In 2011, a lot of Vietnamese famous geographical indications, such as Buon Ma Thuot coffee and Phu Quoc fish sauce were found as having been registered as foreign trademarks.
Competent agencies are collecting proofs to prepare for the process to reclaim their famous brands which is believed to last at least one year. Meanwhile, many other businesses said they also had to spend a lot of money and time to reclaim their trademarks. Therefore, Vietnamese businesses have been told that “prevention is better than cure.”
Carelessness may lead to the loss of trademark
Established in 1980, the Dong A General Production and Trade Company, the owner of Ben Tre coconut candy has made the trademark well-known on both the domestic and foreign markets. The business has been getting more and more prosperous.
Dong A had exported 900,000-1 million tons of coconut candies a year to China until 1998, when the export volume unexpectedly dropped sharply. Nguyen Thi To, the owner of Ben Tre coconut candy trademark then realized that a Chinese company made its coconuts candies and then sold under the Ben Tre trademark.
Vu Van An, Managing Director of Dong A said that the Chinese company, after a period of cooperating with Dong A, came to meet merchants to collect coconut candies and then brought to China to sell the products under the Ben Tre trademark. Especially, the company also registered the trademark in China. As the quality of the products was not good, this badly affected the fame of real Ben Tre coconut candies and made the sales of real products decrease.
The biggest problem for Dong A at that time was that Dong A’s exports to China were then considered “counterfeit products”, since the Ben Tre trademark was registered on the Chinese market.
Finally, Dong A successfully reclaimed the trademark, but it had to spend two years and a lot of exertion on the work.
A lot of other well-known Vietnamese trademarks were also stolen, and the real owners of the trademarks could only get them back after a lot of years of following lawsuits.
Phu Quoc fish sauce, also a well-known brand of Vietnam, was registered by an US company – Viet Huong Fishsauce in the US in 1982. Since that year, the products of the company all used the trademark with the picture of anchovy, Phu Quoc Island and the map of Vietnam.
In 2006, the Vietnamese famous trademark appeared in many countries in the world, including in Europe, Australia, Thailand and China. However, these were the products of Viet Huong Fishsauce.
In May 2011, a business in Hong Kong – Viet Huong Trading Company Ltd, also filed for the trademark registration of Phu Quoc fishsauce trademark in Chinese territory.
Most recently, Vietnamese Buon Ma Thuot coffee and Dak Lak coffee brands have been found as having registered in foreign markets. In June 2011, Lawer Le Quang Vinh from Bross & Partners, a law firm in Hanoi, discovered that the Buon Ma Thuot geographical indication–both in Latin and Chinese languages, were registered for protection in China by a business in Guangzhou.
With the registration, the company will be protected for 10 years, since November 2010. The owner of the enterprise also registered the logo “Buon Ma Thuot Coffee – 1896” in China in June 2011.
Claiming back trademarks is really a thorny process
According to Lawyer Le Quang Vinh, it will take 2-3 years to reclaim the Buon Ma Thuot coffee trademark. If following diplomatic measures, it will take at least 1.5 years, and six months more to prepare documents and collect proofs.
Vietnamese trademark owners need to follow an appeal case in accordance with the Chinese Trademark Law. As the Chinese agencies have to deal with more than 1 million applications for protecting trademarks, they get overloaded.
According to Tran Viet Hung, former Head of the Vietnam National Office of Intellectual Property NOIP, it would not be a complicated case to reclaim Buon Ma Thuot trademark, if referring to Chinese laws and the international practice.