Von Linh Nguyen
PHỞ THÌN ist eine äußerst vertraute Marke bei Feinschmeckern aus Hanoi, besonders diejenigen, die Phở lieben – ein traditionelles vietnamesisches Gericht. Zwei bekannte Orte, an denen Kunden das erstklassige PHỞ THÌN genießen können, befinden sich in zwei verschiedenen Straßen in Hanoi – der Dinh Tien Hoang Street und der Lo Duc Street. Obwohl die beiden Restaurants ihre eigenen einzigartigen Aromen haben, Die meisten Menschen wissen nicht, dass es sich um zwei verschiedene Marken handelt, Eigentum von zwei unterschiedlichen und nicht verwandten Eigentümern.
Reviewing the history behind the establishment and development of each brand, we uncovered two distinctive stories of two owners named “Thìn” who sold Phở in Hanoi. The process for obtaining exclusive trademark rights for the mark “PHỞ THÌN” in Vietnam also revealed an interesting competition between these brands.
The battle for “PHỞ THÌN”…
Phở Thìn Bờ Hồ
Das 1st “Phở Thìn” brand – then also called Phở Thìn Bờ Hồ – was established in 1955, originating from a small store operated by Mr. Bui Tri Thin at No. 61 Dinh Tien Hoang street, in the area surrounding Sword Lake. Being an “early bird” in trademark protection, his family successfully registered the word mark “PHỞ THÌN” for restaurants (Klasse 43 under NICE classification) at the Intellectual Property Office of Vietnam (IPVN) seit 2003. Dann, after the validity of the trademark had expired due to non-renewal by 20 November 2013, they re-filed the trademark application for the same mark on 26 Dezember 2014.
The owner of Phở Thìn Bờ Hồ has been recorded as the owner of the trademark “PHỞ THÌN” under Certification No. 4027781 datiert 16 März 2017 with the validity ending on 26 Dezember 2024 (but extendible by renewal every 10 Jahre). Außerdem, the family also filed other derivative marks such as und (“Phở Thìn 61 Đinh Tiên Hoàng The Original Vietnamese Cuisine since 1955” device). The latter has been used in the signboard at the sole restaurant of Phở Thìn Bờ Hồ.
Phở Thìn Lò Đúc
Established 24 years’ later – at the end of 1979 – is the 2nd “Phở Thìn” brand, von Herrn Besitz. Nguyen Trong Thin at 13 Lo Duc. Possessing a highly distinct flavour compared to other kinds of beef noodle soup, with their signature noodle soup with eye round steak, the brand developed its reputation over a period of time. Phở Thìn Lò Đúc has been as well-known as Phở Thìn Bờ Hồ in terms of making a big splash in both domestic and overseas markets, extending to several business locations in Japan and Australia. Despite their popularity, the owner of Phở Thìn Lò Đúc has faced plenty of difficulties in registering his mark. The below table indicates trademark applications filed by the owner of Phở Thìn Lò Đúc before IPVN:
It can be seen from the filed marks that the owner of Phở Thìn Lò Đúc added other signs such as the restaurant’s address and the image of the owner to the mark to create more distinctiveness.
Hingegen, can the Phở Thìn Lò Đúc brand, which includes the words “PHỞ THÌN” be protected as a trademark for restaurant services and beef noodle soup?
From a legal perspective, the distinctiveness of a mark is the most important criteria to distinguish goods and services of different organizations and individuals. The registration of a trademark including confusingly similar or identical signs belonging to different owners will conform to the principle that whoever registers first will gain the rights. The ground of refusal of the later-filed applications containing the words “PHỞ THÌN” is the lack of distinctiveness pursuant to Point e, Klausel 2, Artikel 74 of the Vietnamese IP Law 2005, where the registered marks are identical or confusingly similar to trademarks for the same products and services. The facts show that after the “PHỞ THÌN” trademark was granted to Mr. Bui Tri Thin’s family (Phở Thìn Bờ Hồ), there have not been any registered trademarks containing “PHỞ THÌN” to date, even for different classes of products and services.
Weiter, from the application of mark No. 2 in the above table, it can be seen that the owner of Phở Thìn Lò Đúc has decisively pursued the protection of the trademark “PHỞ THÌN” under a broad description of goods/services, in up to 7 classes (67 goods/services). The current status of this application is “in opposition”, which indicates that a third party had opposed the grant of the application at IPVN. Although the opponent is not disclosed, it is highly likely that the owner of Phở Thìn Bờ Hồ is the opponent since they will be affected the most if the trademark application is granted to Phở Thìn Lò Đúc with such a broad description of goods and services. Although the IPVN’s examination result of the opposed application is not yet issued, based on the current legal provisions and trademark examination practices, it can be concluded that there cannot exist two “PHỞ THÌN” trademarks with two different owners for beef noodle soup and restaurant services as well as similar goods and services.
Takeaways for enterprises and business owners
Erstens, trademark registration in Vietnam follows a “first-to-file” principle, in that whoever registers first gets the right first, so don’t wait until your brand is established to consider registration. The implication of the proverb “the early bird catches the worm” is very accurate in this circumstance. Außerdem, the cost of trademark registration in Vietnam is currently relatively cheap and the benefits of having exclusive trademark protection are enormous, so what are you waiting for?
Zweitens, for brand that has been established for a long time, has developed goodwill and is legally protected, such as Phở Thìn Bờ Hồ in this case, it is necessary to continue to protect your trademark by monitoring and preventing widespread unauthorized use by third parties, which may cause the trademark to lose its inherent distinctiveness and become a generic name for the registered goods and services (for e.g., when the public starts referring to all traditional Hanoi beef noodle soup as Phở Thìn). The trademark owner will then lose their trademark rights.
Zu guter Letzt, the use of marks identical or similar to the trademark of another party for identical or similar goods/services is considered as an infringement of the trademark rights and also an act of unfair competition. In the story above, as the owner of the registered trademark, the Phở Thìn Bờ Hồ family has the rights to prohibit other third parties from using “PHỞ THÌN” for restaurant services (noodle soup store), and goods/services similar thereto or related thereto if such use is misleading and causes confusion as to the origin thereof. The use includes hanging signboards, Domain Namen, etc. Wichtiger, there hardly exists other third parties meeting the conditions of honest use as Phở Thìn Lò Đúc so as not to be considered an infringement of trademark rights. It should be noted that any third party committing an act of infringement upon the trademark rights can be administratively sanctioned, sued in Court or criminally sanctioned, depending on the severity of the act. Deshalb, enterprises and business owners need to respect the intellectual property rights of others, actively build their own brands and develop their business in an honest manner.
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