP rights administrative enforcement authority to conduct a surprise inspection and summon Lưu Ngọc Anh to question the use by him of the ‘Foellie’ logo suspected of copyright infringement. This situation has led TikTok Vietnam to accept that the ‘disputed nature’ of the matter may serve as sufficient grounds for it to suspend previously requested takedown measures and restore content and accounts associated with Laorganic’s authorised distribution network for the disputed period before resolution. Regrettably, other e-commerce platforms did not take such a just position and maintained the takedown measure, causing irreparable harm to the true trademark owner.

In reality, the trick of registering other types of IP rights, such as copyright and industrial design, or company names to carry out a trademark usurpation process is quite often used by infringers to take advantage of the prestige and goodwill of famous brands. In the above-mentioned Binh Minh trademark case, to legalise the use of the sign ‘Binh Minh’ in the production and business of plastic pipes, the defendant registered its company under the name ‘Binh Minh Viet’ and obtained a copyright certificate for an applied artwork comprising the element ‘Binh Minh’. The case shows that a simplistic strategy may prove to be winning in the general context of limited knowledge and experience in IP.

The 2022 IP Law reform impacting the well-known mark and bad faith issue represents a significant step towards harmonising Vietnam’s trademark regime with international norms. However, its success will depend on consistent interpretation and enforcement by the competent authorities. To ensure that these legal reforms effectively protect well-known marks and deter bad-faith registrations, it is necessary for the competent authorities to adopt a more proactive approach by developing transparent and uniform evaluation standards and improving examiner and judicial training.

Another issue of particular interest to trademark owners in the volatile environment of the digital age is how efficiently and quickly the litigation system is capable of preventing infringers from pursuing their infringing activities once identified.

Preliminary injunctions

A preliminary injunction is available under the IP Law both to prevent IP rights holders from irreparable harms and to secure material evidence. However, obtaining such relief in an effective and expeditious way remains difficult. Under the IP Law, a preliminary injunction may be requested at the time of filing or after initiating a lawsuit. In practice, a formal court action must be filed and ‘accepted’ by a Vietnamese court before a preliminary injunction may be requested. Preparing and submitting a complaint in the correct form that will be accepted by the court may take time, making it difficult for IP rights holders to act quickly to protect themselves against counterfeiters who are often capable of suspending or hiding their illegal activities in a very short time. The situation is still harder for foreign complainants because of formal requirements such as handwritten signatures by a duly authorised company officer, legalisation of all documents, etc.

Specific preliminary injunctions include seizure, sealing, freezing, prohibition of changing status, prohibition of moving and prohibition of transferring ownership and can be applied to suspected IP infringing goods and materials, as well as business and production means. Other emergency provisional measures provided for in the Civil Procedure Code may also apply to IP rights infringement cases, including prohibition or compulsion to perform certain acts, among others.

To apply for a preliminary injunction against an alleged infringer, a trademark owner has to prove that there is a risk of irreparable damage, or the suspected infringing goods or the evidence are at risk of being dispersed or destroyed if not protected in time. Guidance for interpreting these two situations is set forth in Joint Circular No 02/2008. Concerning ‘the risk of dispersal or destruction’ of suspected infringing goods and evidence, Joint Circular 02/2008 clearly indicates that ‘dispersal’ is the act of quickly scattering suspected goods or evidence to many places to conceal, and ‘destruction’ is the act of causing suspected goods or evidence to be deformed or completely lost, leaving no trace.

Concerning ‘irreparable damage’, Joint Circular 02/2008 states that ‘damage is an inevitable consequence of the imminent infringement and when it occurs, it is impossible for IPR holder to remedy without applying preliminary injunction’. Such definition is subject to different interpretations, leading to inconsistency of court decisions. From articles published by some patent and trademark attorneys, we can learn that sometimes the courts have applied it literally, considering damages as irreparable in nature, inherent to IP infringement cases, and there is no need for a requestor to quantify the magnitude of the imminent harm. In some other cases, on the contrary, they have refused to grant a preliminary injunction on the ground of the requestor’s inability to prove that damages were irreparable.

The statutory time limit for the court to examine a request for a preliminary injunction is 48 hours or three days from receipt of the request for a preliminary injunction. However, in practice the examination process takes much longer. The required evidence and security deposit, if any, depending on which provisional measures are requested to be applied, should also be supplied at the same time as the request. Approximately 15 years ago, in one of the first IP-related cases where a preliminary injunction was applied, the court order to seize 10,000 suspected counterfeit books was issued after almost all of them had been sold. Since then, the situation has been improving, but the grant of preliminary injunctions in IP litigation in general and trademark litigation in particular remains quite rare.

In another recent trademark dispute largely reported by Vietnamese media and press between KIDO Group and KIDO Frozen Foods Joint Stock Company (KIDO Foods), a former KIDO Group’s controlled subsidiary, it took 11 days for Ho Chi Minh City People’s Court to examine and render a decision dated 17 January 2025 to accept the request filed by KIDO Group to prohibit KIDO Foods from using the Celano brand and order Dat Viet Media Corporation to cease all advertising and promotional activities related to the trademark Celano in the media, including the shows ‘Anh Trai Say Hi’, ‘2 Days 1 Night’, and on all social media platforms including Facebook and TikTok.

To ensure performance of the obligation to compensate for the damage caused to the alleged infringer in case of eventual failure to prove infringement, the requesting party must carry out security measures by depositing 20 per cent ​​of the value of the goods for which the preliminary injunction is to be applied, or at least 20 million dong if the value of the goods cannot be determined, or a guarantee document from a bank or other credit institution.

Interestingly, in the KIDO case, the granted preliminary injunction was cancelled by the court upon a counterclaim filed by the defendant, KIDO Foods, arguing that the application of such measures would cause irreparable harm to its long-established business, which had been continuously using the Celano trademark for more than 20 years, and agreeing to pay a security deposit worth 50 billion dong.

This case seems to show that courts are becoming more willing and proactive in considering requests for the application of preliminary injunction, taking into account the parties’ economic interests. The actual reform of the judicial system is expected to enhance the court’s capacity to deal with increasingly complicated trademark disputes in Vietnam’s rapidly growing economy.