Friday, July 29, 2016

Wide-ranging trademark dispute in Vietnam escalates to court

A civil lawsuit by Ngan Anh Enterprise against the National Office of Intellectual Property (NOIP) in the Hau Giang Province Court is an interesting challenge to the government's approach to deciding trademark similarity.

Ich Nan Pharma Co. Ltd makes and sells a food supplement with anti-aging properties under the mark “Bảo Xuân & device” was registered under Reg. No. 0172843 covering medicines and nutritional foods used in healthcare in Class 5.
Ngan Anh Enterprise makes and sells a skin cream with whitening properties. Ngan Anh filed an application covering cosmetics in Class 3 which was refused for being confusingly similar to Ich Ngan's prior mark “Bảo Xuân & device”. The two products are shown - there is no obvious similarity.  

Over several years a series of enforcement actions were undertaken by Ich Nhan leading to the following decisions against Ngan Anh -

·       Following Ich Ngan's compliant on 8 Oct 2012, the Vietnam Intellectual Property Research Institute (VIPRI) made an assessment that the mark used by Ngan Anh infringed Ich Nhan’s mark.
·       On 9 November 2012, in a Working Minutes of the MMB of Hau Giang Province, Ngan Anh admitted infringement and undertook not to manufacture, trade in cosmetics bearing “Bảo Xuân” mark.
·       On 13 November 2012, in an Official Letter for an administrative penalty against Ngan Anh, the MMB of Hau Giang Province stated that Ngan Anh also promised to destroy all infringing products within 40 days.
·       In May 2013, the Hanoi MMB issued many sanction decisions against drugstores trading in the cosmetic products bearing the Bảo Xuân mark manufactured by Ngan Anh.
·       On 10 June 2016, the Inspectorate of Ministry of Science and Technology issued a sanction decision against Ngan Anh for manufacturing the infringing cosmetic products

After refusal of its trademark application in 2015, Ngan Anh filed a case against the National Office of Intellectual Property (NOIP - Defendant), in the Hau Giang Province Court. The case related to the NOIP refusing to grant their trademark registration for the mark Bảo Xuân. The NOIP's refusal was based on Article 74.2e and 74.2g of the IP Law that there was a conflict with another registered trademark for associated goods/services - Bảo Xuân in the name of Ich Nhan.  Ngan Anh argued in the lawsuit against the NOIP to reverse the decision on the basis that the goods are different - theirs are class 3 cosmetics while Ich Nhan registered for class 5 medicines. The Court of Hau Giang Province ruled in favor of Ngan Anh Enterprise in 2016.

The NOIP has now filed an appeal against the Court’s decision on the basis that the Nice Class system is not absolutely determinative of similarity.  The case pits virtually the entire Vietnam enforcement system against Ngan Anh.  The products have an identical mark, which is probably the source of Ich Nhan's concern, but the goods are arguably not the same.

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