1. Overview of the Dispute
In 2023, Bình Minh Plastic Joint Stock Company (BMP), the owner of the well-known “BÌNH MINH” trademark registered for PVC pipe products, initiated a lawsuit against Bình Minh Việt Plastic Joint Stock Company (BMV). BMP alleged that BMV had committed acts of trademark infringement by using the trade names “BÌNH MINH VIỆT” and “NHỰA BÌNH MINH VIỆT” on their products, thereby creating a likelihood of confusion among consumers.
The dispute centered around whether BMV’s usage constituted infringement of BMP’s registered trademark rights under Vietnamese Intellectual Property Law.
2. Legal Claims by Bình Minh Plastic (Plaintiff)
BMP submitted the following key arguments:
- Trademark Rights: BMP is the exclusive owner of the registered “BÌNH MINH” trademark, protected under Vietnam’s Intellectual Property Law.
- Likelihood of Confusion: BMV’s use of “BÌNH MINH VIỆT” and related variations on similar PVC products was likely to cause confusion among relevant consumers regarding the origin of goods.
- Expert Assessment: An expert opinion issued by the Intellectual Property Science Institute concluded that BMV’s usage constituted infringement of BMP’s industrial property rights.
- Request for Remedies:
- Termination of all infringing activities by BMV.
- Removal of infringing signs from products, means of business, and business documents.
- Public apology published in three consecutive issues of a widely circulated newspaper.
- Compensation for damages caused by the infringement.
In court, the lawyer defending the plaintiff, Bình Minh Plastic Company, argued that Bình Minh Việt Plastic Company intentionally violated the trademark by registering a red logo, but when applying the logo to their products, they used the color green instead – Image: TUYẾT MAI.
3. Defense by Bình Minh Việt Plastic (Defendant)
BMV counter-argued that:
- Distinctiveness: Their company name and the use of “VIỆT” distinguished their mark sufficiently from BMP’s “BÌNH MINH.”
- Good Faith Use: Their usage was in good faith and did not intend to exploit the reputation of BMP’s brand.
- No Confusion: They asserted that there was no actual confusion among consumers in the marketplace.
- Challenge to Expert Opinion: BMV contested the binding value of the expert assessment, arguing it was not conclusive evidence of infringement.
4. First-Instance Court’s Decision
The People’s Court of Ho Chi Minh City issued a judgment with the following key findings:
- Recognition of BMP’s Rights: The court affirmed that BMP’s “BÌNH MINH” trademark enjoys full legal protection.
- Assessment of Infringement: Despite the expert assessment indicating infringement, the court considered such expert opinions as reference material only, in accordance with Vietnamese procedural law, which stipulates that expert conclusions are not binding upon the court.
- Determination: The court concluded that the phrase “NHỰA BÌNH MINH VIỆT” incorporated additional distinguishing elements (“VIỆT”) and, therefore, did not constitute direct infringement of BMP’s registered trademark.
- Outcome: BMP’s claims were dismissed at first instance.
5. Appellate Proceedings
Both parties appealed the first-instance judgment:
- Plaintiff’s Appeal: BMP argued that the first-instance court had failed to properly evaluate the expert opinion and the administrative sanctions previously imposed on BMV by the Long An Market Management Department for selling infringing products.
- Defendant’s Appeal: BMV sought confirmation from the appellate court that their trade name and marks did not infringe upon BMP’s trademark rights.
The Prosecutor’s Office, participating in the appellate proceedings, supported BMP’s appeal, emphasizing:
- The expert assessment confirmed the likelihood of confusion and infringement.
- Administrative enforcement actions against BMV constituted supporting evidence of infringement.
- Ignoring such evidence would result in a failure to adequately protect lawful intellectual property rights under Vietnamese law.
6. Pending Outcome
After hearing the appeals, the High People’s Court of Ho Chi Minh City announced that deliberations would continue, with the appellate judgment scheduled to be delivered on April 25, 2025.
7. Legal Implications and Key Takeaways
- Evidentiary Value of Expert Assessments: Under Vietnamese law, expert opinions in intellectual property disputes serve as advisory materials and are not automatically binding on the courts.
- Distinctiveness in Trade Names: The addition of geographical or other distinguishing elements may, in some circumstances, be sufficient to avoid a finding of trademark infringement, depending on the degree of similarity and likelihood of confusion.
- Administrative Sanctions as Evidence: Official administrative findings and sanctions against infringing parties can serve as persuasive evidence of trademark infringement in civil proceedings.
- Burden of Proof: Plaintiffs must present clear and convincing evidence of actual consumer confusion and/or unfair competition to successfully assert claims of trademark infringement.
Conclusion:
This case highlights the complexities surrounding trademark enforcement in Vietnam, particularly where competing marks share common elements but differ slightly. It underscores the necessity for trademark owners to not only rely on expert assessments but to build a robust evidentiary record demonstrating actual or likely confusion and infringement.
References
- Tuổi Trẻ Online. “Vụ tranh chấp nhãn hiệu Nhựa Bình Minh: Giám định nói xâm phạm, tòa nói kết luận chỉ để tham khảo.” (Published on April 22, 2025). Link to original article.
- Vietnamese Intellectual Property Law 2005 (amended 2009, 2019, 2022).
- Civil Procedure Code of Vietnam 2015.
- Expert Assessment Report issued by the Intellectual Property Science Institute (cited in court records).
- Administrative penalty records from Long An Province Market Management Department (cited in court proceedings).