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The X-MEN trademark dispute

Marvel Characters Company, Inc. (MCC), address at 9242 Beverly Boulevard Beverly Hills, California, USA is one of the famous entertainment animation production companies in the world that has registered the trademark X - MEN in Vietnam and is granted Certificate of Registration No. 11455 dated 07/4/1994 for products belonging to classes 09, 16, 25 and 28, In addition, cultural works such as movies, stories, X-Men games of the company also registered copyright at the Copyright Office of Vietnam.

On June 27, 2003 International Household Goods Co., Ltd. (IHGC), address at 53 Luong Huu Khanh, Pham Ngu Lao Ward, District 1, Ho Chi Minh City, filed an application No. 4-2003-05427 for trademark registration &ldquo;X X-MEN and Device&rdquo;, and granted the Certificate of Registration No. 63481 dated June 8, 2005 for protection of &quot;Household cosmetic and chemical products&quot; (class 03) by The National Office of Intellectual Property.

Thinking that its intellectual property rights have been violated, on August 8, 2006 MCC filed a petition No. DN1-2006-00072 requesting the invalidation of Certificate of Registration No. 63481 issued to IHGC, for the following reasons:

Trademarks X X-MEN and Device do not meet the standards of protection due to the resemblance to the names of characters and X-Men images used in comic books and feature films, and to the famous trademark &quot;X-Men &rdquo; of MCC. IHGC registers and uses the trademark X X-MEN and Device in order to take advantage of the popularity of MCC&#39;s characters, images and trademark &quot;X-Men&quot;, causing confusion for consumers.

The Trademark &ldquo;X X-MEN and Device&rdquo; &nbsp;of&nbsp;IHGC

After the review process, the NOIP issued Official Letter No. 1345/SHTT-TTKN dated August 17, 2007 and Decision No. 93/QD-SHTT dated January 22, 2008, Ministry of Science and Technology there is Decision No. 1428/QD-BKHCN dated 11/7/2008 not accepting the request to cancel the validity of Certificate No. 63481 for the following reasons:

According to the provisions of the Civil Code 1995, the Government&#39;s Decree 63/CP of October 24, 1996 was amended and supplemented according to the Decree No. 06/2001/ND-CP of February 1, 2001 and other relevant laws. the guiding documents, as well as Official Letter No. 454/BQTG-BQ dated November 1, 2006 of the Copyright Office, the names of characters in the work are not protected, so it is impossible to make excuses because of the same names as X-MEN to refuse to grant protection for trademark X X-MEN and Fig. The trademark &quot;X X-MEN and Device&quot; of the certificate of registration No. 63481 include the capital &quot;X-MEN&quot; and the stylized &quot;X&quot; placed in a circle that is not identical or similar to the image of the X-Men character, in the works of the MCC. The trademark &ldquo;X X-MEN and Device&quot; is not works, so the regulations on copyright infringement cannot be applied to derivative works to consider and evaluate the protection of trademarks.

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Disagreeing with the above decisions, MCC filed a lawsuit against the National Office of Intellectual Property for the issuance of Decision No. A05811/QD-DK dated June 8, 2005 granting Certificate of Registration No. 63481 to protect trademark X X-MEN and Device for IHGC. MCC&rsquo;s petition No. 08/2010/TLST-HC dated October 8, 2010 was accepted by the Hanoi People&#39;s Court.

MCC argues that the issuance of Decision No. A05811/QD-DK dated June 8, 2005 protecting trademark &ldquo;X X-MEN and Device&rdquo; for IHGC by the National Office of Intellectual Property does not meet protection standards specified in Article 6.l.e.h, 2.d Decree 63/CP dated October 24, 1996 of the Government. Specifically:

&quot;A sign used as a trademark shall be recognized as being distinctive according to Article 785 of the Civil Code if it fully meets the following conditions:&hellip;

e) Not identical or confusingly similar to another person&#39;s trademark that is considered well-known (according to Article 6bis of the Paris Convention) or to another person&#39;s trademark that has been used and widely acknowledged;

h) Do not coincide with an image or character that is already under the copyright of another person, unless permitted by that person.&rdquo;

2. The following signs are not protected by the State as trademarks:&hellip;

d) Signs that mislead, confuse or deceive consumers about the origin, features, uses, quality and value of goods or services;&rdquo;

Proving the famous of the &quot;X-Men&quot; trademark, MCC provides the &quot;X-Men&quot; protection certificate and copyright registration certificate in 52 countries around the world and in Vietnam.

On March 29, 2013, the People&#39;s Court of Hanoi issued the Judgment No. 03/2013/HCST dated March 29, 2013 with the content:

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In fact, the Marvel company has not proven its trademark to be a well-known trademark. Vietnamese consumers also do not know any products of Marvel Company in the group of &quot;applied cosmetics&quot; products, so it cannot cause confusion. Therefore, there is a basis to conclude that IHGC does not take advantage of the prestige and exploit the copyright of MCC.

At the time when the IHGC filed an application for trademark &ldquo;X X-MEN and Device&rdquo; on June 27, 2003, MCC had not yet registered the trademark &quot;X-Men&quot; in Vietnam for products of class 03 (applied cosmetic chemistry group). In the US, where MCC have Head Office, MCC has not been certified to own the trademark &quot;X-Men&quot; with products in class 03 (according to the database of the US Patent and Trademark Office). at www.uspto.gov). Therefore, IHGC has the right to register the trademark &ldquo;X X-MEN and Device&rdquo; for products in class 3.

Therefore, MCC&#39;s petition to sue is unfounded.

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