- Background
A French entrepreneur launching a new brand of local beers in Vietnam ran into the IP Business Advisor (IPBA) in a restaurant during a promotional event in early December 2024 in Ho Chi Minh City, Vietnam. They spoke and the IPBA introduced the entrepreneur to the free services offered by the SEA IP SME Helpdesk (SEA HD).
Seeing that the entrepreneur had a keen interest in learning more about intellectual property (IP) and the different IP rights (IPR) that could be protected to secure the assets of the company, the IPBA quickly scheduled a meeting at the office to further discuss the development and MarCom strategies for officially launching the beer in Vietnam.
The onsite meeting took place on 17 December 2024, leaving enough time for the entrepreneur to share the origins of the beer (the recipes were bought from a friend just after the COVID-19 lockdown; the name of the brand is ‘K****’, and it was inspired by the purpose of respecting the nature, notably the ocean) and the future of the brand’s development (currently, the company produces three types of local craft beer, mainly B2B (Business-to-Business) but also B2C (Business-to-Consumer)).
The timing of this meeting could not be better as the beer had recently been officially launched via a strict selection of restaurants and bars in Ho Chi Minh City (a soft launch was done by the end of summer 2024, to test the market) plus a new company was registered in November 2024. At the time of the meeting, there was no active official website available for Vietnam but there had already been some social media activity and promotional events.
- IP issues raised
The meeting enabled the entrepreneur to draft a proper IP protection strategy to try to secure all the assets surrounding the brand and products ‘KORAI’.
Support and advice provided by the SEA HD
- The IPBA highlighted key IP concepts to keep in mind when doing business in Vietnam (first-to-file system for IPR, bad faith registration, IPR registration as a mandatory step for enforcement matters) and key IPR which are usually recommended for protection as a Food & Beverage company.
- The discussion therefore centred on the protection of trademarks: covering the differences in using the symbols '®' and '™', explaining the aim of protection for a trademark (function of badge of origin for goods and services), selecting the sign(s) to be protected in a trademark application (word, logo, combination of both, 3D shape, bottle tag) and finally a clear distinction between the national and international (Madrid System) Registration routes.
- Following an intense discussion on signs and trademarks, the IPBA reminded the entrepreneur of the first step to undertake before filing a trademark application in any country or region: prior trademark searches and verifications. At the request of the entrepreneur, an identical trademark search was done for Vietnam/ASEAN (results were shown during the meeting and screenshots of the same were shared via email later on).
- Then the IPBA explained how copyright functions and could help protect any original work related to their brand: the automatic and international protection granted via the Berne Convention was discussed in detail, as the beer would also be sold in France, the optional but highly recommended local registration before the Copyright Office of Vietnam was highlighted (focus on enforcement issues and the need for a copyright certificate of registration in Vietnam).
- Speaking about creativity and original artworks, the entrepreneur learned that he could try to protect the bottle of each type of beer as a whole or else simply protect the labels.
- Furthermore, the entrepreneur received advice on the importance of securing domain names (a cheap and fast way to secure a right, as there are often difficulties in transfering or blocking a domain name once reserved by a third party in Vietnam) plus measures to safeguard trade secrets for the recipe of each type of beer, for the ESG processes via the usual strategy (legal, technical, and physical measures, plus training and information-sharing among employees).
- Besides the protection of IPR (including the initiation of several registration steps), the IPBA also highlighted the importance of written contracts including specific clauses (covering IP, confidentiality, non-competition, etc.) to protect the assets of the company. A small introduction to the EU-Vietnam Free Trade Agreement was also delivered as the export of beers to the EU could benefit from preferential tariffs and increased protection.
- Finally, the entrepreneur was reminded that he should use the whole range of local support available in Vietnam: the SEA HD and its local IP Experts, the local Chambers of Commerce, the Consulate and Embassy, business associations, etc.
- Results
- IP awareness and knowledge both increased for the French entrepreneur, enabling him to make informed decisions, negotiate with future partners, and train staff. Being a teacher in a local business school, he would also be able to share basic key concepts with his students.
- Following the meeting, the entrepreneur gathered sensitive information and contacted a local lawyer to help him enhance the global partnership agreement with his partner (regarding distribution and exclusivity).
- As recommended by the IPBA, he also quickly reserved a local domain name.
- In parallel, the local lawyer selected by the entrepreneur would soon launch local applications for both trademark and copyright after carefully discussing the available budget for IP protection strategy in Vietnam.
- Lessons learned
- IP knowledge and protective measures at an early stage of development are key (the entrepreneur contacted the SEA HD just before officially launching the beer on the market and increasing the distribution points at various hotels).
- Written contracts are key for protecting the assets of a company, securing the relationship with a commercial partner and helping for the future commercialisation of IPR.
- Some intangible assets can be protected in a very inexpensive but efficient way (via reservation of a domain name, registration of a company).
- Adapt the IP protection strategy depending on the country of interest (the entrepreneur would also need to build a different strategy for France with his partner and for neighbouring countries in South-East Asia at a later stage).
- Contact a local IP agent or lawyer to help with the registration of IPR and drafting of template agreements. The SEA HD’s list of IP Experts intends to guide SMEs towards obtaining reliable and professional advice.