The trademark X-MEN is now officially property of International Consumer Products Co. Ltd. (ICP) since the time for Marvel Characters Inc. to lodge an appeal against the judgment of the Hanoi City People’s Court has run out.
ICP in June 2003 applied for registration of the trademark X-MEN for its cosmetic products. Two years later, the National Office of Intellectual Property of Vietnam (NOIP) granted the company a trademark registration certificate.
In August 2006, Marvel Characters Inc. proposed invalidation of such a certificate, accusing ICP of making the use of its famous X-men characters, causing confusion among consumers.
ICP is a producer of home care and personal care products in Vietnam, known for its men’s personal care brand X-MEN with the tagline “the real man”. Meanwhile, Marvel is a U.S. producer of cartoons, comics and video games, owner of several fictional characters including a team of mutant superheroes called X-Men.
NOIP rejected the proposal of Marvel Characters, saying the trademark X-MEN that ICP registered is written in capitalized letters with a stylized X placed in a circle, different from X-men of Marvel Characters.
Moreover, X-MEN is a trademark of a commodity, not of a publication. Therefore, the case could not be seen as a copyright infringement.
NOIP stated names of fictional characters are not protected by Vietnamese laws.
After much debate, Marvel Characters brought the case to court. The Hanoi City People’s Court handled this case.
It was reasoned that ICP sent its application for trademark registration to NOIP in 2003, when Marvel Characters had not registered for the trademark X-men in Vietnam.
Besides, as products of ICP and Marvel are different from each other and the Copyright Law of Vietnam does not protect names of fictional characters, it is not right to conclude that ICP makes use of the reputation and the copyright of Marvel.
Evidence provided by Marvel Characters was not powerful enough to prove its lawsuit against ICP justified. Therefore, the Hanoi City People’s Court this March cancelled the petition of Marvel Characters.
The time for Marvel Characters to lodge an appeal has run out now. Thus, the court’s judgment becomes effective and ICP still has its X-MEN as its property.
Several disputes over intellectual property have occurred in Vietnam recently.
Binh Minh Plastics Joint Stock Company earlier filed a lawsuit against Binh Minh Plastic Pipes Manufacturing, Service and Trading Co. Ltd. over the brand name Binh Minh. The case lasted for three years, with the plaintiff ending up the winner.
Vincom Joint Stock Company sued Vincon Real Estate and Financial Investment Company over its similar name to Vincom’s. Eventually, Vincon had to change its name to Vicoland in 2011.
However, an expert said many enterprises were not patient to pursue such cases and did not bring them to court.