Company name 

KENFOX IP & LAW OFFICE

Company address  Building No. 6, Lane 12/93, Chinh Kinh Street, Nhan Chinh Ward, Thanh Xuan District, Hanoi, Vietnam
Contact person  Contact person: Mr. Chu Thanh TU
Phone  Tel: +84 24 3724 5656
Fax  Fax: +84 24 3724 5885
Website  Web: www.kenfoxlaw.com
Email  Email: info@kenfoxlaw.com
Company details 

Company description

KENFOX provides a full range of IP related services in Vietnam, Laos, Cambodia, Myanmar and other Asian countries. We are more flexible than traditional big-law firms and meet each client's needs in a productive and cost-effective manner.
 
The core team of KENFOX has accumulated rich experience in providing comprehensive legal services with respect to areas of practices that the firm focuses. The members of the firm have extensive experience in handling various national and international/cross-border legal and commercial transactions. As a law firm operating in various jurisdictions, KENFOX has the expertise, resources and strength in depth to meet the most demanding expectations of clients. A large proportion of matters on which the firm is instructed, whether contentious or non-contentious, are multi-jurisdictional. It is KENFOX’s policy to forge non-exclusive associations with laws firms in other jurisdictions noted for their expertise in particular fields and, in so doing, to ensure that the clients have the best advice and representation available.
 
KENFOX has many years’ experience in planning, coordinating and executing actions to combat IP infringement and piracy. KENFOX has coordinated with Anti-Smuggling and Investigation Department (ASID) of General Department of Vietnam Customs, Economic Police, Market Management Agencies in Vietnam, Laos, Cambodia, Myanmar and other Asian countries to successfully conduct many raids against traders and manufacturers of counterfeits and infringing trademarked goods, seizing thousands of counterfeit and infringing products.
Practice areas

Intellectual property; Investment and Enterprise; Dispute resolutions; Regulatory compliance

Practitioners 

Leading practitioners

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Areas of practiceCommercial, Intellectual property, Litigation

Chu Thanh TU is a partner in the IP litigation and investment consultancy practice of KENFOX.

TU concentrates his practice on IP litigation and transactions and on counseling startup companies on new business formations and structure. TU has represented clients at all levels of litigation and his clients range from emerging companies to leading generic pharmaceutical companies, medical device manufacturers, optical and laser technology companies, publishers and media companies, major universities, and information services and technology companies.

TU has represented his clients in complex litigation and appellate courts, in alternative dispute resolution forums and before the IP Office of Vietnam, Intellectual Property Departments of Laos, Cambodia and other Asian jurisdictions. He has resolved many disputes without the costly involvement of litigation and has settled many litigated matters to avoid protracted proceedings and related costs. TU has presented both legal and technical issues in a manner easily understood by the enforcement authorities. He also provides expert legal opinions for clients who have been accused of patent infringement.

TU also provides legal advice in areas of foreign investments pertaining to setting up a 100% foreign invested or joint venture enterprise, joint stock company in Vietnam, registration and de-registration of branches, businesses and representative offices, finding partnerships, settling negotiations, reviewing and drafting of legal documents, etc. His commercial advise also encompasses overseeing and handling corporate and real estate mergers and acquisitions, restructurings, securities offerings for clients in the automotive, machinery, banking and finance, chemicals, pharmaceuticals, computer software, energy, real estate development and management, commercial and industrial construction, and entertainment industries.

Experience

  • Established a non-infringement position for a Vietnamese corporation when threatened with litigation.
  • Offered counseling on patentability issues at every stage of the product cycle, including its genesis to clients.
  • Provided clients with evaluations of the strength and scope of patents and related intellectual property in valuing businesses and technologies for acquisition purposes.
  • Counseled to clients on patent infringement likelihood, provided patent opinions for both offensive and defensive purposes.
  • Conducted patent infringement enforcement actions, prosecution and defense, including litigation when necessary.
  • Provided clients with alternative dispute resolutions, both before and during litigation, including party-to-party negotiations, court assisted mediation, the use of mediators and arbitration proceedings.
  • Represented clients with preparation of dossiers and documents and liaised with competent authorities for implement of procedures of investment registration and investment project evaluation the laws.
  • Represented clients on negotiation with their partners with regard to their needs of investment cooperation, assignment/receipt of assignment of project.
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Areas of practicePatent, Trademark, Industrial Design

Do Van SU concentrates his practice on all aspects of intellectual property law including patents and trademarks, with significant experience and emphasis on Internet and technology law. SU leads an enforcement team who assists clients to conduct investigations to track infringing and counterfeit product from manufacturing/wholesale source. He regularly handles matters related to developing and implementing programs to combat online counterfeiting and infringement. His profound experience and expertise has enabled KENFOX to develop effective and efficient online enforcement solutions.  As a result, KENFOX coordinated with Anti-Smuggling and Investigation Department (ASID) of General Department of Vietnam Customs, Economic Police, Market Management Agencies to successfully conduct many raids against traders and manufacturers of counterfeits and infringing trademarked goods, seizing thousands of counterfeit and infringing products.

As a result of his responsibilities related to KENFOX’s online brand protection efforts, SU is highly experienced in all types of internet website and domain name disputes. He has represented clients in numerous counterfeiting, trademark infringement in enforcement actions in coordination with the enforcement authorities that have resulted in rulings/judgments against infringers and various domains names being transferred to clients. SU also has significant IP enforcement experience removing infringing content from Internet, websites and social media networks.

SU has worked numerous times with law enforcement and customs authorities internationally to protect KENFOX clients’ brands. His efforts overseeing hundreds of investigations and raids in the Vietnam and ASEAN have resulted in the seizure of thousands of counterfeit products.

Experience

  • Provided food and beverages companies with anti-counterfeiting brand protection strategies.
  • Participated in training of law enforcement agencies (Customs officials).
  • Conducted in-market surveys or investigations and obtaining test purchases
  • Coordinated with law enforcement agencies to conduct raids against counterfeits and infringing electric bikes and motorbikes traded/assembled in Vietnam.
  • Participated in regular search and seizure operations.
  • Provided opinions on patent infringement, validity and enforceability
  • Counseled clients on licensing and portfolio development
  • Acted for clients in trademark and trade dress litigation in Vietnam.
  • Rendered opinions on trademark infringement, validity and enforceability to pharmaceutical companies.
  • Advised on trademark opposition and cancellation proceedings.
  • Provided worldwide brand protection counseling for combating domestic and off-shore Infringers and counterfeiters
  • Conducted internet copyright and trademark enforcement actions including removal of infringing links from counterfeit websites
  • Provided advice to clients on domain name acquisition, protection and disputes.
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Areas of practiceIntellectual property, Commercial, Technology, Education

Ngo Thu HUONG is a partner in our intellectual property, commercial and IT practice. Prior to joining the firm in 2011, HUONG worked for several years in the IP practice of one of Vietnam’s major law firms. She has over 20 years' experience of advising on intellectual property law, particularly such as trademarks and copyright. She also advises on commercial contracts including agency, distribution and supply agreements, as well as advertising and sponsorship agreements.

HUONG has worked hand-in-hand with some of the world’s most recognizable brands to develop strategies for brand development, clearance, protection, monetization, expansion, and enforcement. She partners with clients that range in size from start-ups to leading global franchises, in a wide array of industries, including fashion, jewelry, luxury, and consumer goods; alcohol; casinos and hospitality; franchise restaurants; medical devices, pharmaceuticals, and life sciences, including in the cannabis space; universities; and defense products. She is a trusted advisor and partner to larger clients’ in-house legal teams and regularly called upon to step into an in-house counsel role for smaller and start-up clients.

HUONG represents a range of clients including manufacturers, brand owners and publishers, and has a special focus on the technology and education sectors.

HUONG is recognized by various clients for her commercial, information technology and intellectual property work, which describes her as “very experienced, totally pragmatic, and highly efficient”, and says that the lawyers in her team ”actively advise, rather than just process, and have real international capacity”.

Experience

  • Counseled to one of the world’s most recognizable quick service restaurant brands in (i) managing global brand prosecution and enforcement portfolio, (ii) supporting client franchising activities, and (iii) working with client to migrate and monetize IP assets through assignments, licenses, and franchise agreements.
  • Served as counsel to one of the world’s preeminent casino resort hotel brands in (i) managing global brand prosecution and enforcement portfolio by providing big-picture strategic advice including enforcement of the brands, (ii) developing licenses and licensing structure to individual resorts and operators, and (iii) giving advice on cybersquatting disputes.
  • Advised clients’ luxury swim, apparel, and accessories brands in (i) guiding them through formation and selection, clearance, and adoption of a brand and expansion of that brand globally and (ii) managing global brand prosecution and enforcement portfolio.
  • Counseled to one of the world’s leading medical device and biologics companies in managing global brand portfolio, including enforcement of the brand before the courts and ASEAN intellectual property offices.
  • Rendered advice to a world leading defense contractor, and advised on prosecution, expansion, and enforcement of global brand portfolio in developing and implementing successful campaign to rescue the client’s mark from threatened genericide.
  • Counseled to clients on selection, clearance, adoption and protection of brands.
  • Coordinated with clients to develop brand enforcement programs, including enforcement against unauthorized use of brands on social media.
  • Advise clients as to national rules and regulations relative to trademark protection, licensing, packaging, advertising, and marketing in various industries.