A civil case brought by Ngan Anh Enterprise at the Hau Giang Provincial Court against the Intellectual Property Office of Vietnam (“IP Vietnam”) is an interesting challenge to the government’s approach to the determination of trademark similarity.

Ich Nhan Pharma Co. Ltd (“Ich Nhan”) manufactures and sells food supplements with anti-aging properties under the mark “Bảo Xuân & device” which was registered under Reg. No. 0172843 covering medicines and nutritional foods used in healthcare in Class 5.

Ngan Anh Enterprise (“Ngan Anh”) produces and trades in skin cream products with whitening properties. Ngan Anh applied to register the mark “Bảo Xuân” under Trademark Application No. 4-2011-15391 for the goods in Class 3 primarily covering cosmetics which was then refused for registration. The “Bảo Xuân” mark for the cosmetic products in Class 03 was deemed by the IP Vietnam confusingly similar to Ich Nhan’s prior mark “Bảo Xuân & device” for the products in Class 05.

Over several years, various actions have been taken by Ich Nhan and Vietnamese enforcement authorities, including:

1. Obtaining an assessment conclusion from the Vietnam Intellectual Property Research Institute (“VIPRI”) on infringement caused by Ngan Anh for using the mark “Bảo Xuân” for the goods in Class 03.
2. Filing a petition to Market Management Bureau (“MMB”) of Hau Giang Province. Under a working Minutes issued by the MMB, Ngan Anh admitted infringement and undertook not to manufacture and trade in the cosmetics bearing “Bảo Xuân” mark. In an Official Letter pertaining to an administrative penalty against Ngan Anh, the MMB of Hau Giang Province stated that Ngan Anh also promised to destroy all infringing products within 40 days.
3. The Hanoi MMB issued many sanction decisions against drugstores trading in the cosmetic products bearing the “Bảo Xuân” mark manufactured by Ngan Anh.
4. The Inspectorate of Ministry of Science and Technology (“IMOST”) issued a sanction decision against Ngan Anh for manufacturing the infringing cosmetic products.