Attempting to Find a Likelihood of Confusion from a Legal Perspective in Cầm Đồ Xanh (Cam Do Xanh or Green Pawn) and Thế Giới Cầm Đồ (The Gioi Cam Do or World of Pawn) Accused by Thegioididong of Plagiarizing and Infringing its IP Rights
Email to vinh@bross.vn
Originally written article can be viewed at link: http://baophapluat.vn/tieu-dung-va-du-luan/dau-hieu-vi-pham-trong-hoat-dong-kinh-doanh-cua-chuoi- crab-hang-cam-do-439504.html
(baophapluat.vn) - Facebook social network for the past few days has spread the image of two pawn shops in the southern region with advertisement signboards of "Cam Do Xanh"(Cầm Đồ Xanh) and "The Gioi Cam Do" (Thế Giới Cầm Đồ).
Does it Violate Business Ethics?
As recorded, both stores use the signboards with colors, fonts as well as brand identity images nearly identical to the two major retail systems: Thegioididong and Dien May Xanh[1].
The fact that the signboards appear to make many people mistake Thegioididong to jump into the field ... pawn. Many people said that it was clear that "green pawn" and "world of pawn" had plagiarized, taking advantage of the brand's popularity, the business name Dien May Xanh and Thegioididong to build advertisement signboard for himself. Reporters of the PLVN contacted Thegioididong to receive comments but the company has not yet received any feedback.
In this situation, lawyer Le Quang Vinh, BROSS & Partners, an intellectual property expert has analyzed to help readers have a clearer view of the case. Lawyer Vinh stated: the two signboards in the right column in the above table (see picture) are all Thegioididong while the left column corresponds to the signboard of suspected infringement of intellectual property rights held by Thegioididong company.
By comparison, we can easily see that the structure and presentation of the first suspected signboard of infringement seem to have copied some elements of the signboard Dien May Xanh, namely the outer edge in yellow, the blue sea as background inside, the color of the word Cam Do Xanh has dark yellow like the phrase Dien May Xanh.
However, the basic difference between these two signboards is that the first suspected signboard does not copy the human logo (made up of rhombuses and the circle is black) placed on the background of a circle having dark yellow background under the signboard Dien May Xanh. And another thing is that the phrase in yellow is present on the blue background in two signboards are different: Green Pawn (Cam Do Xanh) and Green Machine (Dien May Xanh).
Nearly similar to the first alleged signboard of infringement, the second suspected sign also seems to be close to the dark gray background with the yellow border of Thegioididong signboard. The difference between the two signs also appears in the absence of a human logo (made up of diamonds and a black circle) placed on the background of a circle with a dark yellow background on the suspicious second signboard. In addition, the words on the second sign board of suspected infringement are The Gioi Cam Do (Word of Pawn) compared to "thegioididong.com" in Thegioididong signboard.
In terms of business ethics, there may also be a view that the above-mentioned copy by the pawn company is the act of plagiarism, copying or free-riding of the familiar image of other people's brand identity.
The law cannot handle it?
From a legal perspective, the above accusation may be completely different, specifically, can Thegioididong use legal tools to successfully prevent the use of the above suspected signboards by the pawn company?
Under the current laws, The Gioi Di Dong Company (right holder) can protect its intellectual property rights and combat unfair competition act by invoking one or more objects of intellectual property rights that he claims that he has that right and that right is protected by law. The objects of intellectual property rights that the right holder can cite include: (1) dealing with infringements of the exclusive rights of registered trademarks under Article 129 of the Intellectual Property Law, (2) handling of acts unfair competition related to intellectual property under Article 130 of the Intellectual Property Law, (3) dealing with copyright infringement under Article 28 of the Intellectual Property Law
As a general rule, in order for acts of using the two signboards in question to constitute act of infringement of the exclusive right to trademark and copyright, the following four grounds must be satisfied: (a) the subject matter under consideration falls into the subject matter being protected as a trademark or copyright, (b) having an infringing element in the subject matter under consideration, (c) the conductor of the alleged act is not an intellectual property right holder and not is a person authorized by law or a competent authority, and (d) the act considered takes place in Vietnam.
Regarding the ability to handle infringements of the exclusive rights of trademarks registered under Article 129 of the Intellectual Property Law, the above conditions (a) and (b) are most important. Accordingly, there are grounds to show that both of these conditions or at least one of them does not meet (ie. the ability to confuse customers does not exist).
Therefore, there is no ground to tackle the subject of carrying out acts of advertising two suspicious signboards because: Green Pawn (Cam Do Xanh), World of Pawn (The Gioi Cam Do) are different from Dien May Xanh and Thegioididong.com respectively about structure and pronunciation, even though they all share or use "Green" (Xanh), "World" (The Gioi), outer edge in yellow and blue background.
Please keep in mind that pawn service is essentially a lending service on the pawn basis that is the property of customer held by pawnbroker to ensure the obligation to repay the pawnbroker. Accordingly, it is completely different from the business of household electrical products and wholesale and retail services of household electrical appliances.
The assessment and handling unfair competition acts under Article 130 of the Intellectual Property Law are almost similar to the trademark. It means that there must still be evidence of potential confusion or likelihood of confusion, namely two conditions required: (1) the right holder having the prior use right to a particular commercial indication that has been widely and stably used in legitimate business activities in Vietnam, and that consumers have known the prestige of the right holder and its goods/ services bearing that commercial indication. And (2) the allegedly infringing party must have been using commercial indication in a way to likely cause confusion with the right holder or its goods/services. In other word, the commercial indications in question must be pertain to the goods/services identical or confusingly similar to each other. According to that rule, we find that these two conditions, especially condition 2, are not met due to different business sectors.
In terms of the ability to handle copyright infringement, we find that the basis for determining copyright infringement is the scope of copyright protection defined in the form of the original work. Determined by characters, images, ways of expression of characters, figures and details of original works in case of determining infringing elements for derivative works. Whereas infringing elements are considered satisfied when and only if they fall into one of the following forms: a) copies of illegally created works; b) derivative works created illegally; c) fake works of names, signatures of authors, misappropriation or piracy.
Thus, seeing how to show the signboards of the right holder can view that except for the humanoid logo placed on a background with a dark yellow may be a copyrightable applied work according to the copyright legislation. The signboards, nevertheless, in fact did not copy this work. Since there are no other works present on the advertisement signboard of the right holder, there is no basis for handling under copyright law.
Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057
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 application for registration and enforcement relating to patent, trademark, design, copyright and domain name.
[1] Mobile World Investment Joint Stock Company (MWG) is Vietnam's No. 1 retailer in terms of revenue and profit, with a network of more than 2000 stores nationwide. MWG currently operates thegioididong.com retail chains, Dien May Xanh and Bach Hoa Xanh. See more: https://mwg.vn/ or https://www.thegioididong.com/