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The most complicated, prolonged and intense lawsuit

in the history of intellectual property rights-related proceedings in Vietnam

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Since 2010. Ich Nhan Pharmaceutical Company Limited (Ich Nhan Company) distributes in the market health care and beauty products for women under the Bao Xuan brand that has been granted by the National Office of Intellectual Property (IP). Trademark Registration Certificate No. 140154 filed on January 28, 2008, and Trademark Registration Certificate No. 172843 filed on March 5, 2010.

Two years later, when Bao Xuan products have affirmed their prestige, established a foothold in the market and are trusted by consumers, Ngan Anh Cosmetics Manufacturing Facility (Ngan Anh Facility), headquarters at Dong Thuan Hamlet, Dong Thanh Commune, Chau Thanh District, Hau Giang Province continuously launched products that were allegedly infringing IP rights for Bao Xuan&#39;s trademark.

Ich Nhan Company repeatedly warned about the infringement of IP rights for Bao Xuan trademark, but Ngan Anh Faccilty did not accept the warning, but continuously made arguments to justify its behavior, causing the case to drag on. lengthy and increasingly complex.

Firstly, Ngan Anh Facility argured that their products bearing the Bao Xinh brand are also protected by the National Office of Intellectual Property under Trademark Registration Certificate No. 231484, secondly, their products are cosmetics. belongs to group 03, so it does not violate the trademark Bao Xuan of Ich Nhan Company is a health food in group 5. To make the argument more solid, on 27/07/2011 Ngan Anh Facility filed a trademark registration application &quot;Bao Xuan&quot; for its cosmetic products. However, this application was rejected by the National Office of Intellectual Property Decision No. 11692/QD-SHTT dated February 26, 2015. The legal battle became fierce when Ngan Anh Facility filed an application with the People&#39;s Court of Hau Giang province to sue the National Office of Intellectual Property for refusing to grant protection for its Bao Xuan trademark.

The argument of Ngan Anh Facility to sue is that its trademark application &quot;Bao Xuan&quot; for cosmetic products in the class 3 is not related to the trademark &quot;Bao Xuan&quot; used for health food of Ich Nhan Company belongs to the class 5.

At the first-instance trial of the People&#39;s Court of Hau Giang province on September 22, 2015, although the NOIP representative still maintained the view in Decision No. 11692/QD-SHTT for the following reasons: Pursuant to Points e and g, Clause 2 , Article 74 of the IP Law, Ngan Anh Facility&#39;s application for a trademark &quot;Bao Xuan&quot; is similar to the trademark &quot;Bao Xuan&quot; of a company that has been registered as a trademark from 2008 to 2010 and has been registered. Trademark protection from June 1, 2010 to March 5, 2020 is not possible, but the Court ruled that Ngan Anh Facility won the case and issued a judgment No. 13/2015/HC-ST on September 22 /2015 rescinded Decision No. 11692/QD-SHTT because: &quot;The deputy director of the National Office of Intellectual Property signed on behalf of the Director as an individual competent to issue the decision, which is wrong&quot;.

In addition, te Trial panel concluded that the registered product of Ngan Anh Facility is a cosmetic that does not overlap with the products of the protected trademark, which are pharmaceuticals, traditional medicines, nutritional foods for medical use, and how to use them. The uses of the two products are also different.

Disagreeing with the decision of the People&#39;s Court of Hau Giang province, on October 5, 2015, the People&#39;s Procuracy of Hau Giang province issued Decision No. 69/QDKN-P10 to protest against the entire judgment No. 13/2015/ HC-ST dated September 22, 2015 of the People&#39;s Court of Hau Giang province.

The protest asserts that the judgment of the People&#39;s Court of Hau Giang province annulling Decision No. 11692 of the National Office of Intellectual Property is not grounded enough, even in terms of the authority to issue the decision and to determine the object of the lawsuit.

The incident only ended when the High People&#39;s Court in Ho Chi Minh City. Ho Chi Minh issued an appellate judgment No. 10/2016/HC-PT on August 29, 2016 declaring &quot;not accepting the petition of the owner of Ngan Anh Facility requesting the cancellation of Decision 11692/QD-SHTT of the NOIP on refusal to grant a trade mark registration to application No. 4-2011-15391 of Ngan Anh Facility under name as Bao Xuan&rdquo;.

However, Ngan Anh Facility filed a lpetition to the People&#39;s Court of Hau Giang province to sue the Inspector of the Ministry of Science and Technology issuing the Sanctioning Decision No. 51/QD-XPHC dated June 10, 2016, against violating the intellectual property rights of the brand Bao Xuan of Ich Nhan Company. On July 5, 2017, the People&#39;s Court of Hau Giang province opened a first-instance hearing about the Ngan Anh Facility&#39;s lawsuit against the Inspector of the Ministry of Science and Technology. At the trial, the representative of Ngan Anh Facility argued that when the petition against the NOIP&#39;s Decision No. 11692/QD-SHTT was in the process of being adjudicated, the Inspector of the Ministry of Science and Technology issued a sanctioning decision against Ngan Anh Facility, It means&nbsp; as a violation of Clause 2, Article 28 of Decree 99/2013/ND-CP regualate that &quot;During the time the court is handling the case, the Ministry of Science and Technology is not allowed to issue any administrative handling decisions until the dispute settlement process of the Court has a final effective decision.&quot;

The Ngan Anh Faccilty also argued that because it was granted a trademark registration certificate by the NOIP No. 231484 dated September 16, 2014 as &quot;Bao Xinh&quot;, the use of the Bao Xinh (stylized) trademark is the scope of its rights to the mark.

Additon, The content of the lawsuit also states that Bao Xinh is a trademark of cosmetic products in the class 03, which is different from Bao Xuan which is a pharmaceutical and health food (the class 05), so Ngan Anh Faccilty does not violate the IP rights over Bao Xuan trade mark .

The Inspectorate of the Ministry of Science and Technology agrees that Ngan Anh Facility has the right to use the registered trademark (namely, the trademark &quot;Bao Xinh&quot; in lowercase font with the first letter &quot;B&quot; and &quot;X&quot; being Capitalization). However, on the skin cream products produced by Ngan Anh facility, the trademark &quot;Bao Xinh and Device &quot; has a stylized form that coincides with the expression of the trademark &quot;Bao Xuan and Device &quot; of Ich Nhan Company according to the trademark certificate No. 172843, 180951. Therefore, Ngan Anh Faccilty&#39;s use of the Bao Xinh trademark (stylized font) on skin cream products is an infringement of the rights to the protected Bao Xuan trademark of Ich Nhan Company.

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The trademark &quot;Bao Xinh and Device&quot; (right) has a stylized expression that coincides with the expression of the trademark &quot;Bao Xuan and Device&quot; (left) of Ich Nhan Company

With the same opinion as the Inspector of the Ministry of Science and Technology, the Institute of Intellectual Property - Ministry of Science and Technology has assessed NH084-13YC/KLGD on April 26, 2013 concluding: The trademark &quot;Bao Xuan&quot; is attached to the products &quot;Nourishing cream&quot; whiten skin - prevent acne, fade dark spots, reduce scars&quot;; &quot;Whitening cream to prevent acne, anti-pigmentation 3 in 1&quot;; 3 in 1 regenerative skin whitening cream; &quot;Sunscreen whitening cream, tighten pores&quot;; &quot;Whitening cream - against melasma, freckles, age spots&quot; of Ngan Anh Facility is an infringing factor (according to Article 11 of Decree 105/2006/ND-CP as amended and supplemented under Decree 119/ 2010/ND-CP) for the Bao Xuan trademark protected under the Trademark Registration Certificate No. 140154 of Ich Nhan Company.

Therefore, the Inspectorate of the Ministry of Science and Technology has enough grounds to determine that the act of using Bao Xinh trademark (in a stylized font) for cosmetic products (skin whitening cream) produced by Ngan Anh facility is a violation. Infringing upon the rights to Bao Xuan trademark of Ich Nhan Company is being protected.

The Inspectorate of the Ministry of Science and Technology insists that, when considering whether a product infringes IPR rights to another product or not, it must based on the possibility of &quot;similarity/relatedness&quot; as specified in: Section 39.9( b) Circular 01/2017/TT-BKHCN dated December 14, 2017 of the Ministry of Science and Technology guiding the implementation of Decree 103/2006/ND-CP dated September 22, 2006 as amended and supplemented according to Circular 13/ 2010/TT-BKHCN dated 30/07/2010 and Circular 18/2011/TT-BKHCN dated 22/07/2011; Article 2.23 of the Law on Food Safety; Article 2.1 Circular 06/2011/BYT&hellip;

The Inspectorate of the Ministry of Science and Technology affirmed that, according to the provisions of point c, clause 1, Article 129 of the IP Law, the act of using trademarks Bao Xuan and Bao Xinh by Ngan Anh Faccilty in this case is an infringement of industrial property rights. of Ich Nhan Company.

On this basis, the trial jury concluded that Ngan Anh Faccilty&#39;s behavior violated intellectual property rights, and at the same time rejected the Faccilty&#39;s petition to sue, upholding Decision No. 51/QD-XPHC of The Inspectorate of the Ministry of Science and Technology dated June 10, 2016 on the sanction against Ngan Anh Faccilty with the amount of 13.8 million VND.

The decision has put an end to the 4-year legal battle, not only protecting the legitimate rights of trademark owners but also affirming the fairness and wisdom of the management and enforcement agencies of Intellectual property rights

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