Need to protect Vietnamese trademarks abroad

The case in which Vietnamese Saigon Beer Alcohol Beverage (Sabeco) faces the risk to be swallowed by the Singaporean partner has reheated the sense of brand protection in business community.

The use of the seals, which is almost similar to Sabeco’s brand image of its Singaporean partner Sabeco Asia Pacific has partly showed the subjective of Sabeco in protecting its brand.

Previously, various brands have been used and acquired by foreign partners. Ben Tre coconut candy is often referred to as the first case, and also the rare case that had a happy-ending in disputing overseas.

In 1998, while consumption of Ben Tre coconut candy in China was increasing dramatically, it suddenly decreased since a partner imitated the product and registered trademark in China. Hai To, owner of the Ben Tre coconut candy brand had gone through very hartime, from knocking the government to meeting media of China to prove Ben Tre coconut candy is from Vietnam. In 1999, she succeeded in claiming back the brand name.

Although Vinataba brand name of the Vietnam National Tobacco Corporation has been registered as intellectual property in the country since 1990, only until 2001, when registering for trademark protection in several countries, the corporation found out that Putra Satbar Industry of Indonesia has already registered Vinataba trademark in 13 countries.

This means Vinataba products could not be exported to those countries, as that would violate the intellectual property, real products would be treated as fake ones. Among the above 13 markets, there are important neighbouring markets such as China, Laos, and Cambodia. After various costly struggles and labour works, to date, according to an expert, Vinataba has only regained its brand in Cambodia.

Troubles in trademark protection of Vifon instant noodles in Poland, Saigon beer in the US, Sa Giang shrimp chips in France and a series of brand stolen brands, according to experts, have somewhat alarmed the sense of brand protection of businesses, especially large businesses in the country.

The common point of these above cases is the real products of businesses will become fake and counterfeit when entering the markets that their partners have registed for protection in advance. That also means the business opportunities in those markets have been closed unless those businesses spend big amount of money to ransom their brand names.

According to experts, although there have been many cases on stolen brand; the protection of trademarks in abroad has not been paid adequate attention by Vietnamese enterprises.

In the future, there will be other businesses falling into the same situation as Vietnamese enterprises have not really focused or had enough resources to register their trademarks in many different countries. Businesses cannot foresee the development and expansion to new markets.

Meanwhile, foreign enterprises always have methodical steps in building and trademarking.

To avoid the possible risks, which at that time the costs of litigation to reclaiming brands would be many times greater than the fee for registration of intellectual property protection, specialists recommend enterprises to focus on registering their trademarks in foreign countries.

Dr Tran Le Hong, director of Information Centre, under the Intellectual Property Department, said there are two ways to registered trademarks in abroad, including registering under agreement and the Madrid Protocol and directly registering in each local country.

The first way offers an advantage that registration can be made simultaneously in many countries at relatively low cost, about $200 to $300 dollars for the first ten years of protection. Meanwhile, if directly registering in each local country, businesses have to spend large service fees, usually up to a thousand dollars each time and registration can only be made in each country.

According to statistics of the Organisation of the World Intellectual Property (WIPO), to date, over 290 bands have been registered their trademarks in foreign countries through the Madrid system.

The registration of trademark protection is the legal basis for the protection of intellectual property rights of the brands and also the legal basis for enterprises to conduct trade promotions, brand promotions, or deal with disputes on their own brands.

Tags: Vietnamese trademarks