Pycnogenol®: The fight against the risk of trademark becoming a generic name
Our Client, Horphag Research Management SA has the exclusive rights to market and sell Pycnogenol®, the original name of the French pine bark extract. Horphag’s Pycnogenol® is registered as trademark in Vietnam.
In early 2021, it detected that a Vietnamese company was using its registered trademark Pycnogenol® to indicate that one of its products, named A***** ginseng, contained the French pine bark extract. The Client asked our Firm to take charge of the case. Having thoroughly reviewed the case, we advised the Client to send a bi-language Cease & Desist Letter in which we clearly explained the bases of the Client’s rights under the Vietnamese laws and detailed liabilities of the infringer in case they failed to comply with our request.
After a while, we noted that the Vietnamese company had removed all Pycnogenol® references from their websites as well as a number of third parties’ websites and social media where they had advertised their product. However, we kept insisting on the Vietnamese company’s responsibility in diffusing the idea that Pycnogenol® is just a generic name, thus harming the Client’s legitimate rights.
Further to our follow-up letter urging them to obtain removal of all signs Pycnogenol used by a third party which have origin in their bad use of the Client’s trademark, we finally received a response, in which they promised that they would try to require third parties who copied their content to remove the infringing elements. We are now continuing to follow up the case until completely satisfying result.