“Binh Minh” is not confusingly similar to “Binh Minh Viet”?
On April 25, 2025, the Ho Chi Minh City (“HCMC”) High People’s Court issued a judgment rejecting the appeal filed by Binh Minh Joint Stock Company against the first instance judgment dated July 12, 2024 of the HCMC People’s Court in a trademark infringement lawsuit against Binh Minh Viet Joint Stock Company.
This is one of the very controversial judgments, especially regarding the question of assessment of trademark likelihood of confusion, when the courts at both the first instance and appellate levels denied experts’ opinions, including assessment conclusions by Vietnam IP Research Institute (“VIPRI”) under the Ministry of Science and Technology (“MoST”) and administrative IP enforcement competent authorities such as the MoST Inspectorate and the Market Management Agency (“MMA”).
Parties
– Binh Minh Plastic Joint Stock Company (hereinafter referred to as “Binh Minh” or “Plaintiff”), established on January 2, 2004, formerly a state-owned enterprise operating in the market since 1977, is one of the leading state-owned enterprises in the plastic materials manufacturing industry in Vietnam, owner of the trademarks “BINH MINH”, “NHUA BINH MINH”, “BM & Hinh” and a number of associated trademarks that have been registered for plastic pipe products.
– Binh Minh Viet Plastic Joint Stock Company (hereinafter referred to as “Binh Minh Viet” or “Defendant”), established on November 23, 2022, operating in many fields, including manufacture of PVC plastic pipes. The company has filed an application for registration of the trademark “BVM, Device” at the VNIPO (which has been accepted as to form, and now under substantive examination). In addition, the Company was granted a Copyright Registration Certificate for the logo “BVM PLASTIC BINH MINH VIET” as an applied art work.
Facts:
In early 2023, the Plaintiff discovered that a store in Long An province was selling PVC pipes manufactured by the Defendant bearing the sign “BINH MINH VIET”, and requested the VIPRI to assess and provide opinion on trademark infringement.
On March 28, 2023, the VIPRI issued Conclusion No. NH249-23YC/KLGD affirming that: (i) The sign “NHUA BINH MINH VIET” as printed on the Defendant’s PVC pipes is an element infringing the Plaintiff’s protected trademarks; and (ii) The sign “BINH MINH VIET” and the logo “BVM, Device” of the Defendant are also elements infringing the Plaintiff’s protected trademarks.
On July 5, 2023, the Plaintiff sent a Cease & Desist letter to the Defendant via its trademark attorney requesting it to cease the infringement, but to no avail.
On August 28, 2023, at the Plaintiff’s request, MMA Team No. 1 of Long An Province conducted a raid at Quoc Tai Construction Materials – Electricity and Water Company Limited (in Duc Hoa District, Long An Province), temporarily seized 43 plastic pipes bearing the sign “NHUA BINH MINH VIET” manufactured by the Defendant. The Long An MMA requested the VIPRI to conduct a trademark infringement assessment with regards to these pipes.
On August 31, 2023, the VIPRI issued Conclusion No. NH737-23TC affirming that the sign “NHUA BINH MINH VIET” on the Defendant’s plastic pipes is an element infringing the Plaintiff’s protected trademarks.
On October 2, 2023, also at the Plaintiff’s request, the VIPRI once again issued Conclusions No. NH826-23YC/KLGD and NH827-23YC/KLGD affirming that the sign “NHUA BINH MINH VIET” and the logo “BVM, Device” used by the Defendant in its business name, and on its PVC plastic pipe products are elements infringing the Plaintiff’s trademarks.
On October 12, 2023, the Plaintiff filed a lawsuit at the HCMC People’s Court to enforce its intellectual property rights, but later withdrew the claim that the Defendant changes its business name containing the element “Binh Minh”, only retaining three claims that the Defendant: (i) removes all “Binh Minh” signs from its products and business means; (ii) stops producing and trading products bearing infringing signs; and (iii) publishes public apology and correction.
On December 28, 2023, at the Plaintiff’s request, the MoST Inspectors visited and had a working session at Defendant’s headquarters as part of administrative procedure against the act of registering a business name confusingly similar with protected trademarks.
On March 8, 2024, the MoST Inspectors issued Decision No. 102/Ttra-P3 concluding that the Defendant’s use of the element “Binh Minh” in its name “Binh Minh Viet Plastic Joint Stock Company”, on its signboard, and business means confusingly similar with the Plaintiff’s protected trademark “BINH MINH PLASTIC PIPE” is an act of trademark infringement. On that basis, on June 10, 2024, HCMC Department of Planning and Investment issued Notice No. 5494/TB-DKKD requesting the Defendant to change its company name.
On March 9, 2024, the Defendant in the above case filed a counter-suit against the Plaintiff at HCMC People’s Court, claiming that it did not infringe the trademark, but was unfairly prevented from operating in normal conditions by the other party, and claimed that the other party stop all such acts and publicly apologize. This action was subsequently merged into the above trademark infringement lawsuit and is considered a counterclaim by the Defendant in the lawsuit.
On July 12, 2024, the HCMC People’s Court issued judgment No. 144/2024/KDTM-ST rejecting all of the three above-mentioned claims filed by the Plaintiff, and the Defendant’s counterclaims as well. This judgment was appealed by both the Plaintiff and the Defendant.
On August 8, 2024, the VNIPO sent Official Letter No. 77499/SHTT-NH to the Plaintiff’s attorney, thereby determining: “The Defendant’s trademark as filed for registration is not confusingly similar in structure or manner of expression with the Plaintiff’s trademarks under Certificates No. 2187 dated February 11, 1991, No. 73780 dated July 24, 2006 and No. 180399 dated March 2, 2012“.
On April 25, 2025, the HCMC High People’s Court issued a judgment rejecting the Plaintiff’s appeal, upholding the above first instance judgment.
Comments
1. Experts’ opinion issued by the VIPRI is only for reference, not evidence
Undoubtedly, HCMC People’s Court’s statement that experts’ opinion issued by the VIPRI is only for reference and not evidence to resolve the case has come as a shock to IP specialists and business community who for long time used to believe that the VIPRI’s opinion has high legal value, because based on scientific and objective assessment criteria, and can therefore be easily accepted by administrative enforcement agencies as well as the courts.
In reality, such a view may pose important risks for IP right owner in infringement lawsuits because it may lead to the owner’s over-optimism about chance of success, thus not sufficiently prepared with convincing arguments and evidences in case the court decides to make its own assessment, different from experts’ opinion.
In this case, the Plaintiff had obtained an experts’ opinion before initiating the lawsuit and believed that the experts’ opinion was evidence to resolve the case, so it did not request a re-assessment during the court proceeding. Against all odds, the Defendant succeeded in casting doubt on the legal value of the VIPRI’s opinion by convincing the Trial Panel that the samples used for infringement assessment were only products that the Defendant had initially produced for market research purpose, and had immediately recalled thereafter. On this basis, the Court of Appeal agreed with the first instance judgment that the VIPRI opinion was not sufficient as evidence to resolve the case because “one of the sources used to conduct the assessment was not consistent with the current trademark”.
2. Is “Binh Minh Viet” confusingly similar to “Binh Minh”?
Another equally shocking finding for IP specialists and the business community is that the court only relied on an overall comparison of the form how information is presented on the products to come to the conclusion that “the logos and labels printed on the plastic pipes of the Plaintiff and the Defendant are completely different, not identical”, without determining which elements of those logos and labels can be considered as distinctive (protected) and which ones descriptive (not protected).
When comparing the two above products, those with IP knowledge can immediately see that the labels printed on the plastic pipes above include many signs that are not capable of distinguishing because they are simply information about the legal form, address, and detailed description of the goods; only the logos and signs “BINH MINH VIET” and “BINH MINH” are elements capable of distinguishing the goods of the two parties.
In this case, the court separately compared the logos of the two parties:
but neglected to compare separately the distinctive elements “BÌNH MINH VIỆT” and “BÌNH MINH” printed on the plastic pipes, making the court’s conclusion that “the logos and lables printed on the plastic tube are completely different, not identical” unsatisfactory and unconvincing.
It is difficult to know why the court neglected to compare separately the above-mentioned distinctive elements, but according to finding number [7] of the appellate judgment, it can be implicitly understood that the court believes that the element “BÌNH MINH VIỆT” is only a part of the Defendant’s company name, for which the Plaintiff has withdrawn the claim to change, and the Court of First Instance has terminated to handle this claim. It seems that the Plaintiff’s withdrawal of this claim (to handle it separately by administrative procedure) is an unwise move, weakening its arguments on likelihood of confusion.
3. Unfair competition – an important aspect overlooked
This is a classic case of IP related unfair competition. Unfortunately, this important aspect was overlooked and not brought to and considered by the court. The failure to cite Article 130 of the IP Law on “unfair competition” is a major omission, contributing significantly to the failure of the Plaintiff to prove that Binh Minh Viet Company infringed its trademarks.
It should be reiterated that IP rights are established to protect the owner, who has spent effort and money to create IP assets. IP assets can be creations (such as inventions, literary and artistic works etc.), but can also be distinctive signs (such as trademarks, trade names, etc.). The important characteristic of such IP assets is that they have commercial value, often expressed by the reputation and prestige of the brand in the market. The use of a trade indications by a third party that causes confusion about the business entity and the origin of the goods in order to take advantage of that reputation and prestige for personal gain is an illegal act under the IP Law and the Competition Law.
In this lawsuit, the Plaintiff is a long-standing company (nearly 50 years). Through the registration and widespread and continuous use over a long period of time of the trade name “Binh Minh”, as well as the trademarks “BINH MINH”, “BM, Device” and other associated trademarks, the brand BINH MINH has established a significant reputation and commercial prestige in the market.
The fact that a newly established company uses the Plaintiff’s long-standing reputable brand name as the main component of its company name to operate in the same field, and at the same time designs a logo that looks similar to the Plaintiff’s protected brand name for the same type of product, are typical signs of unfair competition under Article 130 of the IP Law and Article 45 of the Competition Law.
Belatedly, the Plaintiff’s attorney mentioned the Defendant’s unfair competition during the hearing before the appellate court, but it was not convincing enough to the appellate Trial Panel.
4.“Unexpected benefits” of obtaining multiple IP registration certificates
The “Binh Minh” trademark lawsuit shows that the Defendant is a newly established company (in 2022) but has an “effective” strategy to “defeat the giant” Binh Minh Company, through a sophisticated strategy to gain the right to use the distinctive element of a long-standing prestigious brand.
Because they operate in the same field (manufacturing plastic pipes), it is very difficult (if not impossible) for the Defendant to register a trademark with the element “BÌNH MINH” for the same type of product, because the trademark registration procedure includes a substantive examination step that requires immediate comparison to ensure that the mark to be registered is not identical to or confusingly similar with a previously registered trademark. To obtain trademark registration, the Defendant can only file an application for a trademark that is not identical/confusingly similar to registered trademarks of the Plaintiff.
In fact, the Defendant filed an application for the trademark “BVM, Device”. Although its visual aspect and presentation are some-how similar to the trademark “BM, Device” previously registered by the Plaintiff, this trademark does not include the distinctive element “BÌNH MINH”, so it is difficult to consider it as confusingly similar to the Plaintiff’s registered trademarks.
In order to use the element “Binh Minh” on its products, the Defendant decided to use the element “Binh Minh Viet” as part of its company name, and easily registered the business under this name, because unlike the trademark registration procedure, the business registration procedure does not include the step of assessing the distinctiveness of the name to be registered.
Similarly, the Defendant also showed its acumen by obtaining a copyright certificate for the logo “BVM NHUA BINH MINH VIET”. After registration, the Defendant claimed that it was completely legal to write the business name and logo on the products it manufactured.
In fact, the Defendant did not use the trademark “BVM, Device” in red as in the registration application, but used blue, similar to the color of the trademark “BM, Device” of the Plaintiff. Although the Defendant’s use of a blue label (instead of a red one) increases the likelihood of confusion with the Plaintiff’s trademark, since it does not include the Plaintiff’s main distinguishing sign “Binh Minh”, it is still difficult to confirm that they are confusingly similar if only comparing the two trademarks.
Although according to current practice in assessing the likelihood confusion of trademarks, printing the sign “BÌNH MINH VIỆT” on plastic pipe products must be considered an act of infringement of Binh Minh Company’s protected trademark, Binh Minh Viet Company’s strategy of registering and obtaining simultaneously different IP certificates for many different variations has proven to be effective, creating conditions for this company to win at both levels of trial in the context of limited understanding of IP in Vietnam.