In an effort to help the Minister of Science and Technology handle difficult IP cases, Advisory Councils on IP matters have recently been established. As a result, several contentious cases stuck at the National Office of Intellectual Property (NOIP) have been settled effectively, one of which is the case Kim Nga v. A-Ngoon.
This case has been involved in a long-running and controversial dispute between Kim Nga and A-Ngoon (a Thai resident) at the NOIP.
On 31 December 2001, Kim Nga filed an application for registration of trademark BERINAS for goods “Cosmetics and detergents” in Class 03. On 19 December 2002, the trademark was registered (Reg. No. 44527) and renewed to 31 December 2021.
On 21 August 2003, A-Ngoon filed an application No.7161 for registration of trademark “Berina & Device” for “Cosmetics” in Class 03; then on 12 February 2004, filed 02 applications (Nos. 975 and 976) for 02 other trademarks “Berina & Device” for hair care products.
On 12 October 2004 and 05 May 2005, these applications Nos.7161 and 975 & 976, respectively, were refused, according to Article 6.1.b of the Decree 63/CP, by the NOIP on the ground that the later-filed trademarks in these applications were similar to the earlier-filed trademark BERINAS.
On 16 January 2006, after considering the appeal of A-Ngoon, the NOIP accepted registration of these (03) refused trademarks, arguing:
these filed trademarks have been widely used through many years in Thailand and especially in Vietnam since 2000 for goods limited, i.e. cosmetics for hair, thus, have become distinguishable from the cited mark.
(Emphasis added.)
Accordingly, on 19 April 2006, the A-Ngoon’s trademark “Berina & Device” was registered (Reg. No. 71481) for goods limited to “Gel, mousse for hair; liquid and gel stick for hair; hair lotion; hair dyes” in Class 03; and, on 11 May 2006, the two other trademarks “Berina & Device” were registered (Reg. Nos. 71961 and 71962) for goods “hair colourants” in Class 03.
On 08 July 2010 – based on Kim Nga’s cancellation of A-Ngoon’s 03 trademarks “Berina & Device” – the NOIP issued Decisions Nos. 1270, 1271 and 1272/QĐ-SHTT invalidating the Reg. No. 71481, and the Reg. Nos. 71961 and 71962 partially for the word element “Berina”.
On 28 February 2014 – based on A-Ngoon’s Oct. 2010 appeal – the NOIP issued Decisions Nos. 476, 477 and 478/QĐ-SHTT, annulling the former Decisions Nos. 1270, 1271 and 1272/QĐ-SHTT and restoring the validity of Reg. Nos. 71481, 71961 and 71962 on the same reasons as argued by the NOIP in registering these later-filed trademarks.
On 26 March 2014, Kim Nga appealed to the MOST for reversing NOIP’s Decisions Nos. 476/QĐ-SHTT, 477/QĐ-SHTT and 478/QĐ-SHTT.
Under the circumstances, on 21 July 2015, an Advisory Council of five (05) IP experts was established and attorney Le Hoai Duong of Lê&Lê was appointed as the Chairman of the Advisory Council (by a Decision No. 1713 dated 07 July 2015 signed by the Minister of Science and Technology) for hearing the case and advising him to settle the dispute. Four (04) other members were Deputy General Director in charge of trademarks of the NOIP, Chief of Legislation Department of the MOST, Editor-in-chief of the State and Law Journal of Vietnam Academy of Social Sciences (VASS), and another trademark agent of Tran Huu Nam & Associates.
On the same day, after hours of the hearing with representatives from Kim Nga, A-Ngoon, and the NOIP’s Board of Appeals, the Advisory Council worked together to reach a consensus (5/5) on advising the MOST to reverse NOIP’s 03 Decisions Nos. 476, 477 and 478 dated 28 February 2014.
As Chairman, Attorney Le Hoai Duong took the lead in analyzing the facts of the case and the applied law and regulations.
He was firmly of the opinion that:
- The similarity between the trademarks in question was clear. The word element “Berina” (dominant element) of A-Ngoon’s 03 trademarks was “substantially identical” with the earlier registered trademark BERINAS of Kim Nga;
- The similarity of goods bearing the trademarks in questions was clear, too. Despite having been limited, A-Ngoon’s goods bearing Berina were still “cosmetics for hair”, and therefore, were similar and fell within the broader scope of goods bearing Kim Nga’s cited trademark “cosmetics and detergents”. The NOIP erred in having considered that Kim Nga did not actually sell (i.e., use) hair care products, hence, Kim Nga’s products were different with A-Ngoon’s products. “What to be considered here is the scope of protection as recorded in the registration of Kim Nga, but not what being used by Kim Nga in reality.”
- The fact that A-Ngoon’s trademarks containing Berina “have been widely used through many years in Thailand”, cited by the NOIP, was irrelevant to this case because, of all A-Ngoon’s evidence, there was no evidence that such use of her trademarks in Thailand had made Vietnamese consumers be aware of her trademarks.
And, according to the Chairman, the issue was whether the later-filed trademarks containing Berina, which were substantially identical with the earlier-registered trademark BERINAS for similar goods, met the protection requirements under Article 6.1.b of Decree 63/CP.
The NOIP said that they did, arguing that the trademarks containing Berina had been used in Vietnam since 2000, therefore, “acquired distinguishability, not identical/ confusingly similar to the cited trademark BERINAS”.
The Chairman disagreed, opining that the NOIP confused the two (02) concepts of “distinctiveness” and “distinguishability” of trademark (both the concepts termed “khả năng phân biệt" in Vietnamese) as provided for in Article 6.1 of Decree 63/1996/NĐ-CP, and therefore, misunderstood and wrongly applied Article 6.1.b of Decree 63/1996/NĐ-CP in this case.
Then he raised two questions for discussion:
(i) Is it sufficient to teach the Vietnamese consumer of difference between the disputed trademarks (substantially identical for similar goods), when A-Ngoon’s trademarks have just been used in Vietnam in a very short period (since 2000, i.e. for over 01 year since Kim Nga’s registration), to a very limited extent in Vietnam (evidenced by few importing figures in 2000 and 2001 and by few in-door shows which could not be reached by the majority of consumers)? and
(ii) Have the trademarks Berina of A-Ngoon “acquired distinguishability” from the cited trademark BERINAS (i.e., likelihood of confusion between the trademarks in question has been removed) without any conditions and limitations set by the NOIP, for example, to the mode or place of use of each disputed mark, or as to the goods with which each disputed mark is used?
The answers were a definite no, the Chairman said.
Additionally, it was utmost important to keep in mind that, the Chairman said, according to Articles 788 and 790 of the Civil Code 1995, rights to a trademark in Vietnam may be acquired only through registration (but not through use) and will be granted for the person first to apply for registration (First-To-File), with one exception of trademarks “having been considered as well-known” or “having been widely used and recognized”. And, no evidence shows that A-Ngoon’s trademarks Berina should be considered as “well-known” or “widely used and recognized” in Vietnam before the filing date of the earlier-filed trademark BERINAS, therefore these later-filed trademarks must be refused registration under Article 6.1.b of Decree 63/CP.
In light of these findings and arguments, the Chairman concluded that the NOIP erred in granting protection for the later-filed trademarks Berina based on Article 6.1.b of Decree 63/1996/NĐ-CP. Therefore, the NOIP’s Decisions Nos. 476, 477 and 478/QĐ-SHTT must be annulled. In addition, “if these aforementioned Decisions are not annulled, this case will set a wrong precedent for explanation of the concepts “distinctiveness and distinguishability of trademark” – ones of the fundamental matters in trademark law”, commented by the Chairman.
Agreed with the Council’s conclusion, on 19 August 2015, the MOST issued Decisions Nos. 2102, 2103 and 2104, reversing the NOIP’s Decisions Nos. 476/QSHTT, 477/QĐ-SHTT and 478/QĐ-SHTT.