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Loss of Intellectual Property Assets Abroad and Learnt Lessons for Vietnamese Enterprises
(Ngày đăng: 2020-12-28)

Loss of Intellectual Property Assets Abroad

and Learnt Lessons for Vietnamese Enterprises

 

                                                            Email: vinh@bross.vn

 

Intellectual Property is Intangible and Highly-Valued Assets

 

According to the ranking of the 100 most valuable brands globally published in 2020 by the famous magazine Interbrand[1], the United States is the country with the most intellectual property assets. Specifically, in the top 5 most valuable brand names in the world, there are 4 American brands in the technology sector, wherein only Apple Inc. is worth over $322 billion, which is nearly equivalent to Vietnam's 2019 GDP of $329,537 billion[2]

 

Google

Samsung Việt Nam | Thiết Bị Di Động | Tivi | Điện Gia Dụng

322,999 billion USD

200,667 billion USD

166,001 billion  USD

165,444 billion  USD

62,289 billion  USD

 

Although neither Vietnamese brand name is listed in the 100 global brands list announced by the Interbrand, nor in the 500 largest enterprises rankings by the Fortune 500, Vietnam got 4 brands in the Forbes Global 2000 listings particularly including Vietcombank, BIDV, Vingroup and Vietinbank with their respective rankings as 937, 1448, 1534 and 1595[3]

 

Out of the 50 best Vietnamese brands in 2020 published by the Brand Finance, top 5 most valuable brands are Viettel, VNPT, Vinamilk, Vinhomes and Sabeco, and amongst them Viettel is the most valued brands worth nearly 6 billion US dollars.

 

Phê duyệt phương án cơ cấu lại VNPT

Dự án Vinhomes Hóc Môn, TpHCM của tập đoàn Vingroup | Căn hộ - Nhà phố |  Thuận Hùng Group

Tổng Công ty Cổ Phần Bia - Rượu - Nước Giải Khát Sài Gòn (Sabeco) tuyển  dụng 2020

5,801 billion USD

2,395 billion  USD

2,128 billion USD

1,726 billion USD

1,282 billion  USD

 

Basically speaking, we can categorize the properties (assets) into 3 types: (1) immovable assets such as estates, buidings, resources; (2) movable assets such as money, gold, cars, aircraft, ships; and (3) property rights are given to the persons over the creations of their minds, which are also best known as intellectual property rights.

 

These intellectual property rights exist in the form of various exclusive rights, namely exclusive right to exploit given to a holder of protected inventions, industrial designs, plant varieties; exclusive rights to use in commerce trademarks or geographical indications; exclusive rights to make reproductions, exclusive rights of distribution, exclusive right of performance, exclusive right of making available to the public with respect to copyright (works in the field of literary, scientific and artistic domain) or to related rights or neibouring rights (performances, recordings, phonograms, broadcastings)

 

Intellectual property rights - property rights - are much distinct from the immovable and movable properties, ie. during immovable and immovable properties are physical, tangible and possessable,  intellectual property rights are intangible, abstract and cannot be possessed in the same way as immovable and movable properties.

 

Loss of Intellectual Property Assets in Some Typical Cases

 

Case 1: Geographical indication Phu Quoc for fish sauce was registered as a trademark in many countries

Vietnam’s first GI protected in Vietnam and EU

Phu Quoc for fish sauce was registered as a trademark in many countries

Chỉ dẫn địa lý: Vì sao trong 43 sản phẩm chỉ có nước mắm Phú Quốc thực sự  thành công? - MVietQ

US reg. no. 2242745 granted on 4/5/1999

Filing date: 27/02/1998

Class 30: fish sauce, etc.,

Kim Seng Company

 

App. No. 356556 filed on 19/03/1998

Thailand reg. no. Kor 166789

J.P. International Co., Ltd

Class 30: fish sauce, coffee, tea, etc.,

Chinese reg. no. 9448516 registered on 28/09/2012

Filing date: 11/05/2011

Class 30: fish sauce, etc.,

Valid to 27/09/2022

Viet Huong Trading Company Limited

Australian reg. no. 940255 granted on 19/11/2003

Filing date: 15/01/2003

Class 30: fish sauce, etc.,

Valid to 15/01/2023

Viet Huong Trading Company Limited

 

Case 2: Brand Name Vinataba squatted in multiple territories

 

Trademark registered in Vietnam

Vinatata registered in bad faith by others

 

Biểu tượng thương hiệu Vinataba

Indonesian IDM000291536 granted on 26/01/2011

Filing date: 16/03/2009

Class 34: Cigarette

PT Sintong Sari Union

 

French reg. no. 03454380 valid to  04/10/2026

Filing date: 04/10/2006

Class 34: Cigarette

P.T. Putra Stabat Industrie

 

Case 3: Duy Loi folding hammock unlawfully registered as a Utility Model in Japan 2001

 

Duy Loi folding hammock

registered as industrial design in Vietnam

A Japanese Patent for Utility Solution

Fig. 1

Fig. 2

Fig. 3

Filing date: 23/03/2000

Patent for design no. 7173 granted on 31/07/2003

Patentee: Duy Loi Household Business

Bằng độc quyền GPHI số JP3081528U

Registrant: Johnson (an individual)

Trial/Appeal, Invalidity No.: 2003-40001

 

 

After appealing the request for cancellation, JPO accepted the evidence that the utility model registered under JP3081528U is deemed to have lost its novelty as it was publicly disclosed prior to its filing date in Japan, ie. JP3081528U was publicly disclosed on the IP Gazette No. 147 of Vietnam on June 26, 2000

If Duy Loi’s cancellation action against JP3081528U fails, Duy Loi would not only incur all litigation and lawyers costs but also be prevented from exporting into the Japanse market about 680 sets of hammock per month. As per some source, Duy Loi is reportedly asked to pay a royalty fee of USD 4 per imported product to the registrant[4]

 

Case 4: Geographical indication Buon Ma Thuot for coffee was registered as trademarks in China[5]

 

Registered GI Buon Ma Thuot

Trademarks registered in China

 

Thực trang bảo vệ và phát triển chỉ dẫn địa lý cà phê Buôn Ma Thuột

GI: Buon Ma Thuot

Product: Coffee bean

Cultivated in some districts under city Buon Ma Thuot

GI Buon Ma Thuot is the state’s asset and is protected without renewal

National registered no. 004 dated 14/10/2005 

 

Class 30: Coffee, etc.,

Chinese reg. no. 7611987 granted on 14/11/2010

Valid till 13/11/2020

Holder: Buon Ma Thuot Shenzeng Coffee Co., Ltd

 

Class 30: Coffee, etc., Chinese reg. no.  7970830 granted on 14/06/2011

Valid till 13/06/2021

Registrant: Buon Ma Thuot Shenzeng Coffee Co., Ltd

 

 

Case 5: G7 Instant Coffee registered in bad faith in Iceland in 2018

 

Registered Trademark in bad faith

Brand name with high reputation by

Trung Nguyen

 

Icelandic reg. no: V0104716 filed on 12/5/2017[6]

Publication date: 31/8/2018

Class 30: coffee, powder coffee, instant coffee

 

US reg. no: 5,511,206[7]

Grant date: 10/07/2018

Nhóm 30: coffee, powder coffee, instant coffee

Nhóm 43: Coffee house, cafeteria, restaurant

Stakeholder: Trung Nguyên Investment Joint Stock Company

 

Lessions Leanrt

 

As far as the cause of the above loss of IP assets is concerned, the above examples all show that intellectual property rights are territorial in nature, meaning that they are only protected in Vietnam but not automatically protected in Japan, China and Iceland. The next reason is that intellectual property rights to inventions, utility solutions, geographical indications and trademarks are established under the most national laws in the territories where merely protect the first application for registration. And another very fundamental reason is that intellectual property rights are easily lost, appropriated by other individual or entity, ie. these subjects took advantages of the two first reasons (territorial limitation to IP right, and the first-to-file principle available in most countries).

 

With regard to the consequence, loss of intellectual property overseas is a very serious problem as it can affect an entire economic sector or even a country, eg. in the case of loss of GIs Buon Ma Thuot for coffee, or Phu Quoc for fish sauce[8]; it can block opportunities for Vietnamese businesses to reach out to other countries such as the case of Duy Loi and Trung Nguyen's G7 Instant Coffee. Altogether, there are 3 consequences of the loss of intellectual property in a foreign country:

 

  1. Loss of intellectual property assets abroad means loss of markets, loss of opportunities to expand markets in order to increase revenue.
  2. Losing intellectual property also means that Vietnamese enterprises must face the risk of lawsuits, litigation, customs clearance suspension at the importing countries’ border, pay for damage.
  3. The benefits earnable from the recent free trade agreements that Vietnam has signed such as the CPTPP, EVFTA and RCEP become meaningless.

 

Two valuable lessions may be learnt:

 

  1. Actively go over and get early registered intellectual property rights in foreign markets to avoid the risk of being appropriated by competitors. The most important intellectual property rights to protect overseas are trademarks, designs, inventions, utility solutions. There are currently many multilateral agreements to support the IP protection abroad at low cost such as the Madrid Agreement and the Madrid Protocol (the Madrid system) on international registration of trademarks in over 120 territories, the Patent Cooperation Agreement (PCT), or the Hague system for the international registration of industrial designs.

 

  1. When discovering the loss of intellectual property rights abroad, it is necessary to quickly study and hire a professional lawyer to collect evidence, file an opposition, cancellation action against unlawfully registered IP rights based on the internationalized protection standards, ie. patent, utility solutions or design patentable must be worldwide novelty (eg. a Japanese Utility Model no. JP3081528U was declared invalid because of absence of novelty under the Japanese patent law, or, anti-unfair competition practice based on the Paris convention to deal with bad faith filing as Bross & Partners represented the client to successful validity cancellation against G7 Coffee in Iceland[9]).

 

Bross & Partners has extensive experience in opposition, counter-opposition, cancellation action procedures abroad. Should you have needs, please contact us at Email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.

 

Bross & Partners, an intellectual property renowned law firm founded in 2008, regularly ranked as top tier by Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). With many years of outstanding experience and distinctive expertise, Bross & Partners can help clients effectively protect or defend in complex intellectual property disputes in Vietnam and overseas.

 

 



[3] View more the Forbes Global 2000 – the world’s largest public companies: https://www.forbes.com/global2000/#48ddc38f335d

[6] The above information including this trademark application published by the ISIPO can be found at the Official Gazette of September 2018 following instructions: (a) go to the Iceland Intellectual Property Office homepage: https://gamli.els.is/en/trademark-1; (b) enter the menu and click on ELS Gazette, select and click on “ELS béðindi - september 2018” and find page 3;

[7] G7 Coffee is a famous Vietnamese coffee brand owned by Trung Nguyen Investment Joint Stock Company. G7 coffee products are exported to dozens of countries in all regions of the world such as the EU, USA, China, Korea, Japan, Canada, etc. Trademark G7 coffee is registered under registration no. 171847 dated September 15, 2011 and it has been also protected in multiple tens of countries around the world. See more: https://en.wikipedia.org/wiki/Trung_Nguy%C3%AAn

[8] In this case, Vietnam filed timely an opposition against the above published trademark Phu Quoc before the TRAB (China Trademark Adjudication Board) under the trademark law of China, but we did not understand why such opposition failed while the same case Buon Ma Thuot in 2011 was victory. See more “OPPOSITION AGAINST TRADEMARK PHU QUOC FAILED IN CHINA, FAMOUS GEOGRAPHICAL INDICATION PHU QUOC WAS FELL INTO THE HANDS OF A HONG KONG COMPANY”: http://bross.vn/newsletter/ip-news-update/Opposition-against-Trademark-Phu-Quoc-Failed-in-China-Famous-Geographical-Indication-Phu-Quoc-was-fell-into-the-hands-of-a-Hong-Kong-Company-1247

 

[9] For more information about this case successfully acted by Bross & Partners, you may see “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”: http://bross.vn/newsletter/ip-news-update/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

 

 

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