In October 2008, the IP agent of BB in Vietnam (“BB’s local IP agent”) sent a cease and desist letter  to Gannon Vietnam Ltd. (an importer and distributor of A-B’s Budweiser beer in Vietnam), asking the latter to remove A-B’s  Budweiser script design from its beer bottle label (see sample A-B’s  beer bottle label attached), based on the grounds that A-B had only the right to use the name Budweiser as exactly as represented in A-B’s registrations in Vietnam, and that A-B’s  Budweiser script design was confusingly similar to, and therefore infringed BB’s rights for, BB’s Budweiser script design as represented in BB’s marks which are being protected in Vietnam, “Budweiser Budvar & Device” (Int Reg. 614536), “Budweiser Budbrau & Device” (Int Reg. 614537).

There has been being an interminable dispute between A-B and BB over the name Budweiser in various countries in the world.  In Vietnam, after a 12-year fighting for the name, both sides did win in 2001, but are allowed to use the name Budweiser at very different levels.

A-B is the owner of the trademarks “BUDWEISER” in block letters (Reg. No. 37578, filed on June 21, 1989, granted on June 20, 2001) and “Budweiser” in lowercase (Reg. No. 37579, filed on June 23, 1990, granted on June 20, 2001) for, among others, beer in Vietnam. BB is the owner of the trademarks “Budweiser Budvar (stylized), device” (International Reg. No. 614536, internationally registered on March 11, 1994) and “Budweiser Budbrau (stylized), device” (International Reg. No. 614537, internationally registered on March 11, 1994) designated Vietnam for beer. 

The trademarks protected in the name of A-B in Vietnam are “the trademark BUDWEISER” in block letters and in lowercase. It means that A-B has the right to use the trademark in ANY format – not only just in block letters or lowercase – in Vietnam, according to the legal practice in the trademark law which has been being applied in Vietnam for many years.

While the trademarks protected in the name of BB in Vietnam are limited only to “the mark[s] containing the element BUDWEISER” (as opposed to “the trademark BUDWEISER” – these words the NOIP used to name BB’s marks and AB’s mark respectively in its Decision No. 1404/SHCN, dated December 29, 2000, on settlement of the dispute over the name Budweiser) with the name Budweiser exactly represented as that in its international registrations Nos. 614536, 614537 so as to not conflict with the A-B’s right to use the name Budweiser in any format. In other words, BB has the right to use the name Budweiser in Vietnam only if the two following conditions are met simultaneously: (i) the name Budweiser must be used only in its combining marks Nos. 614536, 614537; and (ii) the name Budweiser must be represented exactly the same as that in its said international registrations. This is the scope of protection of the name Budweiser allocated by the NOIP to BB in Vietnam; and, also, this is the only one exception to the A-B’s exclusive right to use the trademark BUDWEISER in any format in Vietnam.

And, visually, the Budweiser script design A-B has been using in Vietnam is totally different with that of BB in BB’s international registrations. 

In Vietnam, A-B began using the BUDWEISER in script label design in 2002 and has only used the script design since.  BB’s failure to assert any claim of infringement until this cease and desist letter to Gannon is compelling evidence that there is no likelihood of confusion.

In fact, this BB’s claim of infringement is groundless and nothing more than a retaliation against A-B that had successfully asserted a valid claim against BB’s use of BUDWEISER in block letters in the recent cases Anheuser-Busch v. Phuong Trinh. 

Being authorized by Gannon Vietnam and Anheuser-Busch, in November 2008, Lê & Lê sent a response to BB’s local IP agent, which says:

1) The opinions of BB and BB’s local IP agent that the acts by Gannon Vietnam of “importing and distributing beer products bearing mark “BUDWEISER” which is presented in stylized letters can cause confusion for consumers and constitute an act of infringement against BB’s IP rights” are groundless and do not properly reflect full appreciation of the current IP law and the NOIP’s decisions in the long A-B v. BB dispute in Vietnam since 1989.

2) BB’s claim of infringement is nothing more than retaliation in bad faith against AB.

3) Under the present intellectual property law, BB can exercise its IP rights only in the legal scope without violating rights and legal interests of others. If BB and BB’s local IP agent continue to exercise rights beyond its legal scope and/or abuse the IPR enforcement procedures, harming Gannon and A-B, BB and BB’s local IP agent will be liable for any harms, including any harm to their property and harm related to their reputation, caused by BB and its local IP agent’s acts.

Both BB and BB’s local IP have been being silent since then.

Lê & Lê attorney Le Hoai Duong represented Anheuser-Busch.