The NOIP Recognises a Justifiable Reason for Genuine Use

MHC filed a cancellation action against the trademark VIFON ACECOOK & Fig. under Registration no. 62360, which was registered on April 29, 2005 in the name of Vietnam Acecook Co., on th

MHC filed a cancellation action against the trademark VIFON ACECOOK & Fig. under Registration no. 62360, which was registered on April 29, 2005 in the name of Vietnam Acecook Co., on the grounds of non-use.

On February 02, 2016, the National Office of Intellectual Property (‘NOIP’) issued its decision no. 384/QD-SHTT dated February 02, 2016 to reject the MHC’s cancellation request. MHC then appealed from the NOIP’s denial of the MHC’s cancellation request (Case KN4-2016-00345).  

In its observations, MCH claimed that the verbal elements ‘Vifon’ and ‘Acecook’ were two distinctive elements, apart from other non-distinctive terms, i.e. ‘delicious’, ‘instant noodle’. Thus, the trademark’s owner did not use one of the distinctive elements would result in an invalidation under Article 96.1d of the Intellectual Property Law.  

The substantive point of the case was that whether the trademark owner’s usage the verbal element ‘Vina Acecook’ instead of ‘Vifon Acecook‘ was considered as a trademark use as it is defined in the Law.

The NOIP agreed with Pham & Associates, the legal representative of Vietnam Acecook Co., that the usage of ‘Vina Acecook’ together with other verbal and figurative elements did not preclude genuine use. Because, ‘Vifon Acecook’ indicated name of the trademark owner only, and was presented independently of other elements. In addition, the trademark at issue was widely used and advertised for a long time. Hence, the minor changes in trademark format (i.e. ‘Vina Acecook’ instead of ‘Vifon Acecook‘) did not change the overall commercial impression.

On February 24, 2017, the NOIP rendered its decision to dismiss the MCH’s appeal.