HOW TO DEAL WITH COUNTERFEIT GOODS AND TRADEMARK INFRINGEMENT IN VIETNAM

Are Counterfeit Goods and Trademark Infringement the Same?

Although the terms are often used interchangeably, Vietnamese law distinguishes between several different concepts.

Counterfeit goods generally refer to products that falsely represent their quality, function, origin, or labeling in violation of applicable regulations.
Trademark counterfeit goods are products bearing identical or confusingly similar signs to a registered trademark without the authorization of the trademark owner.
Trademark infringement broadly covers the unauthorized use of identical or confusingly similar trademarks on identical or related goods or services where such use is likely to cause consumer confusion.

To effectively enforce trademark rights, businesses should register their trademarks as early as possible. A valid trademark registration certificate serves as the primary legal basis for administrative, civil, and criminal enforcement actions in Vietnam.

Legal Remedies Available to Trademark Owners

Depending on the circumstances, trademark owners may pursue one or more of the following legal measures.

1. Administrative Enforcement

Administrative enforcement is the most commonly used and efficient option for stopping trademark infringement. Competent authorities may inspect business premises, seize infringing goods, impose administrative penalties, and order the destruction or removal of infringing products.

2. Civil Litigation

Where infringement causes financial loss or reputational damage, trademark owners may file a civil lawsuit requesting the court to:

Order the infringer to cease the infringement;
Award compensation for damages;
Require a public apology or correction where appropriate; and
Impose other civil remedies available under Vietnamese law.

3. Criminal Prosecution

Serious cases involving the manufacture or commercial-scale distribution of counterfeit goods or counterfeit trademarks may constitute criminal offenses under the Vietnamese Criminal Code, resulting in substantial fines and imprisonment for individuals, as well as penalties against commercial legal entities.

4. Customs Border Protection

Trademark owners may request Vietnamese Customs authorities to suspend customs clearance of suspected infringing imports or exports. Border control measures are particularly effective in preventing counterfeit goods from entering or leaving the Vietnamese market.

Recommended Steps When Counterfeit Goods Are Discovered

To maximize the likelihood of successful enforcement, businesses should consider the following approach:

1. Collect evidence, including product samples, invoices, photographs, screenshots, and online listings.

2. Verify the legal status of the registered trademark.

3. Obtain an intellectual property assessment or expert opinion where appropriate.

4. Prepare a complete enforcement dossier and submit it to the competent authority.

5. Monitor the enforcement process and consider additional legal action if necessary.

Early evidence preservation is often critical, especially for online infringement where product listings and digital evidence may disappear quickly.

Common Mistakes Businesses Should Avoid

Many businesses weaken their legal position by making avoidable mistakes, including:

Failing to register their trademarks or allowing registrations to lapse;
Collecting insufficient evidence before taking action;
Relying solely on takedown requests to e-commerce platforms without addressing the source of infringement;
Publicly accusing alleged infringers without sufficient legal grounds; and
Delaying enforcement until the infringement becomes widespread.

Taking prompt and well-planned legal action can significantly improve the effectiveness of trademark enforcement.

Conclusion

Counterfeit goods and trademark infringement can seriously affect a company's revenue, reputation, and competitive advantage. Businesses should adopt a proactive strategy by securing trademark registration, monitoring the marketplace, preserving evidence, and selecting appropriate legal remedies as soon as infringement is detected.

If your business is facing counterfeit products or unauthorized use of its trademark in Vietnam, A.D.V.N Law Firm is ready to assist with legal assessment, enforcement strategies, and representation before the relevant authorities to protect your intellectual property rights effectively.

How A.D.V.N Law Firm Can Help

A.D.V.N Law Firm provides comprehensive legal services for trademark protection and intellectual property enforcement in Vietnam, including:

Trademark registration and portfolio management;
Legal assessment of trademark infringement;
Evidence collection and intellectual property investigations;
Coordination with IP experts for infringement assessment;
Representation before Market Surveillance Authorities, Customs, Police, and other competent authorities;
Civil litigation and dispute resolution involving intellectual property rights.

Our lawyers and intellectual property professionals assist both Vietnamese enterprises and foreign businesses in developing practical and effective enforcement strategies tailored to each case.