Russian wine marks: Hanoi Court rejected SPI's lawsuit against the IP Vietnam

In 2017, the Dutch company Spirits International B.V Company ( SPI) sued the IN Vietnam over its cancellation of recording them as the owner of the International Trademark Registration No. 571311; 574229; 633001 and 711772 used for wine products in Class 33 (Figures below), instead noting FKP as the owner of these International Registrations of the mark.

This lawsuit is part of a long, complicated dispute process between the Russian state-owned enterprise FKP Sojuzplodoimport (FKP) and the Dutch Spirits International N.V (SPI) regarding the ownership of trademarks dating back to the time of the Union of Soviet Socialist Republics, referred to as the Soviet Union, existed from 1922 to 1991. The background of the case is as follows:

In 1969, the above-mentioned trademarks were internationally registered under the Madrid Agreement under the name of the Soviet state enterprise VVO Sojuzplodoimport (VVO) for the highly popular alcohol products that symbolized the Soviet Union, and are  exported to many countries.

In 1992, the Soviet Union collapsed and the economy fell into chaos. A joint stock company, VAO Sojuzplodoimport (VAO), was established and declared itself in its charter to be the successor of VVO and thereby usurped the rights to the trademarks registered under the name VVO, and then carried out a series of name changes and trademark right assignment of the above trademark and many others (a total of 43 marks  with a selling price of 300,000 US$) and finally to a Dutch entity, namely Spirits International Company. N.V (SPI).

In 2002 the Supreme Arbitration Court of the Russian Federation ruled that it was illegal for VAO to declare itself in its charter as the successor to VVO and then transfer the above-mentioned trademarks to SPI; this act is essentially usurping VVO's ownership of the above trademarks. According to the Russian Federal Authorities, the value of the assigned trademarks is not 300,000 US$ but must be 400 million US$; It must also be added that billionaire Yuri Shefler, currently the owner of SPI, was also the owner of VAO Joint Stock Company during the period when the trademarks were assigned.

In 2002, the Ministry of Agriculture of the Russian Federation established the state enterprise "Soyuzplodoimport" (FKP) and by order of Prime Minister l. Kasyanov, the rights to the trademarks were transferred to FKP. In 2010, Prime Minister of the Russian Federation V. Putin signed a decision authorizing FKP to represent the interests of the Russian Federation in court cases on the restoration and protection of the rights of the Russian Federation to trademarks covering alcoholic beverage products exported abroad such as Stolichnaya, Moskovskaya, Sovetskoe etc.

In Vietnam, on September 11, 2012, KFP filed a request, accompanied by evidence proving that the assignment of trademarks to SPI is illegal and on that basis requested the IP Vietnam to (i) cancel the recordal of assignment of trademarks to SPI. and instead, (ii) record the owner as KFP for the International Trademark Registrations for alcohol products in Group 33 below:

No.571311 - “STOLICHNAYA RUSSIAN VODKA”;

No.574229-“ SOVIET WINE PARKLING” ;

No.633001 - “MOSKOVSKAYA RUSSIAN VODKA” ;

No.711772 - “RUSKAYA RUSSIAN VODKA”

The above request of KFP was considered by the IP Vietnam and in 2013 a decision was made in favor of KFP, based on Article 138.1 of the Vietnam  IP Law, which stipulates that industrial property rights can only be transferred by the legal owner of such rights; in this case SPI is not the legal owner according to the provisions of Russian law. . SPI appealed against this decision, but the NOIP rejected SPI's complaint in 2016. SPI then sued the IP Vietnam’s decision to Hanoi court.

On September 27, 2023, the Hanoi People's Court opened a first-instance administrative court  to hear the case. After three working days, on September 30, 2023, the Trial Council decided to reject the lawsuit filed by SPI.

Pham & Associates represented KFP in administrative procedures at the IP Vietnam  as well as in the trial of first instance administrative case at court../.