Background of the case

The case which dates back to 2007 derives from a revocation action by Complainant against the mark P.T& device (shown below) registered in the name of  Hiep Tien Long Chemical Company Limited (Respondent). It is reported that Complainant already bought the mark “U.S & device” (see below) from which was allegedly under the ownership of PPI  Company. The marks at dispute are used on additives to lubricant oil sold in the market of Vietnam.

Historically speaking, Vinh Hang Trading Co., Ltd was formerly an exclusive distributor of the lubricant oil additives bearing the trademark “U.S & device” imported from PPI Company. Nevertheless, right after their business relationship ended in 2004, Director of Vinh Hang Trading Co., Ltd had set up her own company named as Hiep Tien Long Chemical Company Limited (now Respondent) and in July 2005 Vinh Hang Trading Co., Ltd filed an application for registration of the mark in its name which contained every component basically the same as the mark “U.S & device” except for the verbal element “U.S” replaced with P.T.  Since neither opposition was filed by third party nor refusal grounds were concluded by NOIP, such mark had been registered in June 2006.

Since the existence of earlier registered mark P.T & device, of course, Complainant’s later filed mark U.S & device filed in January 2007 was rejected by NOIP because of a likelihood of confusion with this earlier mark.

Bad Faith Filing Held by NOIP

Although the disputed mark P.T & device was granted after the date of coming into force of the 2005 Law on Intellectual Property as revised 2009 (the IP Law), pursuant to Section 220.3, the grounds for invalidation or cancellation of a trademark registration applicable must be the statutory provisions effective at the time of grant of such registration, i.e. that is Article 29.2.a of the Government’s Decree 63/CP of October 24, 1996.  

In its cancellation action, Complainant accused Respondent of appropriating its 60-year worldwide renowned trademark U.S & device, of dishonesty and taking unfair competition when the U.S device branded lubricant additives had been sold 10 years before the date of filing by Respondent.

In favor of Complainant, NOIP issued its Decision 134/QD-SHTT of January 21, 2009 revoking the trademark registration no. 72858, further holding that Respondent’s filing is deemed dishonest since it falls into the above said Article 29.2.a providing for that the person who has been granted a trademark registration is neither entitled to file the application for registration of that trademark, nor assigned the right to file the application for registration of the trademark.

Respondent filed subsequently an appeal against NOIP’s Decision 134. However, in its Decision 1178/QD-SHTT, NOIP dismissed the appeal and upheld its Decision 134.

No Bad Faith Asserted by NOIP’s superior

The 2^nd appeal by Respondent continuously filed with the NOIP’s superior as the Minister of MoST requesting MoST to declare NOIP’s Decision 134 null and void.

During the litigation at the instance court, the MoST’s representative reckoned that the key issues “likelihood of confusion” and “dishonesty” are thoroughly examined but the legal and practical grounds applicable for the Decree 63 cancellation action are not definite, thus in its Decision 3185/QD-BKHCN of October 18, 2013, MoST reversed NOIP’s Decision 134 meaning that restoration of the cancelled mark P.T & device is granted. It is noted that the key matters heard by the court in this administrative lawsuit is not the substantive arguments but absolute administrative proceedings, e.g. Complainant criticized MoST for neither settling its complaint appropriate to the prevailing provisions nor notifying the infested party (Complainant), nor organizing communications, and nor dispatching complaint settlement decision to him.

In view of insignificant matters claimed by Complainant and furthermore, one day prior to the hearing, MoST proactively issued its new decision on amendment of Decision 3185, requesting NOIP to repeal the latter’s Decision 134, the court favored MoST and dismissed the complaint by Complainant. The instance court’s judgment is reported to be continously appealed by Complainant with the court of appeal.

Comments

Although neither the exact concept “bad faith” in trademark filings is found in the Vietnam trademark related legislation, any “dishonest act” in establishing an exclusive right over a trademark which is prohibited under the laws of Vietnam found may bring in a successful chance of cancellation of prior registered trademark. However, from the MoST’s perspective in the above case, it seems that no bad faith filing is established if an earlier registered trademark is not identical with the subject trademark.