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  • Cancellation Proceedings – Bad faith and Prior use

    On April 4, 2019, DAP-VINACHEM Company filed an application with the Vietnam Intellectual Property Office (IPO) to cancel the trademark DINH VU under Registration No. 261909 of Quang Binh Company for the following reasons:

    1. The trademark DINH VU is confusingly similar to the trademark “DAP Dinh Vu”, which has widely used by DAP-VINACHEM Company. The petitioner provided the following supporting documents.

                - Decision No. 626/QD-TTg dated July 29, 2002 of the Prime Minister approving the investment project to build a DAP fertilizer factory in Dinh Vu Economic Zone, Hai Phong City. This is the starting point for the formation of the brand "DAP Dinh Vu" and the products branded "DAP Dinh Vu".

                - A number of articles published on the online newspapers websites, such as Hai Phong newspaper, BAO MOI newspaper, Sai Gon Giai Phong online, the website of Vietnam Chemical Group. Most of the articles published information about the event that Vietnam's first DAP fertilizer product was successfully produced in 2009 at the Petitioner’s factory in Dinh Vu Economic Zone. Although there are a number of articles that do not accurately mention the mark "DAP Dinh Vu", however, the terms "DAP Dinh Vu factory", "DAP Dinh Vu", "DAP Dinh Vu price", etc. being mentioned on the newspapers are sufficient to help the readers recognize and distinguish the fertilizer products of DAP-VINACHEM company from the other manufacturers.  

                - The audited financial statements for 2011 and 2012 demonstrate huge revenue from the sale of fertilizer products bearing the trademark “DAP Dinh Vu”.

                - Contracts and other documents proving the extensive use of the trademark “DAP Dinh Vu”.

                - Promotional materials: video links promoting products bearing "DAP Dinh Vu" on YouTube page on 17/07/2012. This video is proof of how the trademark “DAP Dinh Vu” is displayed on the packaging of DAP fertilizer products.

    2. Quang Binh Company does not have rights to register the trademark "DINH VU", according to Article 87.2 of the Intellectual Property Law.

    INVENCO Intellectual Property Company, on behalf of Quang Binh Company, filed a counter-argument against the cancellation action, namely:

    - Decision No. 626/QD-TTg dated July 29, 2002 of the Prime Minister approving the investment project to build a DAP fertilizer factory in Dinh Vu Economic Zone, City. Hai Phong did not mention the fertilizer bearing trademark "DINH VU";

    - The evidence to prove that the trademark "DAP Dinh Vu" provided by DAP-VINACHEM company about the wide use of the trademark is not clear and convincing evidence. Because, the articles, financial statements, decisions and pictures showed that DAP-VINACHEM company used to use the sign of "DAP Dinh Vu" in parallel with the signs of "DAP", and "DAP VINACHEM" on their fertilizer products.

    DAP-VINACHEM company failed to provide evidence of advertising on television stations such as VTV, Can Tho, etc. while provided only a video on YouTube with a limited number of visitors. That is not persuasive evidence to convince the wide-use of trademark “DAP Dinh Vu”. Because, fertilizer users are mainly the farmers, who mostly do not approach ads via YouTube.

    The IPO, on April 29, 2022, agreed with INVENCO, and rejected the cancellation action, stating:

    There is not enough ground to believe that the trademark "DAP Dinh Vu" has been widely used by DAP-VINACHEM company prior to the filing date of the trademark application for trademark "DINH VU" of Quang Binh company.

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