Date: 03-08-2018 by: Banca IP Law Firm
Nestlé’s "Maggi" in Vietnam Dictionary and their journey to pursue its IPR in Vietnam – Part 03 End
Maggi, a trademark owned by Nestlé has become a common name to indicate a sauce, therefore the risk of losing a wellknown trademark had been more present than ever.
Local consumers in the North of Vietnam had familiarized themselves with Maggi/Magi as a dark brown soy sauce usually made from ingredients containing a lot of protein (according to old Vietnam Dictionary). Gradually it became a common symbol for all kinds of soy sauce which is powerfully positioned in Vietnamese consumer’s minds. Consequently, it was introduced into the dictionary by the linguists as a common noun to indicate a popular sauce. In fact, Maggi is an exclusive international trademark owned by Nestlé, headquartered in Switzerland with a long history of over 100 years of use. The mark was nationally registered in 156 nations and territories including Vietnam and also commercially used in 200 countries nationwide.
Since its first introduction to Vietnam market, there had been a lot of rivals using “Maggi”, “Magi” marks as well as its variants for their products. Typically, there was an IP enforcement case relating Miwon Vietnam, a Korean-owned seasoning company. They attributed a reason that Magi had become a common noun in the Vietnam Dictionary to imply a sauce as the aforesaid definition. Therefore, anyone had the right to use it. Many other companies took similar names thereafter such as the Magi Good Morning trademark adopted by Miwon Vietnam, Maggi Delicious and Magic Panco used by Panco company, or Maggi used by many local producers….
The above-mentioned enforcement cases had challenged us both at that time as we wouldn’t be thinking that such a serie of enforcement cases came together, even last for a decade.
Probably, it’s necessary to mention the general trend of functioning the proper nouns in Vietnam. The tendency of turning the proper nouns into common nouns has become more and more widespread and faster, especially in the period of globalization and integration. For example, Honda trademark, a wellknown Japaness automaker company had come into Vietnam’s daily life in such a way that: “well, let’s save money to buy a honda”; or other proper noun/name like Meng Chang Jun, an official from China’s Warring States period who was famous for showing merciness to people, later went into Vietnamese language as a patron who donates finance to others, or Dao Zhi (盜跖), Liu Xiahui’s brother (柳下惠) who was a famous thief in the royal from the China’s Spring and Autumn period, later being translated in Vietnam as the stealer,…and many other words.
For "maggi" in Vietnamese language, this word was already turned into common noun in terms of spelling, phonetic and usage (a sauce in lieu of a Nestlé’s product). Vietnamese language researchers and philologists had obtained the words from the objective development demand of daily communication, rather than arbitrarily rely on someone else’s opinion.
Seeing that the possibility of trademark dilution had been more present than ever, we, on behalf of Nestlé, had sent a request to the editorial board of Encyclopedia of Vietnam (under the Institute of Linguistics) enclosing with evidences to persuade them to remove the term “Magi” from the Vietnamese Dictionaries or add information of the origin of this term as from famous trademark “MAGGI” of Nestlé. The move was done in the context that Vietnam had been issued any regulations concerning the dilution of trademark and the weakening trademark when it turned into a common noun. The request was not accepted shortly thereafter. In another move, we requested for a confirmation from the NOIP on IP rights of Nestlé under Maggi trademark. The NOIP then issued an official letter requesting the Encyclopedia of Vietnam to exlude it from the Dictionary as it would be IP law’s violation if anyone could use it’s merely a trademark rather a common name. The second request, once again, was not accepted though included an asseration of legal rights towards Maggi trademark and the use of the mark in the business context must have been aligned with current IP law. The affirmation of Vietnam Encyclopedia had helped us to resolve some enforcement cases at that time. However, the root case was not done which induced us to ask for an influence from Swiss government. Through Swiss Embassy, the sign was come to the Vietnam Ministry of Information and Communication together with Director of Vietnam Academy of Social Sciences.
The journey had taken place nearly 2 decades ago but we, as Nestlé’s IP representative in Vietnam had devoted our dedication, time and effort to get a satisfactory definition for Maggi/Magi in Vietnam Dictionaries: « is a global and national registered trademark of Nestlé, used for many types of spices to cook, including a soy sauce». With that result set forth, the Encyclopedia of Vietnam, under the Institute of Linguistics had agreed to add explaination on Nestlé’s IPR for all types of dictionary platform, print and online version, also convinced other publishers to apply the same.
Speaking on the day of launching a research study’s result (under Nestlé’s sponsorship) to confirm their IPR towards Maggi trademark, Mr. Jean Pierre Maeder, Head of IPR Department of Nestlé stated that this was the first case in the world that the trademark owner had successfully joined together to bring a trademark to its right position in business daily life. Also, it can be seen as our great success over hard difficult situation in a long hard journey to seek for the sake of justice of a trademark.
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