Buffalo Head vs. Buffalo Head: Binh Dien fertilizer won in an opposition proceeding in Thailand based on the well-known trademark claimed by Carabao Dang Energy Drink
Email to: vinh@bross.vn
In collaboration with a Thai local law firm, Bross & Partners helped Binh Dien Fertilizer Joint Stock Company ("Binh Dien") win an important victory at the Thai Intellectual Property Agency (“DIP”) after Carabao Tawandang Co. Ltd ("Carabao")[1] filed oppositions against three published trademarks "Buffalo Head & device" under the name of Binh Dien, which Carabao claimed its former Carabao trademark as a well-known trademark in Thailand.
1. Different from the procedure for trademark examination in Vietnam, according to the 1991 Thai Trademark Law as revised in 2016, a trademark application filed in Thailand will be examined as to both formality and substance by the DIP within about 12 months from the filing date, and if accepted by the DIP, it will be published in the Official Gazette so as to be likely opposed by 3rd parties within 90 days from the date of publication. Nearly similar to Vietnam's trademark laws, a trademark applied for is granted only if it meets both of the two legal criteria: (a) it must be inherent distinctiveness, meaning that it does not describe the function, utility, ingredients, properties or other attributes of goods or services; and (b) it is not confusingly similar to another person’s earlier trademark.
2. Among 12 trademarks for registration of Buffalo Head in different variants in Thailand, after being accepted and published by the DIP, 3 published trademarks by Binh Dien (in the left column below) were protested by Carabao’s 50-page oppostions on the ground that Carabao & Buffalo Head is a well-known trademark in Thailand in violation with Section 8(10) of the Thai Trademak Law stating that a trademark, whether registered or not, which is identical with a well-known mark as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods shall not be registrable[2]
Published Marks by Binh Dien
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Well-known trademarks by Carabao
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App. No: 995001 filed on 17/08/2015
Publication date: 21/07/2016
Class 01: fertilizer
App. No: 995009 filed on 17/08/2015
Publication date: 22/07/2016
Class 01: fertilizer
App. No: 995010 filed on 17/08/2015
Publication date: 30/06/2016
Class 35: Purchase and sale of fertilizer
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All of these trademarks used for non-alcoholic drink including energy drink in class 32
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3. Legal right to a well-known trademark can be roughly called a "super power." While the scope of protection of a normal trademark only limits to what extent the competitor’s junior trademark and goods/services are concurrently identical with or similar to those of the owner of senior trademark, the attribute "super power" pertaining to a famous trademark may expand to include the competitors' unsimilar goods. In other words, in this case (it seems that Carabao has been recognized as a well-known trademark in Thailand since 2008), the DIP may refuse to protect 3 published trademark Buffalo Head by Binh Dien because they fall into the area of super exclusive protection of well-known trademark as provided in Section 8(10) above.
4. Encouraged by Bross & Partners and Thai attorneys, Binh Dien agreed to defend against the oppositions, requesting the DIP to reject Carabao protests with main arguments as follows:
(a) Binh Dien is a corporation with a long history in Vietnam (established in 1973) that has been producing, trading and using the trademark "Buffalo Head" since 2003 in Vietnam. The trademarks Binh Dien in combination with Dau Trau device (Buffalo Head) are protected in Vietnam and some other countries such as Laos, Cambodia, New Zealand, China. Meanwhile Carabao Tawandang Co., Ltd just started its business in 2003 (see http://www.carabao.co.th/en/about/history.php). In addition, Binh Dien also has many other evidences of its early history and operation in Vietnam, plus many successful export and trademark registration activities in many other countries in the region.
(b) The brand “Dau Trau” (Buffalo Head) was used very early (in 2002) in Vietnam and many other countries such as Laos, Cambodia, New Zealand and the time of use was much sooner before the poin of time the brand Carabao was considered as famous trademark in Thailand (in 2008).
(c) Binh Dien is in the top 500 largest enterprises in Vietnam (VNR500) and the prestigious brand name “Dau Trau” (Buffalo Head) has won many great awards such as Top 20 leading brands in Vietnam according to Brand Finance's 2016 ranking, Bong Lua Vang Award for 10 consecutive years, the leading brand of High Quality Vietnamese Products, Vietnam Golden Star Award - TOP 100 typical brands of
5. After reviewing the evidences and arguments by Carabao and Binh Dien, the DIP concluded that 3 published trademarks under app. nos 995001, 995009 and 995010 are not so similar that it could confuse the public about the owner or origin of goods or services. As a result, the objections by Carabao were all rejected and subsequently Binh Dien was granted regsistration nos. 191102673, 191102674 and 191102675 on February 20, 2019 (see the picture of one of 3 registered trademarks right below).
Should you have any query, please contact 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 enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.
[2] Section 8 of Thai Trademark Law. Trademarks having or consisting of any of the following characteristics shall not be registrable:
(10) a mark registered or not, which is identical with a well-known mark as prescribed by the Ministerial Notifications, or so similar thereto that the public might be confused as to the owner or origin of the goods
Source: https://wipolex.wipo.int/en/text/444230