Background of the Case
According to the online newspaper VnExpress, on
This is a lawsuit that can be considered as a classic one in
1 The Plaintiff brought an action against the Defendant before the
2 Relied on the expert opinion delivered by the
3 Next, on
4 The Defendant subsequently sended various petitions for rescue addressing relevant agencies and newspapers including the comrades leading the Party, Government,
5 The MoIT was requested by the Government Office in accordance with Official Letter No. 2677/VPCP-VI of
6 The MoIT contended that the Defendant does not infringe upon the Plaintiff's trademark, nor can it be mistaken between the two trademarks because the products of the parties are different because:
a. For the legal grounds, the MoIT refers to Article 785 of the Civil Code of 1995, where trademarks are signs used to distinguish goods or services of the same kind from different establishments. Trademarks may be words, images or a combination of those elements expressed in one or more colors. Next, the MoIT cites Decree 63/CP of
b. The MoIT believes that the Defendant's condensed milk, powdered milk and Respondent's soy milk are the two different products because: (i) sweetened condensed milk, powdered milk are classified in class 29 while soymilk is grouped in class 32; (ii) According to the classification under the Harmonized Commodity Description and Coding System, or also known as the Harmonized System or the HS2, sweetened condensed milk and powdered milk belong to group 0402/Chapter 4/Part I (animal products) while soymilk is under group 2106/Chapter 21/Part IV; (iii) in terms of origin, properties and uses of products: powdered milk products, sweetened condensed milk and soy milk products are not the same foods, they differ in origin, properties and ingredients. texture, processing, sensory value and nutritional value.
c. Certificate of Trademark Registration No. 27280 protects only "sweetened condensed milk, powdered milk", does not protect soy milk products while the Defendant's product labels are a combination of both figurative and verbal elementsTruong Sinh used for different products, thus they cannot be confused with each other.
d. As provided by the laws, the words "
e. On the other hand, there is sufficient evidence to substantiate that the Defendant had used the Truong Sinh branded soy milk products before the mark
According to the information stated in the article "Practice of resolving disputes on intellectual property rights in court" by Justice
According to Mr.
Comments
The dispute mentioned above occurred too long but in our opinion it can be considered as a classic and worth a reference because:
1 The dispute directly touches on the core nature of the trademark law that is "likehood of confusion", that is, the possibility that consumers may be confused about the origin or source can only happen if there are two factors: (a) trademarks must be identical or similar in terms of structure (composition), connotation (meaning) and pronounciation, and (b) products containing those trademarks must be identical with or similar to each other.
2 The courts including the courts of first instance and the appellate court (under the supreme court) all decided in favor of the Plaintiff based on the professional opinion (expert opinion) of the NOIP affirming that the Truong Sinh used for soy milk is confusingly similar to Truong Sinh used for sweetened condensed milk in the context that the legal documents on this issue are still very primitive, not specific and clear, namely, there is no rule on determination of potential confusion.
3 The expert opinion delivered by the NOIP and the judgments ruled by the courts are correct because soy milk and sweetened condensed milk must be regarded as the same type of goods4 because: (a) soy milk (made from soy) is essentially similar to sweetened condensed milk (made from completely drained cow's milk) and has the same function and purpose because they are both considered nutritious drinks that can be used in replace with sweetened condensed milk (suitable for those who have stomachache due to lactose-free soy milk like sweetened condensed milk), (b) are read and recognized by consumers as "milk" in Vietnmese, and (c) soymilk and sweetened condensed milk are marketed in the same commercial channel (distributed in the same manner, laid next to each other or be sold together). The difference in grouping class 29 or 32 under the Nice Agreement, or the difference between soy milk and sweetened condensed milk in terms of the HS codes as explained by the MoIT is not an appropriate basis to assume that the two products is different because consumers do not know and cannot know soy milk belongs to class 32 for the purpose of distinguishing it with sweetened condensed milk in class 29, as well as they do not care about and cannot know the HS code of the products at the point of choosing and purchasing goods.
4 We opine that the difference in classification according to the Nice Classification is completely meaningless when assessing the "same type" of products, meaning that 2 products can be classified into different classes but in the consumption practice they has the same function of use, the same distribution channel or they are always used together. For instance, toothbrushes with the Nice code 210250 belongs to class 21 while toothpaste (dentifrices) with the code 030079 is classified in class 03.
Footnotes
1 See: https://vnexpress.net/phap-luat/cuong-che-thi-hanh-an-vu-tranh-chap-nhan-hieu-truong-sinh-1996890.html
2 HS stands for Harmonized System. It was developed by the WCO (
3 See: https://www.most.gov.vn/thanhtra/Pages/ChiTietTin.aspx?groupID=1&IDNews=218&tieude=ChiTietHoiDap.aspx&chID=10
4 The legal provisions before presence of the 2005 Intellectual Property Law lacked the definition and principles to identify products of the same type. However, factors to consider whether two products are considered as similar kind of products found
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