Background of the Case

Bross & Partners assisted Vinamilk, a Vietnam largest dairy manufacturer, applicant seeking protection of its trademark Dielac Pedia (opposed mark), to win in the counter-opposition against the cancellation action submitted by the opponent (Hero AG) based on the latter’ famous trademark Pedialac (famous trademark) before the Department of Intellectual Property Rights under the Cambodian Ministry of Commerce (the DIP). The opposed mark and famous trademark are depicted below:

The opponent claimed that the opposed mark confusingly similar to its trademark that has been using for a long period of time as well as registered worldwide. Interestingly, we almost found no evidences or documents in support of the cancellation action transmitted by the DIP. However, it was likely that Hero AG relied upon Article 4(e)(g) of the Law concerning marks, trade names and acts of unfair competition which states that a mark cannot be validly registered:

(e)-if it is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well known in the Kingdom of Cambodia for identical or similar goods or services of another enterprise; or

(f)-if it is identical with, or confusingly similar to, or constitutes a translation of a mark or trade name which is well-known and registered in the Kingdom of Cambodia for goods or services which are not identical or similar to those in respect of which registration is applied for , provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark that the interests of the owner of the well-known mark are likely to be damaged by such use.

Vinamilk’s Counter-arguments

In counter-opposing the opponent’s arguments, the applicant contended:

1. “Dielac Pedia & device” is one of the reputable brands of Vinamilk with long history of use, wherein it is registered in Vietnam since 1992 and in tens of countries in the world including Korea and China

2. Pedia is a generic term and indistinctive characters in the dairy industry which shall be deemed non-trademarked sign, for example, according to the Oxford Dictionaries, Pedia is an abbreviation of the English word “Paediatric” (also known as Pediatric in US-English) meaning “relating to the branch of medicine dealing with children and their diseases”, which has become generic term commonly used by dairy or food companies.

3. The opponent’s mark(s) is filed later than that of Vinamilk, April 4, 2014 compared to March 26, 2014. Cambodia adopts the “first to file” rule in establishing trademark rights, thus it shall be by laws to strictly protect such legal principle in favor of Vinamilk.

4. There is no so-called legal grounds “registered in worldwide and using for long time ago”(បានចុះបញ្ជីនៅទូទាំងពិភពលោកនិងប្រើប្រាស់វាអស់រយៈពេលជាយូរមកហើយ)  pertaining to Pedialac under the laws of Cambodia. Thus, the opponent’s opposition is  meaningless and ungrounded.

5. No relevant evidence regarding the claim Pedialac is a well-known trademark presented by the opponent. As a member of WTO, Cambodia is of course obliged to protect famous trademark. However, widely recognized as a worldwide standard set - WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks – we are convinced that Cambodia shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not limited to, information concerning the following:

(a) the degree of knowledge or recognition of the mark in the relevant sector of the public;

(b) the duration, extent and geographical area of any use of the mark;

(c) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(d) the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;

(e) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;

(f) the value associated with the mark.

The DIP’s Conclusion

With its official letter of June 22, 2018, the DIP decided in favor of Vinamilk by refuting the opposition by Hero AG, according to which the approved mark Dielac Pedia & device is still valid in Cambodia.

Bross & Partners, a Vietnamese registered Patent, Design, Trademark and Copyright agent, constantly ranked by the Managing Intellectual Property, World Trademark Review, Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business. We are providing clients all over the world the reliable, affordable contentious and non-contentious IP services including IP enforcement, anti-counterfeiting, litigation and domain name recovery before courts and arbitrations. We are always representing the clients to file and prosecute applications for patent, design and trademark in Laos, Cambodia and Myanmar. For further discussion, please get in touch with us via vinh@bross.vn or contact@bross.vn or saigon@bross.vn