The figurative trademark “GA NÒI, figure” was partially canceled

Grounds:  Clause 3, Article 220, IP Law; Point e, Clause 1, Article 6 and Clause 2, Article 29 of Decree 63/CP.

The National Office of Intellectual Property (NOIP/IP Vietnam) has issued Decision No. 40269/QD-SHTT dated June 9, 2023, partially canceling the validity of Trademark Registration Certificate No. 50305, issued on October 31, 2003 to Saigon Pesticide Company (”Công ty thuốc trừ sâu Sài Gòn”), now Saigon Plant Protection Joint Stock Company (“Công ty CP bảo vệ thực vật Sài Gòn’)  at the request of Sumitomo Chemical Takeda Agro Company (Sumitomo). Specifically, the canceled part is the "image of a chicken stepping on a worm" of the figurative trademark "GA NOI, figure" as shown below:

The IP Vietnam’s decision based on the evidence submitted by Sumitomo that the “chicken stepping on a worm” image was registered and protected by Sumitomo for the first time in Japan since 1985 for the pesticide products; later on its was registered in Taiwan and Korea. Since 1991, Sumitomo has officially used the trademark "PADAN, image of chicken stomping on worms" for agricultural pesticide and fungicide products. Until 1994, the pesticide products bearing this mark were exported to many countries, including China, Pakistan, India and Vietnam.

During the period 1994-2001, Sumitomo and Saigon Pesticide Company had a business cooperation relationship, specifically Saigon Pesticide Company sold the products of Sumitomo. In the license contract signed on May 10, 1996, Sumitomo allowed Saigon Pesticide Company to use the trademark "PADAN" in Vietnam. By 2001, this trade relationship ended.

The IP Vietnam held that, although the license contract signed between Sumitomo and Saigon Pesticide Company did not mention the mark "chicken stepping on a worm", in reality Saigon Pesticide Company had used  the mark "PADAN" with the image of chicken stepping on a worm for its pesticide products, such as presented this image on its leaflets, advertising materials... Sumitomo also affirmed that it did not allow or transfer the right to register the trademark "chicken stepping on a worm" to Saigon Pesticide Company.

Through its business cooperation with Sumitomo, Saigon Pesticide Company cannot say it did not know that the Sumitomo's trademark "PADAN, figure" for pesticide products was widely used and recognized before September 19. August 2002 - the day on which Saigon Pesticide Company filed an application to register the trademark "GA NOI, image of chicken stepping on a worm".

Saigon Pesticide Company has the right to appeal the above decision of the IP Vietnam or sue in court./.

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