Trademark in Vietnam, long bad faith story

28/09/2018 - 3224 views

There has been an increasing global issue of the so-called “bad faith trademark filings” in which a trademark is filed for unfair purposes in order to take advantage from the reputation of a well-known trademark whether registered or not registered yet in the country or region concerned. Nowadays, there are more and more free-riders with sophisticated ways of registering trademark in Vietnam in order to mislead the Trademark Office’s examination, notably, the recent bad faith filing over the registered trademark of Doosan Corporation.

Founded in 1896 and through 120 years of history, Doosan has been a truly global brand in the Infrastructure Support Business industry, such as providing electrical power, desalinated drinking water, construction equipment, advanced machinery, defense supplies, houses, highways and bridges, chemical processing equipment and industrial engines. Obviously, the reputation of Doosan Corporation is an attractive target for the free-riders to profiteer.

In 2015, a Vietnamese company operating in the same industry as Doosan Corporation, filed an application of trademark in Vietnam  for “cylinders; cylinders for pistons and segments; etc.” before the National Office of Intellectual Property of Vietnam (NOIP). This is considered as a sophisticated case to evade the existing examination criteria.

The only difference between this trademark and the registered trademark in Vietnam of Doosan Corporation is the two vowels “OO” replaced by the two consonants “QQ” but it makes the significant different as a whole. In term of pronunciation, “DQQSAN” cannot be pronounced as a complete word as “DOOSAN” but a combination of four syllables /di://kw//kw//sæn/. This type of trademark production can overcome the searching system/tool of Vietnamese trademark examiners if they do not pay necessary attention and caution to the matter or the applicant can totally argue on this difference with trademark examiners in case of refusal.

However, the bad faith filing of this applicant is clearly shown in term of presentation of the letter “Q” in uppercase. A common method among typographers to create the shape of the letter “Q” is by simply adding a tail to the letter “O”. Depending on the typeface used to typeset the letter “Q”, the letter’s tail may either bisect its bowl as , meet the bowl as , or lie completely outside the bowl as . In this case, the letter “Q” of “DQQSAN” is presented as a letter “O” with a slight tail that meets it bowl. Assuming that if some simple tricks are added, for example, the letter “O” is highlighted while its tail is blurred, the likelihood of confusion among the consumers is very high. As a matter of fact, those tricks are frequently used by the free-riders to take advantage from the reputation of well-known.

On the basis of the above arguments, Ageless IP Attorneys & Consultant filed an opposition to request the NOIP to further examine on the criterion of presentation of the letters. Upon consideration our arguments, NOIP refused protection for “DQQSAN” trademark in Vietnam.

In the context of fierce competition in a new emerging market like Vietnam and the constant changing methods of bad faith filings, the owners of trademark in Vietnam have to pay more attention to the protection of their trademark rights from infringements, especially when the competitors always try to exploit the gaps in IP Legal system to take advantage from.

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