Trademark infringement case in Vietnam

Trademark infringement case in Vietnam

FOR EDUCATIONAL USE ONLY

Hoai Nam Ltd. Co. v. Phu Dong Thien Vuong Ltd. Co.

1. Country/Court: Vietnam / Justice Committee of SPC

2. Case No.  No.8/2003

3. Decision Date: February 26, 2003

4. Parties

Plaintiff: Hoai Nam Limited Company (hereinafter referred as Hoai Nam Ltd. Co.) represented by its Director -Mr. Nguyen Quoc Hoai;

Defendant: Phu Dong Thien Vuong Limited Company (hereinafter referred as Phu Dong Thien Vuong Ltd.Co.) represented by Mr. Nguyen Huu Lam, owner of Phu Dong Thien Vuong Restaurant;

Persons with related rights and obligations:

1. Mr. Dang Minh Tuan, residing at 12, line 9, Son Tay street, Ba Dinh District, Hanoi;

2. Mr. Nguyen Tuan Anh, residing at 9, Le Gia Dinh, Hai Ba Trung District, Hanoi.

5. fact

Hoai Nam Ltd. Co., directed by Mr. Nguyen Quoc Nam, was established under the License No. 35/GP-UB dated December 11, 1993 issued by the People’s Committee of Hanoi City, which is subsequently supplemented with foods and drinks business under Decision 3720/QD-UB dated October 14, 1995 of the People’s Committee of Hanoi City.

On 30 May 1996, Hoai Nam Ltd. Co. signed a house rental contract to rent the house at 47 Tran Xuan Soan, owned by Mr. Nguyen Huu Lam, with the duration of 3 years, to open a restaurant named Phu Dong Restaurant. Financial contributors to the business of Phu Dong Restaurant include Mr. Nguyen Quoc Hoai, Mr.Tuan Anh, Mr. Dang Minh Tuan, Mr. Nguyen Huu Thanh and Mr. Nguyen Thanh Long (Mr. Nguyen Thanh Long is Mr. Nguyen Huu Lam’s younger brother). During its business operation, on 31 July 1998, Hoai Nam Ltd. Co. lodged an application for protection of trade mark and was granted Trade Mark Registration Certificate No. 32102 (under Decision No. 2905/QDNH dated 19 September 1999). The trade mark includes logo of Phu Dong Restaurant formed by the drawing of the restaurant building and the image of a man riding a horse, which is protected under category No. 42 of food and drink services. When the contract expires, Mr. Lam refuses to extend the contract’s validity. Therefore, on 26 July 1999, Mr. Hoai, Mr. Tuan Anh and Mr. Tuan made a contract to sell their investments in the Restaurant to Mr. Lam at the price of 260,000,000 VND per proportion, equivalent to 780,000,000 VND for all three proportions. Later, Mr. Hoai, Mr. Tuan and Mr. Tuan Anh rent the house at No. 32 Thi Sach Street to reopen Phu Dong Restaurant there.

Phu Dong Thien Vuong Ltd. Co. was established under the License No. 4503 GP/TLDN dated July 17, 1999 issued by the People’s Committee of Hanoi City. The Company was directed by Mr. Nguyen Huu Thanh, and allowed to conduct foods and drinks business. On July 18, 1999, Phu Dong Thien Vuong Ltd. Co. opened Phu Dong Thien Vuong Restaurant at 47 Tran Xuan Soan for foods and drinks business and assigned Mr. Lam as Restaurant Manager.

On November 23, 1999, Hoai Nam Ltd. Co. signed a contract with New Hanoi Newspaper to publish a notice of moving Phu Dong Restaurant from 47 Tran Xuan Soan to 32 Thi Sach. On December 08, 1999, Mr. Lam signed a contract with New Hanoi Newspaper for publication of Phu Dong Thien Vuong Restaurant’s acknowledgment on three issues published on December 07, 08 and 09, 1999, in which said that “on 3rd anniversary of establishment of Phu Dong Thien Vuong Restaurant at 47 Tran Xuan Soan street, Hanoi, we sincerely thank for the customer’s kind solicitude to our restaurant for recent time•c” and concurrently, used a part of protected logo that has been registered by Hoai Nam Ltd. Co., which was the drawing of restaurant building, in the corner of the acknowledgement. On December 20, 1999, Hoai Nam Ltd. Co. lodged a claim against Mr. Lam’s infringement of rights on trade mark held by Hoai Nam Ltd. Co. On January 27, 2000, Phu Dong Thien Vuong Ltd. Co. lodged an application to register trade mark and was granted Trade Mark Registration Certificate No. 35309 (under Decision no. 2314/QDNH dated 30 December 2000) by the Industrial Property Department to protect the words “Phu Dong Thien Vuong” for its trade of producing materials, trade of consumption goods, sale, buy and consignment

Agent of goods, as well as the business of trading foods and drinks belonging to category No. 35. On October 19, 2001, Industrial Property Department issued Official Letter No. 305 to withdraw the said Trade Mark Registration Certificate regarding the business of trading foods and drinks, in which stated that the Industrial Property Department was made a mistake in the process of granting Trade Mark Registration Certificate. According to Mr. Hoai, Director of Hoai Nam Ltd. Co., the use of word Phu Dong Thien Vuong by Mr. Lam in his restaurant infringes the protected trade mark “Phu Dong” held by Hoai Nam Ltd. Co. Mr. Lam shall have to uninstall the advertisement panel in the front of the restaurant because it intentionally causes confusion to customers. Mr. Lam shall have to stop making fault advertisement and using of protected trade mark held by Hoai Nam Ltd. Co. Mr. Lam argues that the use of word Phu Dong Thien Vuong for his restaurant is completely appropriate because the restaurant is located in Phu Dong Thien Vuong Street and belongs to Phu Dong Thien Vuong Ltd. Co. The notice on movement of location from 47 Tran Xuan Soan to 32 Thi Sach by Hoai Nam Ltd. Co. is contrary to the agreement signed on July 26, 1999 among the relevant parties and intends to cause difficulties to him in opening restaurant at 47 Tran Xuan Soan. Hence, he has to make advertisements on 7, 8 and 9 December 1999 and the content of the advertisement has nothing improper, the drawing in the corner of the advertisement is in fact the drawing of his house. Therefore, he does not accept any claim by Hoai Nam Ltd. Co.

Mr. Tuan’s and Mr. Tuan Anh all agree with Mr. Hoai’s claim and testimony and authorize Mr. Hoai to handle the case on their behalf. Mr. Thanh’s and Mr. Long are of the opinion that Phu Dong Thien Vuong Restaurant belongs to Phu Dong Thien Vuong Ltd. Co.; thus Mr. Lam has full power in conducting business and making advertisement. Both of them authorize Mr. Lam to handle the case on their behalf.

6. Issue

Whether the use of trade mark “Phu Dong Thien Vuong” and the use of logo containing of the drawing of a man riding a hose by Mr. Lam in the cover of chopsticks and tissues in his restaurant is legally acceptable.

7. Holding and Decision

Phu Dong Thien Vuong Ltd. Co., represented by Mr. Lam, who is the manager of Phu Dong Thien Vuong restaurant at 47 Tran Xuan Soan, shall not be entitled to use trade mark containing the sign of Phu Dong Thien Vuong restaurant and logo containing the drawing of a man riding a horse and the phrase Phu Dong Thien Vuong restaurant in the chopsticks and tissue-paper packages while conducting foods and drinks business.

8. Editor’s Analysis

In July 18, 1999, Phu Dong Thien Vuong Ltd. Co. opened a restaurant namely Phu Dong Thien Vuong at 47 Tran Xuan Soan. In December 1999, Mr. Lam, who is the manager of Phu Dong Thien Vuong, published an untrue acknowledgement of Phu Dong Thien Vuong Restaurant on the newspaper; thus, Hoai Nam Ltd. Co. lodged claims at court and the Industrial Property Department alleging that Mr. Lam infringed upon its protected trade mark. On February 02, 2000, the Industrial Property Department replied to Hoai Nam Ltd. Co. by official letter No. 105/SHCN-KN saying that if Mr. Lam used Phu Dong Thien Vuong trade mark, that act can cause confusion to consumers and must be seen as an infringement of protected trade mark, as provided for in Art. 805 of the Civil Code.

On 14 February 2000, Mr. Nguyen Thanh Hong, Deputy Director of Legal Management section of the Industrial Property Department also gave his opinion that Mr. Lam was currently running foods and drinks business; thus Mr. Lam’s advertisement was considered as an act of infringing upon protected trade mark held by Hoai Nam Ltd. Co.

On 30 October 2000, the Industrial Property Department issued decision no. 2314/QDNH granting Trade Mark Registration Certificate No. 35309 to Phu Dong Thien Vuong Ltd. Co. for its trade of producing materials, trade of consumption goods, sale, buy and consignment Agent of goods. This Certificate also recognized the protection of trade mark “Phu Dong Thien Vuong” for the business of trading foods and drinks belonging to category No. 35. However, the Industrial Property Department did recognize such its error in performing its professional skill and confirmed that Phu Dong Thien Vuong Ltd. Co. was not entitled to use the mark Phu Dong Thien Vuong for “foods and drinks sale”. Accordingly, on October 19, 2001, it issued Decision No. 305/QD.KN to withdraw part of the Trade Mark Registration Certificate No. 305/QD.KN regarding the protection of trade mark Phu Dong Thien Vuong for business of trading foods and drinks belonging to category No. 35. As a result, Phu Dong Thien Vuong Ltd. Co. represented by Mr. Lam shall not be entitled to use trade mark “Phu Dong Thien Vuong” and logo containing of the drawing of a man riding a hose by Mr. Lam in the cover of chopsticks and tissues in his restaurant.

 

 


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