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Trademark squatting or the bad faith registration of trademarks to misappropriate the intellectual property of foreign companies for illicit profit has become increasingly common in Vietnam. The more prestigious and reputable the brand, the greater the risk of becoming a target of this exploitative practice.
KENFOX IP & Law Office would like to provide 05 notable bad faith trademark cases in Vietnam so that IPR holders who are currently conducting or planning to conduct business in Vietnam can understand the potential risks and challenges, having clearer picture of the legal processes in Vietnam, based on which better strategize their trademark filing, understand the legal remedies available, recognize typical timelines, and identify the evidence required to challenge bad faith registrations in Vietnam.
Case 1: Château Latour v. CHATEAU LATOUR
[Executive summary]: Intrixapple Co., Ltd., a Vietnamese company, applied to register the mark “CHATEAU LATOUR” for the goods in Class 33 (wine). SOCIÉTÉ CIVILE DU VIGNOBLE DE CHÂTEAU-LATOUR (France) is an entity associated with the renowned Château Latour in Bordeaux, France. Upon detecting a third party in Vietnam applied to register the mark “CHATEAU LATOUR”, it filed a Notice of Opposition, requesting the IP Office of Vietnam (IP VIETNAM) to refuse registration of the applied-for mark based on wide-use ground.
Case 2: emz-usa v. (emz-usa, device)
[Executive summary]: Mr. Tran Vick Hung Vuong, located at 2651 N. Harwood St., Suite 370, Dallas, Texas 75201, USA, successfully registered the trademark “emz-usa, device” under Registration No. 172149 with IP VIETNAM. However, BFR Health International, Inc., a U.S.-based corporation, contends that this trademark is rightfully theirs and alleges that Mr. Tran registered the mark with malicious intent. Consequently, BFR Health International has initiated an invalidation proceeding against Trademark Registration No. 172149 at IP VIETNAM, seeking to annul the registration based on claims of bad faith.
In 2017, following a careful examination of the evidence and arguments put forth in the invalidation proceedings, IP VIETNAM rendered a Decision to invalidate Trademark Registration No. 172149. This decision was made based on substantial proof provided by BFR Health International, Inc, including:
(i) A Memorandum of Understanding (MOU) jointly executed by BFR Health International, Inc., Mr. Tran Vick Hung Vuong, and two other parties, demonstrating a prior agreement involving the disputed trademark. (ii) A series of email exchanges between BFR Health International, Inc. and Mr. Tran Vick Hung Vuong, which detailed discussions regarding the "emz-usa, device" trademark. (iii) Clear demonstration that BFR Health International, Inc. is the rightful owner of the "emz-usa, device" mark, and allegations that Mr. Tran Vick Hung Vuong filed for the trademark registration in bad faith.
Case 3: MAINETTI v. MAINETTI
[Executive summary]: Cong ty TNHH Suntex, a Vietnamese enterprise, successfully secured the trademark "MAINETTI" under Registration No. 123570 with IP VIETNAM. Upon discovering this registration, Mainetti (UK) Limited, Scotland-based company that specializes in the manufacturing and distribution of high-quality clothing accessories, including hangers, bags, garment covers, and more, initiated a trademark invalidation proceeding against Trademark Registration No. 123570. The challenge presented by Mainetti (UK) Limited rests on substantial grounds, asserting that the trademark registered by Suntex bears a confusing similarity to its own trademark and trade name "MAINETTI", which has been extensively used prior to the registration date of Suntex’s trademark, and thus, Suntex acted in bad faith in trademark registration.
The invalidation request was filed by Mainetti (UK) Limited in 2011. The other party defended their mark by claiming they were unaware of the "MAINETTI" trademark owned by the real owner. However, the real owner proved that this claim was false. The case was resolved in 2015 with a decision that favored the genuine owner, leading to the cancellation of the "MAINETTI" trademark under Registration No. 123570.
IP VIETNAM’S invalidation Decision was made based on substantial proof provided by Mainetti (UK) Limited, including:
(i) Mainetti (UK) Limited has created the mark “Mainetti” and used it as a trade name since its inception. (ii) The mark “M MAINENETI” has been extensively used in commerce in various countries worldwide before Suntex’s filing date. (iii) “MAINETTI serves as a distinctive trade name for its subsidiary, which has been operational in Vietnam since 2003.
Case 4: v. (CAF v. CAF PROFESSIONAL SOUND)
[Executive summary]: Tân Việt Company, a Vietnamese enterprise, successfully secured the trademark "CAF PROFESSIONAL SOUND" under Registration No. 390821 with IP VIETNAM. Upon discovering this registration, Kafu Company, a China-based company, filed an invalidation with IP VIETNAM based on bad faith ground.
(i) Kafu Company and Tan Viet Company had a commercial relationship since 2016. Tan Viet Company was an exclusive agent of Kafu Company. Documentation attesting to this partnership includes a variety of pivotal records:
√ Contract details: The "CAF" sign is prominently displayed on the "box speaker" under Contract No. 01/NK/2016, executed on August 8, 2016.
√ Invoice evidence: The logo of Kafu Company is featured on Invoice number CAF1002, issued on July 29, 2016.
√ Distributorship: An Exclusive Distributor Certificate validates the exclusive rights granted to the partnership, spanning from 2016 to 2019.
(ii) No written authorization of Kafu Company for Tan Viet Company to apply for registration of the trademark "CAF PROFESSIONAL SOUND, fig" for products and services in class 09 and 35 in Vietnam. Kafu Company has never agreed to let Tan Viet Company register the CAF trademark in Viet Nam.
Case 5: v. .
[Executive summary]: Cao Thanh Hai, a Vietnamese natural person, applied to register the mark “EVELINE COSMETICS, Device” for the goods in Class 03 (cosmetics). Przedsiebiorstwo Produkcyjno-Handlowe "EVELINE COSMETICS", a Polish company which engages in manufacturing a wide range of makeup, facial and body care products, founded in 1983, the company's products are now available in more than 70 countries around the world. Upon identifying the potential infringement represented by the trademark application, Eveline Cosmetics engaged KENFOX IP & Law Office to execute a Notice of Opposition against the registration, safeguarding its esteemed brand and its international market presence.
Final thoughts
Even if a third party has filed for registration of the trademark in advance, the door to regaining trademark rights is not closed. However, there is no guaranteed path to victory. Trademark squatters in Vietnam are becoming increasingly professional and are employing very sophisticated tactics. As a result, replicating the victories achieved in past cases will not be straightforward, and the battle against trademark squatting is expected to become increasingly fierce.
Contact KENFOX IP & Law Office in case you require our professional advice on bad faith trademark issues in Vietnam.
By Nguyen Vu QUAN
Partner & IP Attorney
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