Trademark vs. Design viewed from the dispute between the right holder of a registered trademark Cua Hoi (Cửa Hội) accused the design patentee of 2D label containing Cua Hoi (Cửa Hội)

Trademark vs. Design viewed from the dispute between the right holder of a registered trademark Cua Hoi (Cửa Hội) accused the design patentee of 2D label containing Cua Hoi (Cửa Hội)

Email: vinh@bross.vn

Background of the case reported by the newspapers

The newspaper Báo Pháp luật Việt Nam in its article "the case two companies selling Cua Hoi fish sauce, the NOIP knows wrong but … cannot fix" reported that that both companies (Cua Hoi Processing and Service Joint Stock Company and Nghe An Seafood Joint Stock Company sell  fish sauce product under the same brand name Cua Hoi, causing confusion among customers and leading to a trademark battle between them[1]. Paradoxically, one company has its registered trademark under reg. no. 68386 while the other one has a patented design under patent no. 12844, both granted by the National Office of Intellectual Property of Vietnam (NOIP)

Truyền hình Nghệ An (Nghe An television) headlined "who is the true owner of the brand" Cua Hoi fish sauce" and said that the NOIP, the authority should have been an arbitrator resolving the disputes between the two parties but seemed to be indecisive[2]

According to the Cong An Nghe An online newspaper, Nghe An Seafood Joint Stock Company worked many times, requesting Cua Hoi Seafood Processing and Service Joint Stock Company to stop producing and trading products under the brand name “Cua Hoi” because of trademark infringement, but this company presented a patent for design issued by the NOIP in favor of its product label. A legal representative of Cua Hoi Seafood Processing and Service Joint Stock Company counter-stated that "his company was wholly acquired through the auction conducted by the Auction Center against the liquidated assets of Cua Hoi Fishing Enterprise in 2006 including the residual fish sauce product of Cua Hoi Fishing Enterprise, so there's nothing wrong when using the fish sauce brand name Cua Hoi"[3]

After more than 2 years of debate, on June 11, 2018, the Ministry of Science and Technology issued Official Letter No. 1760 / BKHCN-Ttra reporting to the Government Office on the results of settlement of the allegation made by Nghe An Seafood Joint Stock Company. On October 3, 2018, the NOIP released Decision No. 69584 declaring the amendment of the patent no. 12844, ie. the words Cửa Hội (Cua Hoi) is forced to change as "Tân Hội" (Tan Hoi) shown on the patented "product label"[4].

Our comments

1. Design (industrial design) and trademark (brand name) are the two forms of protection under the Vietnamese IP Law. The appearance of a product embodied by shape, line, color or a combination of these elements, if all three conditions are met: (a) worldwide novelty and (b) non-obviousness and (c) industrial applicability, may be patentable valid up to 15 years while any visible signs or marks (letters, figures, logos, slogans, words) used to distinguish goods, services of the same kind of different individuals or entities may be protected in the form of a trademark registration certificate, which is valid for 10 years and may be extended unlimited number of times. In this case, the product label containing the word "Cửa Hội" were granted patent for design no. 12844 and in the meantime the mark "Cửa Hội" was also registered under registrationno. 68386.

2. The above dispute reflects an objectively occurred phenomenon, which is called, in legal sense, as a legal conflict[5] between design and trademark or vice versa. As a result, in this case, the trademark Cửa Hội was initially unenforceable due to the occurrence of a patented design held by other party while both of them are legally protected. Nevertheless, we hold the view that no conflict actually existed in the case because: (a) the replacement of the words Cửa Hội with Tân Hội has never caused the patent no. 12844 invalid or cancelled (as in the Decision No. 69584 above), (b) the subject matter and the scope of protection pertaining to the patented product label design did not by default include the word "Cửa Hội" or in other words the term "Cửa Hội" even including other written information present on the product label is not a basic shaping feature, and (c) the enforcing or protecting the registered trademark Cửa Hội is to prevent others from using it in commerce for fish sauce products but not to stop the patentee from exploiting his patented product label design

3. Our recommendation for the right holder is that upon having acquired a registered trademark or patented design, you should regularly monitor or watch others’ trademark or design applied for, which are monthly published in the Industrial Property Official Gazette (Volume A) by the NOIP to timely detect potential threat or conflict before you early prevent those conflicts to void a similar case "Cửa Hội".[6]

Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross.

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.