Pham & Associates Succeeds in Cancellation Action against SEPRE.24 Device Mark

On January 19, 1995, Vietnamese Thang Long Company and Japanese Kotobuki Holding Co., Ltd set up a joint venture company, providing security services in the name of “Company Providing Security Services”, its trade name was “ VN Thang Long - SEPRE.24 Co.”, and then changed into “Security Services Company Limited YK, SEPRE24”, and its trade name was “YK SEPRE24 SECURITY SERVICE LIMITED LIABILITY COMPANY”, and its abbreviation name was “YUKI SEPRE24”. (Now called as “YUKI SEPRE24 Co.,”).

In the course of its business activities, YUKI SEPRE24 Co., discovered a Vietnamese company had used a prominent element of its trade name “SEPRE24” and registered the trademark “VIETNAM THANG LONG SEPRE.24” under Registration No. 110989 on October 10, 2008.

On behalf of the client, Pham & Associates on January 6, 2015 filed a cancellation action against Registration 110989 on the following grounds.

Article 74(2)(k) of the IP Law

The element “SEPRE.24” in Registration 110989 did not meet the basic legal requirements for protection since it was confusingly similar to the trade name of YUKI SEPRE24 Co., being legitimately used prior to the filing date of Registration 110989. Further, both the companies provided the security services, thus the contemporaneous use of the marks for providing the same services, is likely to cause confusion.

Bad faith under Article 96(3) of the IP Law

The trademark application in respect of Registration 110989 was made in bad faith. The fact that one of the founders of the company, the owner of Registration 110989 was once an employee of YUKI SEPRE24 Co., namely from July 11, 1996 to November 14, 2003. During the time working for such company, he knew or should have known the significant element “YK Sepre 24” in the trade name of YUKI SEPRE24 Co., Therefore, it was sufficient to conclude that the applicant had ‘hijacked’ the trademark, such conduct will be suggestive of bad faith 

Accordingly, the Trademark Office satisfied the petitioner’s claims and cancelled Registration 110989.

Pham & Associates is a largest local intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc. For further information about our organization and services, please visit our website: www.pham.com.vn