South-East Asia IPR SME Helpdesk

Case Studies

Case Study 54 - Infringement of BMW’s domain name in Vietnam

Background

BMW has encountered numerous local cyber-squatters and registrants acting in bad faith, seeking to take advantage of the globally famous name ‘BMW’ by integrating it into their domain names. BMW actively maintains control of its brand online.

BMW found out that the domain names bmw.com.vn, bmwmotorrad.com.vn, bmw-motorrad.com.vn, bmwmotorrad.vn and bmw-motorrad.vn had been registered by some professional Vietnamese cyber-squatters.

Actions taken

  • The domain name bmw.com.vn

Case Study 53 - Patent infringement lawsuits against two Vietnamese pesticide producers

Background

A multinational European life sciences giant holds a patent in Vietnam for a state-of-the-art insecticidal combination. In 2011, the company was made aware of various pesticides produced by local entities that contained the patented insecticidal combination. The European company worked with the Inspectorate of the Ministry of Science and Technology (MOST) and other administrative enforcement bodies, requesting that they take action against the infringers. However, given certain issues in dealing with infringement in sensitive fields such as agriculture, as well as a lack of precedent in enforcing patent infringement, the competent authorities were reluctant to take action. The European company decided to start a civil lawsuit to resolve the case.

Case Study 52 - Infringement of a pharmaceutical patent in Vietnam

Background

In 2015 in Vietnam, a European pharmaceutical company discovered two companies circulating locally made drugs containing the gamma-crystalline form of an active ingredient for which the European company had a valid Vietnamese patent. This patent infringement case was unprecedented, as it was the first time that the infringement of a crystalline form of a patented compound had arisen in Vietnam. All previous pharmaceutical patent disputes had concerned the patented compound itself.

Action taken

Case Study 51 - This trade mark-based domain name dispute was heard by a Vietnamese court. What do foreign businesses need to know?

Background

Operational Services GmbH (O.S. GmbH), a German company that manufactures lighting equipment is the owner of the OSRAM trade marks used for lighting apparatus in Vietnam. The company found that a person, N.D.T., in Vietnam registered two domain names, ‘osram.com.vn’ and ‘osram.vn’, as active websites, promoting and selling products bearing the OSRAM mark.

 

Case study 50 - Geographical Indications in Singapore, a case study

Background

The Consortium for Parmigiano Reggiano cheese applied to register the Geographical Indication (GI) ‘Parmigiano Reggiano’. The GI application was accepted and published for opposition purposes on 10 May 2019.
The deadline to file a notice of opposition was 21 June 2019.

Action taken

On 10 June 2019, the US Dairy Export Council (the opponent) requested a time extension ‘for up to 6 months’ to file its notice of opposition. The opponent’s request was based on fairly standard grounds, namely that: the opponent was recently made aware of the publication of the applicant’s GI; the agent had just been appointed and required more time to take instruction; more time was needed to prepare evidence.

Case Study 48 - Bad faith of franchisee imitating franchisor's trade mark in Thailand

Background:

A foreign company (“Foreign Company”) had registered its trade mark in its head-quarter country but had not done so in Thailand. It entered into a franchise agreement with a Thai company (“Thai Company”), permitting the Thai Company to “use” its trade mark in Thailand. During the contract term, the Thai Company sneakily filed and registered copycat marks in Thailand, imitating the Foreign Company’s trade mark. As soon as the registration was approved, the Thai Company terminated the franchise agreement to pursue its own business exploiting the newly registered trade marks.

Case Study 47 - Arguments against descriptiveness rejection of trade mark filling in Cambodia

Background:

A French pharmaceutical company tried to file two trade marks with the Department of Intellectual Property Rights ("DIPR") for goods including cosmetics, soaps, shampoos and perfumes. The company had already successfully registered these two trade marks in more than 15 jurisdictions. The DIPR issued a Notice of Preliminary Rejection of Mark Registration, on the basis that both trade marks were descriptive, therefore asking the applicant to provide supporting arguments and evidence to show that the marks were distinctive.

Case Study 46 - Seizure of counterfeit goods in Laos

Background:

A manufacturer of engines for agricultural activities had its trade mark duly registered in Laos. Lately, then found out that counterfeit products bearing its registered trade mark were being commercialized in several local retail stores. The issue was only discovered when the company received complaints about the product quality from buyers who mistakenly bought the counterfeit products which they thought were originals. This affected the company’s business and brand reputation.

Case Study 45 - Non-use of registered trade mark in Thailand: using a survey to determine non-use

Background:

Liwayway Marketing Corporation ("Liwayway") is the owner of a trade mark that was registered with the Thai Registrar of Trade Mark in various classes. However, its trade mark was possibly being expunged due to the request of Oishi Group Public Company Limited ("Oishi"), a Thai exporter of products such as aerated water, fruit juices, ready-to-drink green tea and carbonated drinks. Among others, the grounds put forward by Oishi was that there had been non-use of the mark for a period of at least 3 years up to 1 month before the expungement action ("Statutory Period").