Tuesday, September 22 2020

VietNamNews

Protection of trade names, trademarks – important thing to do as EVFTA comes into force

Update: August, 05/2020 - 14:54

 

WINCO Law Firm has helped successfully protect the trademark "FOREST" of the Forest Group (Nederland) B.V. — Photo courtesy of WINCO

After nearly a decade with a great deal of efforts by both Việt Nam and the European Union, the EVFTA was officially passed and has been coming into effect since August 1, 2020. The enforcement of the EVFTA is expected to open up many opportunities for trading and investment, and increase the circulation of goods and services amongst economies which are parties to the agreement.

However, besides the advantages, the number of intellectual property rights (IPR) infringement and dispute cases shall surge, therefore investors and companies of both the EU and Việt Nam should pay attention to the protection of IPRs, to ensure business operation runs smoothly and to avoid unnecessary and prolonged disputes.

The dispute relating to trademark “FOREST” between Trang Ngọc Furniture Limited Company and Forest Group (Nederland) B.V. is a good example, details of the case as follows:

Forest Group (Nederland) B.V., established in 1989 in the Netherlands, is a manufacturer of automatic curtains and accessories such as curtain rails, curtain rods, curtain runners and curtain hooks. Over 30 years of operation and development, products under trademark “FOREST” of Forest Group (Nederland) B.V. have appeared in more than 100 countries and territories around the world.

In Việt Nam, Forest Group (Nederland) B.V. has entered the market since 2011 through distribution channels including exclusive distributors such as Hà My Trading Joint Stock Company, address: 52 Ngõ Huyện, Hàng Trống Ward, Hoàn Kiếm District, Hà Nội; IBC Vietnam Import Export Joint Stock Company, address: 15 Mạc Thị Bưởi Street, Vĩnh Tuy Ward, Hai BàTrưng District, Hà Nội and Man Việt Company Limited, address: Phạm Văn Thuận Street, Tam Hiệp Ward, Biên Hòa City, Đồng Nai Province.

Forest Group (Nederland) B.V. also filed international application No. 983329 for registration of trademark “FOREST DRAPERY HARDWARE” since 2008 designated to certain countries including Australia, Singapore and the United States. The trade name of Forest Group (Nederland) B.V. has been used in Việt Nam through transactions with exclusive distributors as mentioned above. 

On October 10, 2016, Trần Thi Thanh, address at Hòa Bình Commune, Thường Tín District, Hà Nội, filed application to register trademark “FOREST” for products: electric devices for controlling curtains, indoor window curtains, curtain hooks, curtain runners etc., and was issued trademark certification No. 309441 dated November 28, 2018. Then Trần Thị Thanh transferred the trademark to Trang Ngọc Furniture Company Limited.

It could be concluded that trademark “FOREST” under trademark certification No. 309441 is not only identical with trademark “FOREST” of Forest Group (Nederland) B.V. which has been widely used and recognised but also identical with the main, distinctive part - “FOREST” - in the trade name of Forest Group (Nederland) B.V. which are legally used for the same kind of products. 

Regarding the protection of trade names, Việt Nam is a member of the Paris Convention for the Protection of Industrial Property, according to Article 8 of the Paris Convention: “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.” Therefore, in pursuant with this Article, trade name Forest Group of the Forest Group (Nederland) B.V. is automatically protected in Việt Nam.

Regarding the protection of trademarks, Article 96.1(b) of Intellectual Property Law provides: “The protection certification shall be invalidated in case the object of industrial property fails to satisfy conditions for protection at the time of issuance of the protection certification”. Article 74.2(k) of Intellectual Property Law provides: “A mark shall be deemed indistinctive when that mark is identical with or similar to another person’s trade name currently in use if the use of such mark may cause confusion to consumers as to the origin of goods or services”. Therefore, trademark “FOREST” fails to satisfy conditions for protection at the time of issuance of the protection certification.

From a business perspective and objective evaluation, it is clearly shown that the copying and registration of trademark “FOREST” for the same kinds of products that Forest Group (Nederland) B.V. is manufacturing and trading is unfair behavior, taking advantages of the reputation of Forest Group (Nederland) B.V. and causing confusion to customers on the genuine products. Perhaps, this is the issue that international firms while expanding markets should pay attention to in their IPRs protection strategies.

"In this case, Forest Group (Nederland) B.V. has contacted WINCO LAW FIRM (https://wincolaw.com.vn/), a highly distinguished Law Firm in Intellectual Property which has resolved hundreds of complaints to protect the legitimate rights and interests of IP owners against infringement and is rated as a leading law firm in the field of Intellectual Property."

WINCO has received the case from Forest Group (Nederland) B.V. and has filed an application to invalidate the trademark registration certificate No. 309441. At the same time, WINCO has sent a request to law enforcement agencies in Việt Nam to apply measures in compliance with Vietnamese laws and the International Conventions in which Việt Nam is a signatory in order to protect the right of true owners of industrial property which is Forest Group (Nederland) B.V. In addition, WINCO has been completing the dossier to handle the illegal abuse of intellectual property rights which is preventing the business operation of the genuine IPRs owner.

To develop the economy of the country, our Party and State has many policies to attract and promote foreign investment to Việt Nam. In order to obtain this goal, the protection for ownership of assets, intellectual property rights and other legitimate interests of foreign investors need to be ensured. Law enforcement agencies of Việt Nam must strictly handle IPRs infringement cases to create a fair business environment, in compliance with the laws, ensure legitimate rights and interests of foreign investors so that they will have more confidence in policies and laws of Việt Nam.

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