- Background
A French entrepreneur from the wine industry living in Hanoi was introduced to the SEA IP SME Helpdesk (SEA HD) by a personal contact of the IP Business Advisor (IPBA).
The introduction arrived in due time as he was developing new activities soon to be launched under a new company in Vietnam (educational and promotional activities related to the wine industry). After experiencing negative situations involving his ideas being stolen by third parties, he contacted the SEA HD via email to discuss his IP protection strategy.
In view of his specific needs, the IPBA decided to schedule a virtual consultation to have sufficient time to cover all questions and IP issues related to the future launch of the entrepreneur’s new activities.
- IP issues raised
The virtual consultation took place on 15 July 2024 and discussions were carried out in French, to facilitate the transmission of IP advice and tips.
After confirming that the discussion would be strictly confidential, the IPBA was introduced to the plans and business ideas, including the disclosure of a name (coined by the entrepreneur) and a logo (created by a friend of the entrepreneur). Having covered some basic knowledge about trademarks and branding, an IP protection strategy was discussed in detail with a focus on trademark and copyright protection for Vietnam.
Following the consultation, a follow-up email was sent to the entrepreneur, comprising a recap of the main points of discussion and key links.
Support and advice provided by the SEA HD
- First, the IPBA introduced a key IP principle: you cannot protect any idea per se. However, one may protect an idea that is expressed in a tangible way.
- Secondly, the IPBA extensively shared information on trademark protection: going through the early steps of a trademark strategy (running prior right searches and verifications), the specificities of the IP environment in Vietnam (first-to-file principle, bad-faith registrations), the dual option of protection for trademarks (local route and international route), practical information (costs, documents required for filing an application, registration timeframe, who may file the application), and more advanced IP tips for the Vietnamese market (issues with local enforcement, deadline for renewal of a trademark, need to update information about the owner of a trademark, option to transfer the ownership of a trademark from a physical person to a company).
- When mentioning the importance of running prior rights’ verifications, the IPBA was asked to check for the existence of any prior identical trademark in Vietnam that could pose a threat to the project. Results were shared and the entrepreneur felt reassured of his positive chances to register his trademark and use it.
- In parallel with trademarks, the IPBA advised investigating copyright protection in Vietnam, explaining the existence of a local option to register copyright (costs, registration timeframe) while benefiting from the automatic protection of the Berne Convention (international IP treaty that was ratified by Vietnam).
- A few extra recommendations were shared regarding the logo, which was created by a friend of the entrepreneur (need for a contract framework or detailed invoice, establish a deed of transfer of copyright ownership, save as much evidence as possible).
- As a local IP lawyer could support with filing trademark and copyright applications, the list of External IP Experts of the SEA HD was shared. The entrepreneur was warned about the administrative burden and complexity of the copyright registration procedure in Vietnam, which is usually handled by local IP lawyers.
- Result
- IP awareness and knowledge both increased for the French entrepreneur, enabling him to make informed decisions and plan a budget for IP protection.
- By getting IP information and advice before officially launching his new business, the entrepreneur would reduce several business risks (prior rights verification, registering IPR before the official launch to the public) and is now working on a relevant IP protection strategy.
- The entrepreneur contacted several local IP lawyers in Vietnam to obtain separate quotations for trademark and copyright protection. A quick decision should then be taken depending on the available budget and further recommendations he may have received.
- Lessons learnt
- An idea per se cannot be protected. Therefore, do not share your ideas and plans with third parties before drafting a business plan and taking protective steps.
- When thinking of launching a new commercial activity and/or a new company, it is important to think about an IP strategy ahead of time and to figure out which assets may be protected via which IP right (IPR).
- Usually, an efficient IP strategy would involve the combination of several IPR (in this case, trademark and copyright protection) and paying attention to contracts (labour contracts for future staff, contracts with vendors helping to develop the brand).
- IP knowledge and protective measures at an early stage of development are key (the start-up contacted the SEA HD for support at a very good time).
- Adapt the IP protection strategy depending on the country of interest: for example, in Vietnam one has the possibility to locally register copyright and obtain an official certificate.
- Contact a local IP agent or lawyer to help with the proceedings of trademark and copyright registration in Vietnam. SMEs should use the SEA HD’s list of IP Experts which intends to guide them towards obtaining reliable and professional advice.