Bross & Partners assisted Trung Nguyen Investment Joint Stock Company to successfully cancel the validity of the published trademark G7 coffee that was filed in bad faith in Iceland

Email to: vinh@bross.vn

As reported by us in our previous article, Vietnamese businesses can choose one of two ways to protect their trademarks at the Iceland Intellectual Property Office (ISIPO): (a) to file a national application in the traditional way by appointing a local law firm in Iceland, or (b) to file an international trademark application designating Iceland (Iceland that has its country code as IS requires an invidual fee of 270CHF)[3].

In August 2018, as a legal representative of Trung Nguyen Investment Joint Stock Company – owner of famed brand name G7 instant coffee, Bross & Partners discovered that a trademark "G7 coffee instant coffee & device" was accepted and published on the Icelandic Official Gazetter by ISIPO in the name of an individual without the consent of of Trung Nguyen Investment Corporation

In order to protect the legal rights and interests of client, upon collaboration with a local law firm practicing in Iceland, Bross & Partners filed an objection demanding that the published mark "G7 coffee instant coffee & device" be declared null and void by the ISIPO due to bad faith filing in Iceland with some main arguments as follows:

(1)        G7 coffee branded products was officially launched at the Coffee Festival Event held at Independence Palace, Ho Chi Minh City, Vietnam on November 23, 2003 where reportedly attracted thousands of participants. The highlight of the festival was a blind taste test that requires about 11,000 participants to choose their favorite instant coffee out of two products (included the brand name G7 instant coffee) and the result was that the brand name G7 won with 89 percent of votes[4].

(2)        Trung Nguyen Investment Joint Stock Company is the sole owner of the trademark G7 coffee instant coffee & device that was initially granted under registration number 61841 in Vietnam and that trademark had also been successfully registered in 64 countries in all regions around the world in the form of both national registration and international registration (eg. the Madrid-based international registration nos. 850804, 1086061 and 1028546), specifically: (a) Asia region: Vietnam, Japan, South Korea, Philippines, Singapore, Armenia, China, Iran, Democratic People's Republic of Korea, Tajikistan, Uzbekistan; (b) Europe: Turkey, Ukraine, European Union, Albania, Azerbaijan, Bosnia and Herzegovina, Bulgaria, Belarus, Switzerland, Monaco, Republic of Moldova, Romania, Serbia, Russian Federation, San Marino, Ukraine, Croatia, Liechtenstein; (c) the United States, Canada, Cuba, Mexico, Chile; (d) Ocean continent: Australalia, New Zealand; (e) African continent: Algeria, Egypt, Liberia, Morocco.

(3)        On December 25, 2012, in partnership with a Chinese law firm, Bross & Partners helped Trung Nguyen to successfully cancel validity of the trademark "G7 Coffee Highland cà phê & device" granted by Chinese registration no. 6840467 in the name of Guangxi Dongxing Yanhuang Food Co., Ltd that was registered in bad faith and violated the good faith against other’s trademark used earlier and enjoyed a substantial influence[5]. The cancellation action victoriously ended with a decision issued by the Trademark Review and Adjudication Board abbreviated as TRAB [TRAB No. (2012) 50717]

(4)        With its continuous, widespread and long use for more than 15 years, the brand name G7 coffee has gained a high repute recognized by not only Vietnamese consumers but also foreign public, ie. G7 coffee were selected into the list of 50 most typical Vietnamese brands introduced by the Charming Vietnam Food Fair operated by NTUC Fair Price[6] - the oldest and largest supermarket chain in Singapore up to now. On October 9, 2018, G7 coffee brand was awarded the "Achievement of the Year" by JD.com, one of the two largest Chinese e-commerce websites ranked no. 139 by the Fortune Global 500[7].

Based on the evidence, goodwill and reasonable arguments as submitted, on October 31, 2019 the ISIPO issued Decision No. 13/2019 stating to accept the opposition, ordering temporarily to suspend validity of the published trademark G7 coffee granted under registration no. V0104716 on the ground that the applicant filed an application in bad faith.

According to the Icelandic law, Decision No. 13/2019 will officially take effect if there are no complaints to the ISIPO’s Board of Appeals filed by the applicant within 2 months or by December 31, 2019. Where the decision becomes valid, the published trademark "G7 coffee instant coffee & device" shall be abandoned meaning that our client’s later-filed genuine trademark G7 coffee instant coffee & device would be registered accordingly.

Picture 1: Application no. V0111018 filed by Trung Nguyen Investment Joint Stock Company on November 6, 2018 in Iceland

Picture 2: Photos of first and last pages of Decision 13/2019 issued by the ISIPO declaring validity suspension of the trademark G7 coffee (in Icelandic)

Bross & Partners is rich in experience in opposition, appeal, cancellation action against Vietnamese brands that were stolen or appropriated abroad, eg. in Iceland, China, Cambodia, Thailand, the US, ect., Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057, 84-4-3555 3466.

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 enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.