VIETNAM: Court rejected the Marvel’s appeal to NOIP’s Decision on Registration of “X-MEN” Trademark
On June 27, 2003, International Consumer Products (ICP - Cong ty Co phan Hang Gia dung Quoc te), address: On June 27, 2003, International Consumer Products (ICP - Cong ty Co phan Hang Gia dung Quoc te), address: 53 Luong Huu Khanh Street, Pham Ngu Lao Ward, District 1, Ho Chi Minh city, through its IP Agent, Pham & Associates, filed application No. 4-2003-05427 at the National Office of Intellectual Property (NOIP) for registration of the “X-MEN & X Logo” trademark for the goods in Class 03: “Shampoos, Cosmetics, Detergents” in Vietnam. After having conducted the application examination procedures, on June 08, 2005 the NOIP issued Decision No. A05811/QĐ-ĐK (NOIP’s Decision) on granting Trademark Registration Certificate No. 63481 for the “X-MEN & X Logo” trademark in the name of ICP. Marvel Characters, Inc. (“Marvel”), address: 9242 Beverly Boulevard Beverly Hills, California, USA, appealed against this decision of NOIP and on August 8, 2006, filed an application to request NOIP to invalidate the registration certificate granted to ICP. Marvel’s arguments for the invalidation were that the “X-MEN & X Logo” trademark failed to satisfy the protection conditions on the grant date of the trademark registration, namely (i) the “ X-MEN & X Logo” trademark was identical to the name and image of Marvel’s X-Men character used in comic books and, was also identical to Marvel’s well-known “X-Men” trademark, and (ii) the purpose of ICP’s filing application for registration of the “X-MEN & X Logo” trademark was to take advantage of the well-knownes of the name and image of Marvel’s “X-Men” character and this action caused confusion for consumers. NOIP rejected the Marvel’s appeal for the reason that Marvel failed to provide NOIP with documents to prove that “X-Men” is a well-known trademark. Not agreeing with the NOIP’s decision, Marvel further appealed to the Ministry of Science and Technology (MoST). MoST affirmed the NOIP’s decision and did not accept the Marvel’s appeal. After a thorough review of the case, MoST affirmed the NOIP’s decision and on July 11, 2008, issued Decision No.1428/QĐ-BKHCN (MoST’s Decision) on rejecting the Marvel’s request to invalidate the “X-MEN & X Logo” trademark registration granted to ICP on the basis of the following grounds: Not agreeing with the above-mentioned NOIP’s Decision, Marvel decided to pursue a lawsuit against NOIP. The petition of Marvel was accepted by the Hanoi People’s Court on October 8, 2010. The trial at first instance was opened at the Hanoi People’s Court on March 29, 2013. Arguments of Marvel The representative of Marvel argued that Marvel was one of the most well-known comic film producers in the world; its characters such well-known properties as the X-Men since born were promptly loved and became worldwide well-known. X-Men was protected by copyright and trademark registration certificate in Vietnam (Certificate No.11455). The NOIP’s decision on granting Trademark Registration Certificate No. 63481 for the “X-MEN & X Logo” trademark in the name of ICP did not meet the requirements of protection as regulated in Art.6 1.e.h of Government Decree No. 63/CP of 24/10/1996; In order to prove the well-knownes of the “X-Men” trademark, Marvel has provided the Court with “X-Men” trademark registration certificates and copyright certificates in other countries. Arguments of NOIP The representative of NOIP argued that the documents of Marvel were unable to prove that “X-Men” associated with the products is a well-known trademark. The products of Marvel, i.e. cultural products, and the products of ICP, i.e. cosmetic products, are completely different. They are not connected to each other, not causing any confusion or taking advantage of the well-knownes of Marvel. The image of “X-Men” of Marvel was attached to a number of characters, not to only one character, while the “X-MEN & X Logo” trademark of ICP was not identical to the characters of Marvel. Arguments of ICP The representative of ICP argued that the “X-Men” trademark of Marvel was not well-known in Vietnam. Marvel failed to show grounds to prove for the same products in Vietnam. The grounds provided by Marvel were self-stated and they dealt only with cultural products such as comic films, books or X-Men games which belong to copyright and did not relate to the “X-MEN & X Logo” trademark of ICP. We could not identify trademark with copyright of a work. With regard to the protected trademark being identical to the name, image of X-Men character: the Image of X-Men of Marvel had been known as supermen, superheroes in comic films, books including groups of people as “the Mutants” with super power, every character in each group had different names such as Cyclops, Iceman, Angel, Beats, Grey. According to Vietnam Copyright Office, the name of character could not be protected. The “X-MEN & X Logo” trademark of ICP had been registered for the goods in Class 03: “Shampoos, Cosmetics, Detergents” in Vietnam; Vietnamese customers did not know any products of Marvel in this class, therefore no confusion could be mentioned here, and in fact ICP did not take advantage of Marvel’s well-knownes. Reviews and Judgment of Court The Court held that on June 27, 2003, the time at which ICP filed the application at NOIP for registration of the “X-MEN & X Logo” trademark, Marvel did not file any application for registration of its “X-Men” trademark in Vietnam. In the United States where Marvel resided, the “X-Men” trademark had not also been registered under the name of Marvel for the goods in Class 03 (according to the database of USPTO at www.uspto.gov) In reality, Marvel did not have products in the same class that had been protected by trademark registered in Vietnam but merely had cultural works such as comic films, books, X-Men games protected by copyright. The turnover-related documents provided by Marvel to the Court were not examined by competent authorities. Moreover, in these documents, Marvel did not indicate any percent ratio of the turnover that originated from beauty care products and whether those products were cosmetics belonging to the goods in Class 03 or they were pharmaceuticals belonging to the goods in Class 05, registered by Marvel. The conception of Marvel’s X-Men had been known as supermen or superheroes in comic films, books including groups of people such as “the Mutants” with super power; they were not specific persons; every person in each group had a different name. Meanwhile, the image of X-Men of ICP was “The Truly Man”. Moreover, the products protected under ICP’s trademark belong to Class 03: Cosmetic products; Vietnamese customers did not know any products of Marvel in this Class; therefore they could not be confused to this. Therefore, there were bases to conclude that ICP had not taken advantage of Marvel’s reputation and had not exploited the Marvel’s copyright. The representative of Marvel argued that the use by ICP of American actor Brad Pitt’s image as well as the symbol associated with the “Hollywood” word for advertising ICP’s products was a dishonest action with the purpose of taking advantage of Marvel’s well-knownes. However, Marvel failed in providing the Court with relevant documents, and Marvel was also unable to prove its rights to the use of Brad Pitt’s image. Based on these grounds, the Court held that there was no basis to conclude that ICP was dishonest and had exploited Marvel’s well-knownes, and accordingly granted a judgment in favor of NOIP. The Marvel’s appeal to NOIP’s Decision was rejected. As no appeal had been filed by Marvel to the appellate court, the judgment of the Hanoi People’s Court came into effect. (Pham & Associates)
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