By Dr. Bui Duc Anh and Lawyer Nguyen Nhu Hai – UniLaw LLC

WHAT CAN WE LEARN FROM THE DISPUTES OVER ASANO TRADEMARK

Protecting a brand in a developing market like Vietnam requires not only a strong legal service in vietnam but also a deep understanding of the vietnam intellectual property law. The landmark dispute between the “ASANO” and “ASANZO” marks serves as a critical lesson for both domestic and international enterprises. This case highlights the thin line between legitimate competition and trademark infringement, and the severe consequences for those who step over it. As a vietnam intellectual property lawyer, I will analyze this case and other related disputes to provide a comprehensive guide on navigating the complexities of vietnam IP law.

The Landmark Battle: ASANO vs. ASANZO and the Court’s Final Verdict

The dispute began when Dong Tam Trading and Production Co., Ltd. (Dong Tam Co.), the lawful owner of the “ASANO & device” trademark (Registration No. 107919, granted in 2008), discovered that Asanzo Vietnam Electronics Joint Stock Company (Asanzo Vietnam) was using the “ASANZO” mark on similar electronic goods. Dong Tam’s registration covered washing machines, blenders, televisions, and various household appliances. In 2015, Dong Tam Co. found Asanzo Vietnam’s products, including LED televisions, being sold in the market with a brand name and logo strikingly similar to their protected ASANO mark.

Dong Tam Co. sought an expert assessment from the Vietnam Intellectual Property Research Institute (VIPRI), which concluded that the “ASANZO & device” mark used on televisions, rice cookers, and even company vehicles was indeed an infringing element against the protected ASANO mark. Despite Asanzo Vietnam’s argument that they held their own trademark registration (No. 221067 for the word “ASANZO”), the court noted that in practice, they were using a stylized “ASANZO & device” that was not identical to their registration and was confusingly similar to Dong Tam’s mark.

In the final Appeal Judgment No. 01/2019/KDTM-PT, the High People’s Court in Ho Chi Minh City upheld the lower court’s ruling. The Court ordered Asanzo Vietnam to:

• Immediately cease the infringement by stopping the use of the “ASANZO & device” mark on their website, signage, vehicles, and all products in Groups 7, 9, and 11.
• Remove the infringing mark from all products currently circulating in the Vietnamese territory.
• Pay 100,000,000 VND in damages to Dong Tam Co..
• Issue a public apology and rectification in three consecutive issues of the Thanh Nien newspaper.

This case is a stark reminder that even if you have a registration for a word mark, stylizing it in a way that mimics a competitor’s earlier protected mark can lead to total brand destruction and heavy financial liabilities. To avoid such pitfalls, consulting a vietnam IP lawyer during the branding phase is indispensable.

Understanding the Criteria for Trademark Infringement under Vietnam IP Law

The core of the ASANO vs. ASANZO dispute lies in “confusing similarity.” To determine whether an infringement has occurred, the vietnam intellectual property law looks at both the sign itself and the goods or services it represents. According to Article 129 of the Intellectual Property Law:

“Article 129. Acts of infringement of rights to marks, trade names and geographical indications:

1. The following acts, if performed without the permission of the mark owner, shall be considered an infringement of the rights to the mark:

…

c) Use of a sign similar to a protected mark for goods or services that are identical, similar, or related to the goods or services on the list registered with the mark, if such use is likely to cause confusion as to the origin of the goods or services;”

Interpretation: This law protects brand owners from competitors using “copycat” logos or names that trick customers into thinking two different companies are connected. If the products are similar (like two different brands of TVs), the protection against similar names is very strict.

In the ASANO case, the court and VIPRI focused on the fact that while “ASANZO” had an extra ‘Z’, the overall phonetic sound and visual structure—specifically the stylized ‘A’ and the placement of the text—created an “infringing element”. Under Decree 105/2006/ND-CP, a sign is similar if it has features so close in composition, pronunciation, or meaning that an average consumer cannot easily distinguish them.

The Weight of Expert Assessments: How VIPRI Influences Litigation

In almost every IP dispute in Vietnam, including the ASANO case and the “Nhua Binh Minh” dispute, the parties rely heavily on the Vietnam Intellectual Property Research Institute (VIPRI). Article 201 of the IP Law provides for these assessments:

“Article 201. Intellectual property assessment:

1. Intellectual property assessment is the use of professional knowledge and expertise by organizations and individuals… to evaluate and conclude on issues related to intellectual property rights.”

Interpretation: Because judges are not always experts in design or technical brand elements, they use specialized institutes to give a professional opinion on whether one logo is too similar to another.

While VIPRI’s conclusions are technically “consultative” for the court, they carry immense weight. In the ASANO case, the VIPRI assessment provided the scientific basis for the court to declare the stylized “ASANZO” logo an infringing element. However, as seen in the “Nhua Binh Minh” vs. “Nhua Binh Minh Viet” case (Judgment 40/2025/KDTM-PT), the court might reject an assessment if the source material used for comparison is found to be inaccurate or if the Cục Sở hữu trí tuệ (IP Office) provides a conflicting official opinion on registration. This underscores the need for a vietnam intellectual property lawyer to scrutinize the evidence and not rely solely on a single report.

Business Names vs. Trademarks: The Trap of “Legitimate” Registration

A common misconception among business owners in Vietnam is that having a business name approved by the Department of Planning and Investment (DPI) grants them the right to use that name as a trademark. This was a central argument in the “Mekong” vs. “Mekong Foods” case and the “Nhua Binh Minh” case.

In the “Nhua Binh Minh” vs. “Nhua Binh Minh Viet” dispute, the defendant argued that because their company was legally established as “Nhua Binh Minh Viet,” they had the right to use that name on their products. The plaintiff, however, held a much older trademark registration for “NHUA BINH MINH”. The vietnam IP law is clear on this conflict:

“Article 19 of Decree 01/2021/ND-CP on Enterprise Registration:

1. It is not permitted to use a trade name, trademark, or geographical indication of an organization or individual that has been protected to form the proper name of an enterprise, unless approved by the owner of that trade name or trademark.”

Interpretation: You cannot name your new company after someone else’s famous brand just because the business registration office didn’t block it. The brand owner’s rights usually come first.

In the ASANO case, even if Asanzo had a legitimate business name, using that name as a “sign” on products to mimic a competitor’s trademark was still ruled an infringement. Business owners must understand that a business license is not a shield against IP infringement claims. If your business name conflicts with a prior trademark, the vietnam intellectual property lawyer for the brand owner can request the DPI to force you to change your company name.

The Consequences of Infringement: Damages, Injunctions, and Public Shaming

Once infringement is proven, as it was in the ASANO and “Mam Giao Thao” cases, the court applies various civil remedies. Article 202 outlines these measures:

“Article 202. Civil remedies:

The Court shall apply the following civil remedies to handle organizations and individuals that have committed acts of infringement of intellectual property rights:

1. Compelling the termination of the infringing act;

2. Compelling a public apology and rectification;

3. Compelling the performance of civil obligations;

4. Compelling the payment of damages for loss;”

Interpretation: A court can force a company to stop selling products, fix their mistakes in public newspapers, and pay money to the person they harmed.

In the “Mam Giao Thao 666” case, the defendants were ordered to remove all “Giao Thao” and “Co Thao” signs from their shop, packaging, and even social media, and pay 150,000,000 VND in attorney fees to the plaintiff. Public apologies, while seemingly minor, serve as “public shaming” that can destroy a brand’s reputation and consumer trust, which is often more costly than the actual fine.

Calculating Monetary Damages: The 500 Million VND Statutory Limit

A recurring theme in Vietnamese IP litigation is the difficulty of proving actual material loss. In the ASANO vs. ASANZO appeal, the plaintiff requested 500 million VND, but the court only awarded 100 million VND because the plaintiff could not provide specific evidence of the profit Asanzo Vietnam made directly from the infringement.

Article 205 provides the basis for these calculations:

“Article 205. Bases for determining damages:

…

c) Where the ground for determining the level of compensation for material damage … cannot be determined, the level of compensation for material damage shall be determined by the Court depending on the extent of damage, but not exceeding five hundred million (500,000,000) dong.”

Interpretation: If a brand owner can’t prove exactly how much money they lost or how much the infringer made, the judge can still pick a fair number, but it usually cannot go over 500 million VND (roughly \$20,000 USD).

As a vietnam IP lawyer, I often advise clients to meticulously document sales drops and marketing costs to aim for higher compensation, but they must be prepared for the statutory cap if evidence is weak. This was also seen in the “Aikido” cooling patch case, where the court awarded 12 million VND based on the value of seized goods.

Domain Names and Unfair Competition: The Shopback and BMW Precedents

Intellectual property disputes in Vietnam are not limited to physical goods. The digital frontier is equally contentious. The cases involving the “Shopback” and “BMW” domain names illustrate how vietnam IP law treats “cybersquatting” as unfair competition.

In the BMW case, a defendant registered domains like “bmwmotorrad.com.vn” and “bmwmotorrad.vn” without authorization and used them to advertise car repair services. The court applied Article 130 of the IP Law:

“Article 130. Acts of unfair competition:

1. The following acts shall be considered acts of unfair competition:

…

d) Registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected marks or trade names of others… for the purpose of possessing the domain name, or taking advantage of or damaging the reputation and popularity of the respective mark or trade name.”

Interpretation: It is illegal to register a website name that sounds like a famous brand just to steal their traffic or prevent them from using that name online.

The court ordered the revocation of these domain names to prioritize the original brand owner (BMW) for registration. Similarly, in the “Shopback” dispute, the court initially favored the mark owner but the appeal highlighted a critical procedural detail: the mark owner must prove their mark was widely used and reputable in Vietnam before the domain was registered. This is a vital reminder that timing and proof of “bad faith” are essential in domain disputes.

The “First to File” Principle and the Bad Faith Exception

Vietnam generally follows the “first-to-file” rule, meaning the first person to register a mark gets the rights. However, the “Aardwolf” case (Judgment No. 03/2020/KDTM-PT) demonstrates that this is not absolute if “dishonesty” or “bad faith” is involved.

The plaintiff in the Aardwolf case claimed the defendant registered the mark “Aardwolf” in Vietnam knowing the plaintiff had already registered it in Australia. Under vietnam intellectual property law, a registration can be canceled if the applicant acted in bad faith. Article 96 and related circulars state:

“Section 126 of Circular 01/2007/TT-BKHCN:

A trademark registration certificate shall be invalidated if the applicant registered the mark with bad intentions… knowing that the mark is being used widely in Vietnam or is a famous mark in other countries… for the purpose of taking advantage of that reputation or preventing the mark owner from entering the market.”

Interpretation: If you register a brand name because you know someone else owns it abroad and you want to “extort” them or block them from coming to Vietnam, your registration can be taken away.

In the Aardwolf case, the court eventually ruled for the defendant because the plaintiff couldn’t prove a direct link or that the mark was “famous” enough in Vietnam at the time of the first application in 2003. This proves that while bad faith is a valid legal tool, the burden of proof is very high.

Strategic Advice for Brand Owners from a Vietnam IP Lawyer

The disputes over ASANO, Nhua Binh Minh, and others provide several key takeaways for any business operating in Vietnam:

• Register Early and Broadly: Don’t wait until you enter the market. Register your mark as soon as possible. As seen in the “Que Toi” case, owning the trademark registration is the only way to have the standing to sue.
• Monitor the Market: Dong Tam Co. succeeded because they caught the infringement early and took “Vi Bang” (bailiff’s witness statements) to preserve evidence.
• Consistency is Key: If you register a word mark, use it as registered. Asanzo Vietnam lost partly because they stylized their logo in a way that moved it closer to their competitor’s logo.
• Don’t Trust Business Licenses Alone: Just because you registered a company name doesn’t mean you aren’t infringing someone’s trademark. Always perform a trademark search before naming your company.
• Use Professional Legal Service in Vietnam: IP law is highly technical. A specialized vietnam IP lawyer can help you with VIPRI assessments, cease-and-desist letters, and navigating the court system.

Conclusion

The ASANO vs. ASANZO saga is a cautionary tale of brand similarity and the power of vietnam intellectual property law. It proves that the Vietnamese courts are increasingly willing to protect established trademarks against “copycat” signs, even when the infringer is a large, well-known corporation. Whether it is a physical product like a television, a food item like “Mam Giao Thao,” or a digital asset like a domain name, your intellectual property is your most valuable asset. Protecting it requires vigilance, proper registration, and the support of an experienced vietnam intellectual property lawyer.

Unilaw has a long history of helping clients—from global giants like BMW to local household names—secure their brands and win IP battles. By understanding the lessons from these judgments, you can ensure your brand remains unique, protected, and profitable in the vibrant Vietnamese market.