Following the first classic intellectual property right dispute between the two brands Truong Sinh (Longevity) which was introduced in our previous article1 , we would like to help you evoke the second classic intellectual property dispute that is considered to be more interesting in which the right holder claimed his proprietary rights to multiple different types of intellectual property rights namely trademark, well-known trademark, unfair competition and copyright.
Background of the case
1. Marvel Chracters Inc. (Marvel), a world famous American film company known for its blockbuster movies made of well-loved superhero characters like "Iron Man", "Spider Man" "Hulk" and especially the mutant characters "X-MEN", is the owner of trademarks in Vietnam including X-Men under registration no. 11455 issued on April 7, 1994 covering class 9 (discs, tapes, video games), class 16 (printed matters, comics), class 25 (clothes) & class 28 (toys).
2. On June 27, 2003, "X-Men & device" trademark in the name of International Consumer Products Joint Stock Company (ICP) was filed and subsequently granted protection under registration no. 63481 of June 8, 2005 used for cosmetic chemicals in class 03 (in practice the disputed trademark is used for men shampoo).
3. On August 8, 2006, Marvel filed a petition seeking for cancellation of registration no. 63481, claiming that ICP's X-Men trademark did not meet the protection criteria based on three legal grounds: (a) coinciding with Marvel's well-known trademark "X-MEN" in violation of Article 6.1.e, Decree 63/CP; (b) identical with Marvel's character names in breach of Article 6.1.h, Decree 63/CP; and (c) taking advantage of the reputation of Marvel's X-MEN trademarks and characters in advertising and marketing in a manner to confuse consumers in violation of Article 6.2.d, Decree 63/CP.
4. The National Office of Intellectual Property of Vietnam (NOIP) rejected the cancellation action by its Decision 93/QD-SHTT of January 22, 2008, which led to Marvel continuing to file administrative complaints to the Minister of Science and Technology ("MoST") but the MoST upheld the NOIP's denial by issuing its Decision No. 1428/QD-BKHCN of July 11, 2008 reasoning that there are not sufficient legal grounds.
5. Due to the failure at both levels of administrative complaint according to the denunciation and complaint settlement procedure, Marvel initiated an administrative lawsuit and was accepted by the Hanoi People's Court with acceptance no. 08/2010/TLST-HC of October 8, 2010. According to the court's record, the NOIP participated in the proceedings as the defendant, Marvel as the petitioner and ICP as the party with related rights and interests. Upon hearing, the administrative court of the Hanoi People's Court issued a first-instance administrative judgment no. 03/2013/HCST of March 29, 2013 rebutting Marvel's petitions, in the meantime declaring to maintain the validity of the trademark X-Men by registration no. 63481. Due to no appeal, the first instance verdict no. 03/2013/HCST entered into force.
The Parties' Contentions
6. In support of 3 legal grounds mentioned in point 3 above, Marvel provided the court with 38 contracts for X-MEN trademark licence in many countries around the world, 18 registrations of trademark X-MEN granted in various jurisdictions, 06 certificates of registration of copyright for the work X-MEN, and a lot of evidences proving the wide use of X-MEN in publications, films, stories, tapes and discs along with report on revenue from exploiting the images or brand X-MEN. Marvel accused ICP of having motivated to take advantage of reputation of Marvel-owned brands and X-MEN characters, and claimed that the X-MEN shampoo promotion video clips had using both the image of Hollywood and the actor Brad Pitt that Marvel thinks is reminiscent of products associated with Marvel's X-MEN image.
7. The NOIP as the defendant, which granted registration no. 63481, contended that Marvel has not yet demonstrated its X-Men is a famous trademark in connection with the X-MEN branded products as registered under the name of Marvel are just cultural ones which are completely different from cosmetic products. Therefore, there is no likelihood of confusion to consumers. Because of the dissimilar and unrelated nature of Marvel's X-Men products with ICP's X-Men, the use of X-MEN by ICP does not get a free ride of or parasite the prestige of Marvel's X-MEN or does not constitute a passing-off or an unfair competition act.
8. The party with related rights and interests, ICP asked the court to refute Marvel's arguments, counterstating that: (a) Marvel's X-MEN trademark is not a well-known trademark because Vietnamese consumers have not yet known even any products made by Marvel labeled X-MEN in Vietnam; (b) X-MEN is the name of a group of characters, not a specific name or symbol of Marvel characters, so it is not subject to the applicable scope of Article 6.1h, Decree 63/CP; and (c) ICP has its own strategy to promote and build up a unique style for customers who use or buy its products, it does not intend and does not want to take advantage of Marvel's reputation.
9. In its judgement, the court found that as of July 26, 2003 - the filing date of trademark X-MEN by ICP, Marvel did not register any trademark designating the same type of cosmetic products but only covering culture-related products such as stories, games, toy, garment and on the other hand Marvel's revenue does not specify how much is earned from beauty products (class 3). The sign X-MEN is perceived as the mutants and superheroes that are widely known in Marvel movies and stories but are just the name of group of people containing the X (mutation) gene and not a specific character. On the other hand, it is the Copyright Office itself when asked by the court stated that there is no provision for the protection of character names under the copyright law. Regarding unfair competition, the court considered that there is no basis to conclude on dishonest motive when ICP uses the image of Hollywood and actor Brad Pitt because Marvel did neither provide nor prove that Marvel has a right over the image of Brad Pitt, the icons of Hollywood.
10. Theoretically, the litigation in administrative cases involved in intellectual property rights is, in nature, the fact that the litigants rely on the power of the judicial branch (eg. court) petitioning to reconsider the accuracy in applying laws exercised by the executive branch (state administrative agencies such as the NOIP and MOST). On the other hand, the review of administrative decisions by the court also implies the need to use an institution different from that of an administrative order institution to counterbalance administrative power. However, in practice, utilizing the judicial way to cancel administrative decisions related to intellectual property rights is difficult and this case seems to be the same.
11. Right holders, especially the foreign right holders, should gradually familiarize themselves with the imprint and relatively lackluster representation of the courts in even civil or administrative cases relating to intellectual property rights. In general, it will be difficult for you to find legally featured arguments, analyses or interpretations or explainations by any Vietnamese court when reading the whole judgement. In this case, it is probably seen that the court chose to rely on which source of evidences submitted to make the ruling rather than to consider the rationality and legality of the lawsuit as well as the evidence surrounded it. In this case, the court probably depended heavily on the expert opinions of the Copyright Office of Vietnam (COV) and the NOIP to hand down. Nevertheless, reliance on the expert opinion of the NOIP - the authority that granted protection in favor ICP's registration no. 63481 – was regarded inappropriate on the one hand because it does not guarantee objectivity and the expert opinion delivered by the protection granting authority cannot, on the other hand, be logically considered as admissible source of evidence2 .
1 Read more: http://bross.vn/newsletter/ip-news-update/The-Complexity-in-Determining-%E2%80%9CLikelihood-of-Confusion%E2%80%9D-Viewed-from-the-Classic-%E2%80%9CTruong-Sinh%E2%80%9D-Trademark-Infringement-Lawsuit--in-Vietnam
2 Although this suit occurred after July 1, 2006 - the effective date of the 2005 Intellectual Property Law, the court correctly applied legal provisions in valid with respect to the examination and grant of protection title at the time of filing of application for registration of June 27, 2003 for X-Men by ICP. If the case is set at the present time, pursuant to Section 81 of the 2015 Law on Administrative Procedure, there is not any evidence or source of evidence admissible by the court called as "expert opinion". See more about the differences between "expert opinion" (ý kiến chuyên môn) and "appraisal conclusion" (kết luận giám định) at our published article at the link: http://bross.vn/en/ip-practices/Is-Expert-Opinion-or-Appraisal-Conclusion-Admissible-in-the-Disputes-or-Infringement-Claims-of-Intellectual-Property-Rights-in-Vietnam
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.