KINGMAX owner loses its crown

Vietnam

The National Office of Intellectual Property (NOIP) has cancelled the trademark KINGMAX for goods in Class 9 of the Nice Classification (including memories for computer and computers).

On October 12 2005 Vien Son Company (the sole distributor of computer accessories products manufactured by King Max Inc, Taiwan) filed an application for the registration of the trademark KINGMAX (Application 4-2005-13488) in Vietnam. Registration was granted in respect of Class 9 goods on November 24 2006 (Registration 77256).

On June 1 2007 Tri Duc Company applied to the NOIP for the cancellation of the trademark. Tri Duc alleged that Vien Son was not entitled to register the trademark KINGMAX at the filing date based on two provisions of Governmental Decree 63/CP (which were effective at the relevant date).

First, Article 14(2)(a) of the decree provides as follows:

"Natural or legal persons and other entities legally conducting production activities shall have the right to apply for the registration of a trademark to be used on products that they manufacture or will manufacture."

Tri Duc alleged that at the filing date, Vien Son's certificate of business registration included only the business line of "office machines, computer accessories, and telecommunication devices and accessories", but not memories for computer and computers.

Second, Article 14(2)(c) provides as follows:

"Natural or legal persons and other entities legally engaged in trade shall have the right to apply for the registration of a trademark to be used on the products marketed by them but manufactured by a third party, provided that the manufacturer does not use such trademark for the relevant products and does not object to such application."

Tri Duc claimed that although Vien Son was engaged in trade, it did not provide evidence that the manufacturer of the product (King Max) neither used the trademark nor objected to the application.

In response to the cancellation application, Vien Son obtained a declaration that King Max did not use the trademark KINGMAX in Vietnam in 2005 and did not object to the registration. However, on October 29 2007 the NOIP cancelled the trademark KINGMAX on the grounds that Vien Son was not entitled to register the mark at the time of filing the application.

Duong Le Hoai, LÊ & LÊ, Hanoi

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