Successful rebuttal against a third party’s opposition to the trademark application for “CHỌN’S & device” claiming applicant’s bad faith

Recently, D&N International (“DNI”), has assisted client to successfully defend his trademark application from a third party’s opposition.

Facts

Mr. Tran Quoc Hung (“Mr. Hung”) – the owner of the mark (hereinafter referred to as “CHỌN’S & device” or “the Mark”) – filed an application to register the same as a trademark for services in classes 35, 36, 39, 40, 42 with the Vietnam Intellectual Property Office (the “VNIPO”). However, the subject trademark application was then opposed by Auction House Joint Stock Company (hereinafter referred to as “Auction House” or “the company”) on the ground that Mr. Hung filed the application in bad faith.

Specifically, according to Auction House’s claim, Mr. Hung, who was employed to work for Auction House as the company’s CEO, filed for registration of the Mark in his own name without the company’s authorization. In addition, “CHỌN’S & device” had long been recognized among its customers and across the realm of art lovers as the company’s brand identity through its domestic and international business activities as well as media coverage. In view thereof, Auction House accuse Mr. Hung of misappropriating the company’s rights over the Mark and claimed that the filing for registration of the Mark in his own name was a severe violation of the provisions as per Articles 87.2, 74, 112 and 130 of the Intellectual Property Law of Vietnam.

As the true owner and author of the work of art and trademark “CHỌN’S & device”, Mr. Hung was extremely shocked and irritated by such Auction House’s opposition. In his efforts to defend his legitimate rights and interests over the Mark which he himself designed and created, Mr. Hung came to DNI seeking our legal assistance. Upon our thorough discussions with Mr. Hung as well as study of evidence of trademark ownership he provided, we believe that Mr. Hung is the true owner of the Mark. At the same time, we found that the opponent’s allegation of Mr. Hung’s bad faith is a complete slander because it was never supported by any legitimate proof. Thus, we consulted Mr. Hung on collecting appropriate evidence proving his true ownership of the Mark and represented him in filing with the VNIPO a counter-claim using undeniable evidence to rebut the Auction House’s opposition.

After a thorough examination of the case, the VNIPO accepted our counter-claim and, as a result, dismissed Auction House’s opposition.

Our comments

Opposition to a trademark application or cancellation of a trademark registration on the grounds that the trademark has been filed/registered in bad faith are popular proceedings during the establishment and enforcement of IP rights in Vietnam.

However, unlike almost other common cases where the opposed mark is filed in bad faith, the opponent in this particular case was itself dishonest for claiming its ownership over the disputed mark although it was clearly aware that the Mark had been created by Mr. Hung with his own time, labour and expenses, and widely used by this artist long before the opponent came into being.

The abovementioned case is also a warning to organizations/individuals to be attentive to their IP assets. In detail, as soon as the relevant IP asset is created, it should be applied for registration to establish the legitimate ownership where required by laws. At the same time, in any labour contracts or business contracts in relation to such IP asset, specific provisions on intellectual property rights, such as the authorship, ownership over the IP asset should be included so as to minimize or eliminate the future risk of disputes. Also, all the relevant materials should be well documented for possible necessary use.