Pham & Associates advised JPP successful defending against invalidation proceedings

On May 12, 2012, the legal representative of Compo GmbH & Co., ("Compo") filed an invalidation proceedings against trademark registration no. 25 690 “NOVATEC" of Japan Polypropylene Corporation ("JPP") on the grounds that the mark was not used for its registered products within 5 consecutive years before the date of request for invalidation.

On April 04, 2013, Pham & Associates provided the National Office of Intellectual Property (“NOIP”) with the evidences of using the trademark "NOVATEC" by a number of supporting documents such as bills of lading, invoices, purchasing contract... Particularly, on July 22, 2012, JPP through its distributor, Nihon Matai Co. (Japan), sold 01 containers containing 640 resin bags bearing the trademark "NOVATEC" to Matai Co., Ltd Viet Nam in Ho Chi Minh City.

On July 23, 2013, Compo opposed such evidences as follows:

- During 15 years from the date of registration, the owner of “NOVATEC” sold only the NOVATEC products on July 12, 2012. This was to prove that the trademark owner had no intention to use the mark in Vietnam actually. The above transaction was just a tactic to avoid potential legal consequences of failure to use a trademark in Vietnam.

- The importation of products bearing "NOVATEC" was a small volume and for purpose of internal using rather than putting into the market.

On November 20, 2013, Pham & Associates filed a counter-argument against the Compo’s views as follows:

- Under the provisions of law, the trademark owner provided with the evidence of using the trademark before 03 months counting from the date of request for invalidation and there were no regulations regarding the scale of using the mark to be invalidated.

- There were not any documents to show that the trademark owner "NOVATEC" had a relationship with Matai Co., Ltd Viet Nam (the buyer) in this case.

After considering the arguments together with the relevant documents of the parties, the NOIP uphold the views of Pham & Associates and dismissed the request of invalidation on April 23, 2014.

Japan Polypropylene Corporation was established in October 2003 as the largest polypropylene company in Japan, succeeding the polypropylene business of Japan Polychem and Chisso Corporation.

Pham & Associates