PART II: SITUATION OF VIETNAMESE TRADEMARK
PROTECTION
1. Regulations
Vietnam is a member of the following treaties and conventions in relation to
intellectual property rights:
- Convention Establishing the World of Intellectual Property Organization
(WIPO).
- Paris Convention for the Protection of Industrial Property.
- Patent Cooperation Treaty (PCT).
- Madrid Agreement Concerning the International Trademark Registration.
The Madrid Agreement introduced the international trademark registration
procedure. This procedure allows a trademark to be protected in one or more
countries which are signatories to the Agreement after filing of a single
application in one language with a single agency: the World Intellectual Property
Organization (WIPO).
The following 49 countries are now signatories to the Agreement: Albania,
Algeria, Armenia, Austria, Azerbaijan, Benelux, Bulgaria, Czech Republic,
Slovak Republic, China, Cuba, Egypt, France, Italy, Kenya, Lesotho, Croatia,
Slovenia, Ukraine, Kazakhstan, Latvia, Liberia, Liechtenstein, Morocco,
Mozambique, Portugal, Monaco, Germany, People’s Democratic Republic of
Korea, Romania, Sierra Leone, Spain, Sudan, Switzerland, Swaziland, Hungary,
Russian Federation, Belarus, Mongolian Republic, Vietnam, Macedonia,
Moldavia, Tajikistan, Uzbekistan, Bosnia-Herzegovina, Kirghizistan, Yugoslavia,
Poland and San Marino.
Trademark protection is granted for 10 years or 20 years subject to countries.
The register fee for the first country is about 700USD, and 100USD more for
the next one.
If you do business in Europe, you can register by the Community Trade Mark
system (CTM) to protect trademark in 16 European countries with the total
fee is 4000USD.
In US, trademark is registered in the United State Patents and Trademark
Organization (USPTO) with the fee of about 1400 to 1600USD. Recently,
USPTO has allowed business to register trademark online at the website
www.uspto.gov with the fee for one case is only 325USD.
To register trademark, the owner should provide a system for the registration of
trademarks, which shall include:
1. Examination of applications
2. Notice to be given to an applicant of the reasons for the refusal to register
a trademark
3. A reasonable opportunity for the applicant to respond to the notice
4. Publication of each trademark either before or promptly after it is
registered
5. A reasonable opportunity for interested person to person to cancel the
registration of a trademark
2. Current situation
The issue of trademark protection has been given more attention than ever since
Vietnam opened its economy and integrated into the world market. With the wide
range of commodities and the fierce competition in the market, counterfeits of
popular goods are being produced increasingly. The producers, therefore, have no
choice but register their trademarks to obtain legal protection from fakes.
Businesses are advised to immediately register their trademarks in Vietnam as
well as in other foreign market to avoid losing trademarks.
Despite many warnings, bad news on the “disappearance” of Vietnamese
trademarks has caused headaches for many companies in the country. Here are
some typical cases.
a. Trung Nguyen Coffee
Trung Nguyen coffeehouse chain is one of Vietnam’s best-known brands, which
now has 400 franchise cafés around Vietnam. Trung Nguyen brand was launched
in 1998 by Dang Le Nguyen Vu, Trung Nguyen owner who decided to take it
abroad, not just to any country such as Japan, Hong Kong, Korea, but to the
heartland of the coffee business, America. The controversy goes back to 2000
when Trung Nguyen entered US market through its American distributor, Rice
Field Corporation. The first purchasing contract between the two companies
became valid in January 2001. When Trung Nguyen applied to register its
trademark in the US in May 2001, it discovered that Rice Field had already
registered the trademark in October 2000.
“This has put a stop to all of our discussions with other American partners” the
firm's founder, Dang Le Nguyen Vu, was reported as saying. Although legal
moves to recover the trademark are under way, Mr. Vu said that regardless of
how the case turns out the company has lost the opportunity to enter the
American market immediately and can't advertise its products in America.
“This is a huge loss for us” he said. “I knew that the American market would be
difficult to enter, but this blow was totally out of the blue.”
To retrieve its trademark, the company has given US authority piles of document
to buttress his rightful claim, proving that the Trung Nguyen trademark has
existed since 1996, and has become one of Vietnam’s icons. The long-standing
trademark dispute may be nearing the end in the attempt of Trung Nguyen to win
the case and stop the lengthy dispute as soon as possible.
b. Petro Vietnam
The Vietnam Oil and Gas Corp (Petro Vietnam), a state owned company has been
in business since 1975 is still struggling to retrieve its trademark, even after
finding out the usurper, the Nguyen Lai Corp, a television repair firm, only intend
to sell the brand to Petro Vietnam to make a quick buck.. The news was broken on
the Internet by the USPTO when it announced receiving an application to register
the Petro Vietnam trademark with an identical logo, a burning flame.
Petro Vietnam had to present major information about itself including its logo,
trademark and function registered in Vietnam and its business relations with oil
and gas giants around the world. At the moment, Petro Vietnam has no gas and oil
in the US market except the crude oil so there is no immediate loss. However in
several years, the corporation will has difficulty exporting processed oil and
products to the US if the trademark is registered by another company.
Luckily, the trademark and logo registration by Nguyen Lai Corp is still at the
first considered stage at present. Moreover, because of being a state owned
company, Petro Vietnam get much support from the Government to accelerate
the registered process.
It will complete registration of its trademark in Vietnam this October and will
register in the United States and European Union in the future as part of the
corporation's long-term strategy.
c. Vietnam Tobacco Corp. (Vinataba)
The well-known “Vinataba” mark was registered in some Asean countries by an
Indonesia company. The country’s largest tobacco producer had discovered to its
chagrin last year, when trying to register its trademark in some countries and
territories, that the Indonesian firm had fraudulently applied for registering the
Vinataba label in 14 markets.
Announcing this, Pham and Associates, the company’s legal representative,
revealed that Vinataba has received an official letter from Cambodia’s
intellectual property authority informing of the abrogation of P. T. Putra Staba
Industry’s right to the trademark. Even more disturbingly for it, the impostor had
managed to acquire the brand name in six markets - Cambodia, Laos, Thailand,
Malaysia, Indonesia and Hong Kong.
Vinataba has struggled to retrieve its trademark in these markets. Fortunately,
Vinataba was success in retrieving its trademark in Cambodia but the cost in this
case is likely to be more than US$1,500. The company said the battle to retrieve
its label was still on.Vinataba intends to register its name in 30 more countries to
avoid becoming the victim of a trademark heist again.
Other famous Vietnamese trademarks such as Phu Quoc Fish Sauce, Bitis, 333
Beer, Nang Huong jasmine rice have been registered by foreign businesses.
However, there are a few positive signs recently. To protect trademark, some
Vietnamese enterprises are signing franchising contracts. It means transferring
trademark to foreign enterprise, so the trademark owner with develop and
advertise their products in the foreign market without spending much capital.
The pioneer in this method is Asia Silk Company, well known at home for its
“AQ Silk” .
Moreover, enterprises are paying increasing attention to protect their trademarks.
Many Vietnamese companies including Vinamilk, Miliket, Kymdan, Vinacafe ...
has register and promote their trademarks worldwide.
