- Background
A Spanish company specialising in the production and commercialisation of plant health and nutrition products discovered that a local company had registered its trademarks without their consent in Vietnam. Worried about the situation as they had a local presence in the region, they first reached out to a European national business association in February 2025 and were then quickly introduced to the SEA IP SME Helpdesk (SEA HD) for further support.
- IP issues raised
The main concern of the SME was to know how to handle the discovery of their trademarks being registered by a third party in Vietnam (a typical case of bad-faith trademark registration).
- Results & actions taken
Unfortunately for European SMEs, bad-faith trademark registration is common in Vietnam and within SEA, where local entities often file trademarks that belong to foreign companies without their consent to create confusion among consumers and reap some undue profits.
First, the SEA HD provided a detailed explanation about bad-faith registration, including the causes (usually no local presence of a company, no local registered rights, no monitoring of the market) and the risks (confusion for the consumers, trademark dilution, harm to the reputation of a company). The SME was provided with the three legal grounds that are used in Vietnam to fight against bad-faith trademarks, i.e., articles Nos 73.7, 74, and 96 of the Vietnam IP Law (2022).
Second, the SME was advised to conduct a broader verification of trademarks not only in Vietnam but also in neighbouring countries (ASEAN, China). Usually, bad-faith filers in SEA attempt to register European brands, especially from companies that have gained a certain reputation and trust among customers. This verification would help determine whether the issue was isolated or part of a wider pattern, therefore requiring a different strategy. Apart from the geographical scope, the SEA HD also highlighted that bad-faith activity is not limited to trademarks, as infringers would often register identical domain names, company names, or even social media and e-commerce accounts to mislead consumers. Therefore, verifications should be extended to a larger range of assets and channels to secure their IP strategy.
Third, the SEA HD helped to prepare a step-by-step enforcement strategy:
- Determine whether the SME had any rights that could form the basis for action in Vietnam. The SEA HD carried out verifications on the Vietnam IP Office databases for local trademarks and on the Madrid database for international registrations. The results were not positive as only an international registration designating Vietnam was identified, but with no effective local protection (total provisional refusal issued by the Vietnam IP Office).
- Consider protective measures for their assets in Vietnam, notably by filing a new trademark application before the Vietnam IP Office. To enforce your rights in Vietnam, you need rights that are registered locally.
- Identify and verify the status of these bad-faith trademarks. Based on the status of each trademark, a dedicated action would be available: either filing a cancellation request on grounds of bad faith (against a registered trademark) or filing an opposition procedure or third-party observations against a trademark pending registration (depending on the exact timeline).
- Investigate potential links with the third party (applicant could be a former partner or distributor, a simple customer) and collect evidence to prove bad faith behaviour (preferably via notarised evidence).
- The SME should also consider engaging a local IP lawyer, which would help to refine the enforcement response strategy and implement it. A list of External IP experts collaborating with the SEA HD in Vietnam was shared.
Lastly, the SEA HD also reminded the SME that similar situations were resolved promptly by simply sending a cease-and-desist letter from a local lawyer. An amicable settlement is always possible and could also help them save both time and resources.
Result: The SME quickly contacted their usual lawyer in Spain, along with several local IP lawyers, to finalise a response strategy and obtain quotations. Having no registered rights in Vietnam, filing a trademark application would also be a top priority. Such a strategy would also be replicated in other countries and markets to avoid having to handle any similar future issues.
- Lessons Learnt:
SMEs need to register their trademark as early as possible in the countries where they operate or plan to do business. If not done on time, there is a risk that bad-faith actors may register their own assets before them.
SMEs should proactively conduct trademark searches and monitor local IP databases, e-commerce and social media platforms to prevent bad-faith filings and detect potential unauthorised sellers at an early stage.
European companies must anticipate that infringers may also seize the opportunity to register other assets unlawfully (domain names, company names, or even e-commerce and social media accounts). A comprehensive IP strategy should therefore include surveillance and protection across multiple channels.
Negotiation can be an effective and swifter option in case of bad-faith registration. While legal remedies such as cancellation and opposition procedures are available, these are often lengthy in Vietnam. Negotiating with bad-faith filers, supported by legal counsel, may provide a faster and more cost-efficient solution.