China’s Ministry of Commerce has announced it is dismissing its pending litigation involving a dispute over the Buon Ma Thuot coffee trademark, effective on March 1. The dismissal is an acknowledgment that a French company’s previously registered trademark in 1997 trumps a later filing in 2011 by China’s Guangzhou Buon Ma Thuot Coffee Co Ltd. Legal experts opine that the pivotal issue in the case is that the previously registered French trademark – was widely known by the Chinese public – and therefore any subsequent trademark filing is a clear violation of existing pertinent international law.
Experts also contend that this precedent by China clears the pathway for Vietnam to prevail in patent infringement claims to the Buon Me Thuot coffee trademark against China under the same legal theory.
Following are excerpts from an interview given to a VOV reporter by Dr Trinh Duc Minh Vice Chairman of the Buon Ma Thuot Coffee Association in the central highlands province of Dak Lak on the issue:
Reporter: What have the Buon Ma Thuot Coffee Association and local authorities done to demand China abolish its claim to this trademark?
Mr Minh: This is the first time the association and local administration officials have encountered an incident involving the misappropriation of a renowned international trademark by a foreign business.
After learning of the trademark infringement, the association immediately authorized its lawyers to pursue all legal remedies available, which included filing a claim with China.
We have sufficient evidence proving beyond any reasonable doubt that the Buon Ma Thuot coffee trademark belongs to Vietnam and is a fact well known both in Vietnam and the world.
On March 13 2012, we officially received feedback from the Chinese side that they accepted our complaint for the abolishment of the trademark and announced their decision to reject the trademark registered in China.
The decision became effective throughout China one month after the announcement was made.
Reporter: Through the incident, what lessons has the association learnt about registering for monopoly protection of the Buon Ma Thuot trademark?
Mr Minh: This is considered a major learning experience. We are registered in many major foreign markets.
Not only regarding this trademark but many other Vietnamese agricultural products face the same situation due to rather complex registration processes and huge costly expenses.
In addition, there is no support program to protect our trademarks for farm produce in overseas markets and prevent foreign businesses from violating them.
Reporter: The association has applied for registered monopoly protection in 15 countries and territories. What are advantages and disadvantages in the registration?
Mr Minh: The association has registered for geographical indication for Buon Ma Thuot abroad in different ways depending on legal regulations in each nation regarding certified trademark, name of product origin and name of geographical indication.
All these steps are undertaken by lawyers’ offices abroad as well as in Vietnam.
After more than one year, four countries—Spain, the Netherlands, Luxemburg, and Belgium- agreed to protect the Buon Ma Thuot coffee trademark while some others refused and asked Vietnam to replenish documents.
Lack of good experts, expenses and experience in promoting trademarks and limited legal knowledge about the registration process pose numerous difficulties for the association.
We hope that the business community will assist and support the association address the prolonged and complex legal issues for ensuring long-term interests, protecting coffee producers and promoting the development of local intellectual assets.