BRAND NAMES LOST ! WHY?

Shocked events! 

July 2000, the TRUNG NGUYEN coffee Brand – which had been recognized as the most outstanding one among Vietnamese coffee brands in 2000s – was filed for registration with the United State of America Patent and Trademark Office (“USPTO”) in the name of an US company as Rice Field. 

In the year of 2002, another Vietnamese tobacco leading brand being VINATABA was registered by an Indonesian company as P.T. Putra Stabat Industri in as many 12 countries as possible, including China, Japan, Korea and 9 Asean-countries.

April 2002, an US corporation - Nguyen Lai Corp., lodged with USPTOP an application for registration of PetroVietnam & flame device duly owned by Petro Vietnam Corporation which is very famous for petrol industry.

Brand is a highly valuable asset

Interbrand – an organization specializing in the world’s best brands appraisal (see also at http://www.interbrand.com/best_brands_2007.asp) ranked the world’s best valuable 6 brands of the year of 2007 as follows:

In early 1990s, there had been some Vietnamese well-known brands appraised by foreign companies to be worth several million. For examples:

DA LAN Toothpaste: 3 million USD

P/S Toothpaste: 5 million USD 

What is a brand? 

Brand is commonly used in the context of communication and business with its wide meaning. Subject to different contexts, it can either represent as one of the commercial indications, or show the meaning of the whole commercial indications namely: Trademark, Tradename, Geographical Indication, Indication of Origin. For examples: 

a.     As a national brand: Made in Vietnam 

b.     As a particular industry: Vietnam Agricultural Product Brands 

c.     As a brand indicating the reputation of a particular product originating from a geographical location (Geographical Indication/Appellation of Origin): Phu Quoc sauces, Luc Ngan Thieu litchi, Tan Cuong tea 

d.     As a brand of an enterprise: Trung Nguyen coffee, Vinamilk milk, PetroVietnam petroleum and gas, Vinataba cigarette, Halong Canfoco canned seafoods products. 

e.     As a brand (Trademark) indicating series of product or service: Wave α motocycle, CLEAR shampoo, Techcombank HomeBanking banking service, Prudential Life life-insurance services.   

Within the economy and management connotation, the term of brand is frequently used whereas in the legal context, one of the subject-matter: Trademark, Geographical Indication, Tradename is separately mentioned to correspond with its legal nature as provided by the laws on intellectual property.  

Why is a brand appropriated?

In almost countries there are laws on trademark exclusive protection provided that its owner has to proceed with an application for registration with that country’s competent authority.

Trademark exclusive use rights conferred on its owner, basically speaking, shall be depended on the 2 basic principles:

·         FIRST-TO-FILE rule: Where two or more applications for registration are filed by different parties for registration of marks identical with or confusingly similar to each other, or for identical or similar goods or services, then a protection title may only be granted to the valid application with the earliest priority or filing date amongst applications which satisfy all conditions for the grant of a protection title. This rule is the same as the one for granting Domain Names.  

·         EXCLUSIVITY LIMITED BY TERRITORY: such rule shall be understood that a trademark in which country is protected then it is protected in such country.  

Some subjects have been taking advantages the above two principles with bad faith whereby they “steal” Vietnamese well-known or reputable trademark then they go and register it with other countries’ trademark offices. Afterward they either offer to resell it to its genuine owner with very high price, or force its genuine owner to sign distribution contracts for their best benefits, or prevent the genuine owner from exporting its commodity bearing the trademark into relevant foreign countries. The above principles, therefore, are the very the causes which explain why Vietnamese big brands are illegally held abroad.  

How to possess a trademark? 

Unlike usual properties such as a house, a motorcyle, a pen, or other things, etc., that are easily possessed by us, a brand (trademark) affixing on a kind of goods or services shall not be possessed in a common manner.  

Where a product/service bearing a brand is a best seller, there may risk counterfeiting such genuine trademark by other illicit competitors for wrongful benefits. Initially, the bad effects are that you surely lose a particular amount of turnover – because consumer confuses the genuine goods with the fake when he purchases them. The worse effects, however, are that your trademark may fail to keep its reputation and your business activities may go bankrupt. 

By reason of such special possession, almost countries provide for laws on registering and enforcing trademarks for the 2 following purposes: 

·         To confer registrant a protection title to declare that he is recognized as the genuine owner of the trademark; 

·         To ensure trademark owner to have the right to exclusively use the trademark as well as to prevent himself and public consumer by legal enforcement tools and remedies from their likelihood of confusion at the time of purchase of goods/services. 

In conclusion, it is the best way for us to stop risks of losing our brands is that we must register it as soon as possible. Also noted that apart from its registration domestically, it needs to be registered in other foreign strategical markets where our commodities have being sold or will be selling in the near future.  

BROSS & Partners and its Trademark-related Defence Experience  

BROSS & PARTNERS is a law firm specializing in the provision of the intellectual property related services, specially including trademark matters, permitted to practise under Decision No. 570/QD-SHTT issued by the General Director of the National Office of Intellectual Property of Vietnam. 

We have had a lot of experience in advising and representing tens of Vietnamese large-scale client, typically like Halong Canfoco, Minh Phu Seafoods, Dau Tieng Rubber, PTSC-PetroVietnam, v.v…in respect of registration and defence of their brands in such large foreign markets United States of America, Japan, Korea, European Community as well as other Asean-countries.       

The above is generally advised regarding trademark matters. To be assisted or advised in detail for a particular issue, please contact us at the address as follows: 

By Le Quang Vinh – Registered IP Agent

BROSS & Partners