Branding: Constant Attention

One of the most typical cases is the appropriation of Trung Nguyen coffee’s domain name in Australia to advertise and sell Highlands-branded coffee. Manufacturing more than a half of the country’s coffee, playing a decisive role in making Vietnam the second largest Robusta coffee exporter, and possessing world-renowned Buon Ma Thuot coffee brand name, Dak Lak province has reportedly lost two trademarks to Chinese and French companies. Recently, Bross & Partners Legal Service Company has found out two brands, Buon Ma Thuot coffee and Dak Lak coffee appropriated by foreign enterprises. Particularly, geographical indication of Buon Ma Thuot Coffee has been registered by Guangzhou Buon Ma Thuot Coffee Co., Ltd for monopoly protection for 10 years in the territory of China while a French company, ITM ENTREPRISES, has registered the Dak Lak coffee trademark in more than 10 different countries since September 1997. This company has registered this brand name on a global scale and its Dak Lak coffee trademark has been registered for protection in many countries in addition to France like Austria, Bulgaria, Belgium, the Netherlands, Luxembourg, Switzerland, Czech Republic, Germany, Croatia, Hungary, Italy, Morocco, Monaco, Poland, Portugal, Romania, Slovenia, Russia, Slovakia and Serbia.

Vietnam’s Phu Quoc fish sauce trademark was registered for protection by Hong Kong-based Viet Huong Trading Ltd., Co. Currently, according to Chinese laws, registered trademark will be protected. As Phu Quoc fish sauce is not very famous in China, Chinese authorities are considering and if the Vietnamese side shows no reaction, they will naturally grant the protection of this trademark according to the laws.

 

According lawyer Le Quang Vinh of Bross & Partners Legal Service Company, if the loss of Buon Ma Thuot coffee and Phu Quoc fish sauce trade names had been found soon enough, the resolution would have been easier and not so costly. He explained that if the Vietnamese side found out that its trade name is infringed, it only needed to send a letter of protection and waited for feedback. If it was unsuccessful, the registration of Viet Huong Trading Ltd., Co. would be also delayed 2 - 3 years. Because, according to Chinese laws, any third party in this case has evidence that such a registration affects its rights and interests, and may cause damage to its reputation, brand and revenues, it is entitled to lodge a letter of objection. However, an excessively slow response from concerned Vietnamese company to this Phu Quoc fish sauce trade name has made everything settled. According to many intellectual property experts, the protection of geographical indications like the case of Phu Quoc is defined as limited protection - that is, territory-bound protection. Although the brand name has been registered for protection in Vietnam, it is not be effective in other countries. So, to be protected in foreign countries, brand owners have to file protection registration in those countries. Lawyer Vinh also introduced two ways of geographical indication protection for Vietnam. The first way is to apply geographical indication protection to every single country but this approach is very expensive. The other way is to use collective brand according to the Madrid Agreement. If a company is not found on the list registered for protection, it is deemed a violator. If this way is used, Vietnam can register for protection in 84 countries at a cost of just US$20,000.

 

Mr Tran Viet Hung, former Director of the National Office of Intellectual Property under the Ministry of Science and Technology, from these regretful cases, localities with famous brand names should quickly register their brand names for protection. However, a lot of Vietnamese companies now have limited financial capacity, small operating scales and limited knowledge of brand protection. Spending a good sum of money on intellectual property registration is a burden to them.