- Background
A Hungarian company specialising in the development of software and hardware discovered that a Vietnamese company was displaying and selling its products unauthorisedly on its website. Having no relationship whatsoever with the Hungarian SME, nor having asked for any official authorisation, the SME therefore tried at first to notify the Vietnamese company. Obtaining no answer, they brought the case before their national diplomatic representatives in Vietnam, who in turn sought advice before the SEA IP SME Helpdesk (SEA HD) in February 2025.
- IP issues raised
The SME was seeking advice on how to obtain the swift removal of non-authorised products offered for sale on a third-party website (after repeated unsuccessful take-down requests sent via different channels), and which legal actions could be undertaken against the local company.
- Results & actions taken
The SEA HD outlined several key actions and considerations to address the issue effectively in Vietnam.
First, the SEA HD advised the company on the method of contacting the unauthorised seller. Given the complexity of the case and cultural specificities, contacting a local Vietnamese company via email is usually neither inefficient nor appropriate. Instead, more direct and varied communication channels should be used, such as phone calls, paying a direct visit to the offices of the company, an official letter sent by a legal representative of the SME, a lawyer, or even the Hungarian Consulate. The SEA HD also highlighted the importance of social media and e-commerce platforms in Vietnam and recommended that the SME try establishing contact with the seller via these channels.
Second, the company should investigate in parallel to verify if the products sold unauthorisedly were genuine or counterfeit. This step would be pivotal in determining the strategy and the available enforcement options. The SEA HD notably pointed out that, if the goods were sold without authorisation but were genuine, the matter might fall under the scope of parallel import, which is an exception in the Vietnamese legal framework. If applicable to the case, the display and sale of such goods would then not constitute an infringement in Vietnam.
A detailed explanation of Vietnam’s legal framework for parallel import was shared with the SME, i.e. the relevant legal provisions and the usual cases where the parallel import exception applies (if the products were lawfully launched on the market either domestically or abroad and by specific persons).
Third, the SME was recommended to develop an enforcement strategy, notably by gathering strong evidence of infringement (such as product photos, invoices, or notarised website captures or notarised purchase of the goods) and considering legal actions (such as a cease-and-desist letter or formal complaints to the authorities). However, the SEA HD reminded the SME to first confirm if they hold registered IP rights in Vietnam, as this would be the basis to enforce their rights locally. Some verifications showed the absence of rights in Vietnam, and the SME was therefore urged to register their assets (at least trademark and copyright) with the support of a local IP lawyer.
Finally, as e-commerce is a rapidly growing channel in developing countries like Vietnam, the SEA HD ran some verifications and found out that the Vietnamese seller was active on several e-commerce platforms. Thus, the SEA HD recommended that the Hungarian SME run further verifications on both social media and e-commerce platforms, which may lead to discovering more unauthorised sales of goods. Once again, the SEA HD reminded that takedown requests could be easily filed on e-commerce platforms (like Shopee and Lazada), provided they held registered trademarks or copyright in Vietnam, along with evidence of the same (official registration certificates).
Result: The SME ran further verifications on several aspects highlighted by the SEA HD and proceeded to assess the products sold by the Vietnamese company. In parallel, they started auditing and mapping their IP rights, plus getting in contact with a local IP lawyer to further discuss the enforcement strategy.
- Lessons Learnt:
SMEs often ignore the importance of local registration of their IP rights in a potential market until issues arise. In most countries of SEA (including Vietnam), enforcement options remain limited if a company does not hold local registered rights (trademarks, industrial designs, or copyright). Therefore, SMEs should prioritise registering their IP rights locally before starting commercial activities abroad, ensuring they have a strong foundation to address infringements effectively.
Not every unauthorised sale equals infringement in SEA, and this is the case in Vietnam when genuine products are lawfully placed on the market and fall under the scope of parallel import. Companies must first verify whether goods are counterfeit or genuine before pursuing enforcement.
Simply sending informal requests or emails is often ineffective for handling a trademark infringement case in Vietnam. An enforcement strategy should combine multiple approaches: direct and adapted communication, legal representation, evidence collection, and platform-level takedowns.
SMEs often overlook the need to actively monitor their trademarks and products on e-commerce and social media platforms. They also tend to overlook checking all existing sales channels thoroughly (even though most sales are now done online within SEA). Since sellers in Vietnam are highly active on e-commerce platforms (like Shopee and Lazada) and social media platforms (Instagram and TikTok), IP owners should monitor these channels regularly. With registered rights, takedown procedures can be fast and effective.