A US company taking Ministry of Science & Technology to Hanoi People’s Court

  Believing that Inspectorate of Ministry of   Science & Technology (IMOST) has had lots of shortcomings when resolving the case, Malco Products, Inc, in the last resort, initiated a lawsuit against the IMOST’s administrative decision before Hanoi People’s Court.

   Due to the conflicting views of the State agencies, a trademark dispute between a US enterprise, Malco Products, Inc and a Vietnamese enterprise, Hiep Tien Long Lubricants and Chemical Co., Ltd. has prolonged for 7 years without endings.

 The petitioner voiced

The statement of claims submitted to Hanoi People’s Court by Malco Products, Inc (USA) covered the following content:

Company Malco Products, Inc is established and operating under the laws of the state of Ohio, United States of America with the line of business including manufacture of lubricant additives for automobiles and chemicals for automotive components. In 1993, Malco Products, Inc. acquired PPI and PPI, then, proceeded with assignment of its trademarks, including the mark “U.S, device” to  Malco Products, Inc.

From 1995-2004, Vinh Hang Trading Co., Ltd. (“Vinh Hang”) was the distributor of lubricant additives under the mark “U.S, device” manufactured by PPI in the Vietnamese market. After 2004, due to problems in trade relations, PPI terminated its distribution relation with Vinh Hang. Right after that, a new enterprise which named “Hiep Tien Long Lubricants and Chemical Co., Ltd.” was established. Hiep Tien Long Lubricants and Chemical Co., Ltd. soon registered the mark “P.T., device” of which the device of the said mark is almost identical to the mark “U.S, device” in the name of Malco Products, Inc. The difference of the marks in questions only lies in the verbal element “P.T” in the mark “P.T, device” and “U.S” in the mark “U.S, device”.

According to Malco Products, Inc., the founding members of Vinh Hang have close relation with those in Hiep Tien Long Lubricants and Chemical Co., Ltd. Having detected the aforesaid fact, Malco Products, Inc. filed a cancellation request with the National Office of Intellectual Property of Vietnam (“NOIP”) against Trademark Registration No. 72858 for “P.T, device” in the name of Hiep Tien Long Lubricants and Chemical Co., Ltd.

Upon examination of the cancellation request, the NOIP issued Cancellation Decision No. 134 on 21 January 2009, cancelling Trademark Registration No. 72858 for the mark “P.T.device” in the name of Hiep Tien Long Lubricants and Chemical Co., Ltd. The reasons for cancellation are based on the fact that Vinh Hang (the forerunner of Hiep Tien Long Lubricants and Chemical Co., Ltd.) has ever been the importer and distributor of the lubricants under the mark “U.S, device” produced by PPI. That Hiep Tien Long Lubricants and Chemical Co., Ltd. filed the application in Vietnam for registration of the mark “P.T, device” is intentional in copying the mark “U.S, device” in the whole form for the same type of goods manufactured by PPI. Such act violated Article 16.2.c of Decree No. 63/CP dated 24 October 1996 which providing details in industrial property.

As Hiep Tien Long Lubricants and Chemical Co., Ltd. appealed the NOIP’s Cancellation Decision No. 134, the NOIP issued its second Decision No. 1178 on the appeal settlement. Accordingly, the NOIP rejected the appeal filed by Hiep Tien Long Lubricants and Chemical Co., Ltd. and withstood its Cancellation Decision No. 134.

Debatable Decision

Upon receipt of the NOIP’s Cancellation Decision No. 1178, Hiep Tien Long Lubricants and Chemical Co., Ltd. continued to file the second appeal to Ministry of Science & Technology (the MOST). However, it is the conflicting viewpoint between the MOST and NOIP that an inversive Decision has been issued.

In detail, on 18 October 2013, the MOST issued Decision No. 3185 which settled the second appeal filed by Hiep Tien Long Lubricants and Chemical Co., Ltd. against the NOIP’s Decision on cancellation of Trademark Registration No. 72858. Accordingly, the MOST cancelled the NOIP’s Decision No. 134 dated 21 October 2009 and the NOIP’s Decision No. 1178 dated 08 June 2011.

In this present case, instead of guiding the NOIP to revise or cancel Decision No. 134 in accordance with Article 45.2(g) of Law on Complaints and Denunciations in 1998, revised in 2005, the MOST directly cancelled the NOIP’s Decision. Besides, during issuance of Decision No. 3185, the MOST has not invited the representative of Malco Products, Inc., the party with related rights and interests and has exceeded the prescribed the time for settlement of the appeal under the laws provided in Article 9, Decree No. 136/2006/ND-CP on responsibility on direct talks and Article 43, Law on Complaints and Denunciations in 1998, revised in 2005, Thus, Malco Products, Inc. has not let itself be convinced and initiated an administrative lawsuit against the MOST before Hanoi People’s Court.

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