A Fresh Look at the Lawsuit INTERBRAND Recognized by a Court as Famous Trademark in Vietnam[1]

Background of the Case

In 2010, Interbrand Group, a UK group established in 1974 renowned for global brand consultancy, most known for its Best Global Brands Rankings (the “Plaintiff”), sued Interbrand Joint Stock Company (InterBrand JSC), a Vietnamese company before a Hochiminh city-based court (the “Defendant”) for illegally using the term “INTERBRAND” in InterBrand JSC business activities including internet advertisement, unlawfully use of INTERBRAND as its trade name and appropriating, illegally using the ccTLD domain names interbrand.com.vn  and interbrandvn.com.vn, and accused InterBrand JSC of infringing its famous trademark INTERBRAND

While the international legal frameworks concerning the protection of well-known trademark such as the Paris Convention, TRIPs Agreement and WIPO Joint Recommendation of 1999 ignored to define what a well-known or famous trademark is, Vietnam is brave to define in its 2005 IP Law in Section 4(20) that a well-known mark means a mark widely known by consumers throughout the territory of Vietnam

Getting back to the above dispute, in reply to the request by the court in question whether INTERBRAND is a famous or well-known mark or not, in its official letter no. 5467/SHTT-TTKN, the National Office of Intellectual Property of Vietnam (NOIP) responded that INTERBRAND is a well-known mark in Vietnam since 2006 and its reputation is widely known through the press and media. Moreover, it is worth noting that many organizations, agencies, corporations including IPR enforcement authorities regularly utilize the information published by Interbrand Group.

On another note, on March 21, 2006 the Defendant applied for registration of mark “Interbrand Corporation, sánh bước thành công” under App. No. 4-2006-03960 designating advertisement, business consultancy, market investigation in class 35 and such application was filed sooner than that of Interbrand Group on December 14, 2006 seeking for protection of the mark INTERBRAND/App. No. 4-2006-21871 covering the same kinds of services in class 35 and other classes. Below are the particulars of the trademarks:

Defendant’s Applied-for Mark	Plaintiff’s Applied-for Mark
Filed on March 21, 2006   Class 35: advertisement, business consultancy, market investigation	Filed on December 14, 2006   Class 35 & other classes: Business consultancy, brand assessment, public relations, etc.

Upon receiving an opposition by Interbrand Group, the NOIP rejected protection of the applied-for mark of InterBrand JSC on the ground that INTERBRAND is a widely used and recognized trademark in accordance with Section 74(2)(g)[2] of the IP Law but not based on the ground of famous trademark under Section 74(2)(i)[3].

In late 2012, the court of Hochiminh city held that the trademark INTERBRAND[4] that was granted a certificate of registration by the NOIP in favor of the Plaintiff (after its successful opposition against earlier mark Interbrand Coporation means that the Plaintiff’s later-filed application proceeded to register), is a famous trademark in the field of brand assessment and building advice whereas the Defendant also engaged in the brand promotion, appraisal and building. The use the abbreviation of Interbrand JSC will cause misunderstanding as to business entities, to infringe upon the registered trademark in the name of Interbrand Group. For the reason, the court ordered that the Defendant stop using the mark INTERBRAND, the abbreviation containing the trademarked term INTERBRAND in the Defendant’s business registration certificate and force to return the domain names infringing the famous trademark[5].

Comments

It may interest you to know that the court seemingly relied upon the expert opinion delivered by the NOIP to issue its judgment without considering the interpretation of applicability of Section 6(3)(a) of the IP Law in terms of the protection of unregistered famous trademark that is further guided at Article 6(6) Decree 105/2006/NĐ-CP providing the details and guiding the implementation of some sections of the IP Law on securing the intellectual property rights as revised by Decree 119/2010/NĐ-CP[6] making reference to Section 75 the IP Law[7]. In accordance with these provisions, the court should have been responsible for asking the Plaintiff for submission of relevant evidences showing the well-knownness of the disputed trademark as well as for determining whether the trademark at issue had fully complied with 8-criteria famous trademark recognition rule based on Section 75 or not. If the assumption is accurate, it is likely that Section 75 had never been applied in support of the lawsuit and in another aspect the Defendant had never been given a reasonable opportunity to defense himself against the Plaintiff’s evidences that were not compliant with the rule based on Section 75. The reason for the lawsuit with a simple end may be explained that all arguments sided with the Plaintiff was due to lack of game-changing lawyers who had enough knowledge to strike back 2 most important legal matters:

1. The rights over a well-known or famous trademark that were recognized in this case should have been the rights applicable for unregistered trademark (supposing that the Plaintiff’s trademark had been well-known prior to March 21, 2006 – the date on which the Defendant’s trademark was filed, and such date is temporarily assumed that the date on which the Defendant started conducting the suspected infringement act against the rights over well-known trademark), but not those are established on the basis of a certificate of trademark registration no. 146017 granted on May 6, 2010 in the name of the Plaintiff;
2. The fact the court relied upon the expert opinion made by the NOIP (Official Letter No. 5467/SHTT-TTKN) to release its judgment is a mistake since the expert opinion delivered by the NOIP is not one of the admissible sources of evidence[8].

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including IP-related filing and prosecution, enforcement, anti-counterfeiting, litigation and domain name. For further discussion, please get in touch with us at vinh@bross.vn or 84-903 287 057.