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A Fresh Look at the Lawsuit INTERBRAND Recognized by a Court as Famous Trademark in Vietnam
(Ngày đăng: 2018-09-25)

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.

 


[1] Excerted from the Study Report under the Research Project funded by the INTA and MoST tittled ”How to Protect Famous Trademark under the laws of Vietnam – Current Situation and Solution” published on November 17, 2017 in Hanoi as well as published as a book by the Technical Science Publishing co-authored by Attorney Le Quang Vinh and Dr. Phan Ngoc Tam

[2] Section 74(2)(g) stipulates that a mark shall be deemed to be indistinctive if it is a sign identical with or confusingly similar to another person's mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable

[3] Section 74(2)(i) set outs that a mark shall be deemed to be indistinctive if it is a sign identical with or confusingly similar to another person's mark recognized as a well-known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration was aimed at taking advantage of the reputation of the well-known mark

[4] It was likely that the court relied on Section 129(1)(d) of the IP Law setting out the protection of famous or well-known registered trademark other than Section 6(3)(a) of the IP Law specifying a general and sparse rule for securing famous or well-known unregistered trademark.

Section 129 of the IP LawActs of infringement of rights to marks, trade names and geographical indications

(1) The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

(d) Using signs identical with, or similar to, well-known marks, or signs in the form of translations or transcriptions of well-known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well-known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well-known mark owners.

Section 6(3)(a) of the IP Law states that industrial property rights over famous trademark, among other things, is established on the basis of use, not dependent from the registration procedures.

[5] See more the link: http://banquyen.net/tin-tuc-ban-quyen/nhan-hieu-interbrand-thang-kien-tai-viet-nam/

[6] Article 6(6) Decree 105/ND-CP as revised by Decree 119/2010/ND-CP stipulates that for a famous or well-known trademark, the subject of protection is determined on the basis of the submission of documents, evidences showing the degree of reputation or well-knownness of the trademark at issue in accordance with Section 75 based criteria of the IP Law

[7] Section 75. Criteria for evaluation of whether or not a mark is well-known or famous

The following criteria shall be taken into account when considering whether or not a mark is well known:

1. The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

2. The territorial area in which goods or services bearing the mark are circulated.

3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

4. Duration of continuous use of the mark

5. Wide reputation of goods or services bearing the mark.

6. Number of countries protecting the mark.

7. Number of countries recognizing the mark as a well-known mark.

8. Assignment price, licensing price, or investment capital contribution value of the mark

[8] Section 82. Civil Proceeding Code of 2004 as revised in 2011. Sources of Evidence

Evidence shall be collected from the following sources:

1. Readable, audible or visible materials;

2. Physical evidence;

3. Testimony of concerned parties;

4. Testimony of witnesses;

5. Results of examination by experts;

6. Record of the results of assessment on-the-spot;

7. Customs [customary practice];

8. Results of valuation of assets;

9. Other sources stipulated by law.

 

 

 

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