Date: 07-06-2018 by: Banca IP Law Firm
Successful protection of Trademark property rights - VALENTINO CASE
In the development of market economy, along with the effort to build the brand reputation and increase its influence in the marketplace, local enterprises always have to face with many forms of competition. Many of your competitors have produced similarly-branded products, even misleading the brand names of other businesses, in order to utilize the prestige of those big trademarks to reduce their marketing and advertising cost. Thus, the problem faced by true manufacturers is how to compete legally to protect their own trademarks, their own priceless intellectual property to win in that fierce race.
In Vietnam, Banca Intellectual Property (IP) Law Firm with over 20 years of experience servicing in intellectual property sector has been selected by many enterprises as the regular legal representatives in application of trademark registration; filing appeals and objections; as well as representing clients in litigation, unfair competition,…relating to the legal protection of industrial properties. One of our clients is Valentino S.p.A, an Italian well-known fashion brand. In Vietnam’s market, the protection of the trademark containing “V logo” and “VALENTINO” of Valentino S.p.A. has many challenges as various applicants filed trademark applications for marks containing the sign “VALENTINO” such as "Alberto Valentino", "V Valentino Creations”, “Gianni Valentino”, “Emilio Valentino”, “CVO-Valentino”, “Valentino-T”, “Gina Valentino” to the National Office of Intellectual Property (NOIP). Banca IP Law Firm, authorized by Valentino S.p.A., has made a great effort in tracking and successfully opposed these trademark applications containing the "VALENTINO" sign.
We hereby nominate a case concerning the opposition against the "V Valentino Creations"trademark application filed by Goggles Corporation Sdn. Bhd. Our firm has successfully opposed the trademark applications based on convincing arguments as follows:
Valentino S.p.A is the legal owner of the trademark “VALENTINO” and trademarks associated with “VALENTINO”. Products labeled “VALENTINO”, consisting of cosmetics, clothing, footwear, accessories and other fashion products, are currently granted legal protection in various countries worldwide, including Vietnam. Valentino S.p.A’s trademark “VALENTINO” and trademarks associated with “VALENTINO have been one of the top and well-known fashion trademarks in the world. “V” is the initial of “Valentino” – the trade name, trademark, and also the name of the first president who founded Valentino S.p.A., and who was awarded a medal by the President of Italy in 1998 and was decorated with Legion of Honor by the President of France in 2006 for his contribution to the cosmetics and fashion industry. The “V logo” and “VALENTINO” trademark and other trademarks containing “V logo” and “VALENTINO” components in the name of Valentino S.p.A. have been granted approximately 1,000 certificates in nearly 100 countries in the world, including Vietnam. The “V” logo and “VALENTINO” brand are recognized worldwide as a symbol of prestige, high quality and luxury of Italian-made fashion product, the fashion hub of the world.
As a player in the same industry, Goggles Corporation Sdn. Bhd. is aware of the prestige of Valentino S.p.A and their recognized product trademarks. The trademark “V Valentino Creations” filing under the trademark application by Goggles Corporation Sdn. Bhd., contains the letter “V” stylized and the word “VALENTINO” which are confusingly similar to the protected trademarks “V logo” and “VALENTINO” of Valentino S.p.A. Moreover, the trademark “V Valentino Creations” of Goggles Corporation Sdn. Bhd. was filed with respect to the same goods with the designated goods of Valentino S.p.A. It can be concluded that Goggles Corporation Sdn. Bhd has done multiple research beforehand and has had the intention to take advantage of Valentino S.p.A’s creditability when filing the trademark application for “V Valentino Creations”. It is without any doubt that the filing of Goggles Corporation Sdn. Bhd is a violence of industrial property rights, according to Article 129 Law on Intellectual Property.
As a result, after a thorough inspection and based on our arguments, the National Office of Intellectual Property of Vietnam accepted Banca’s proposal and refused the application for registration by Goggles Corporation Sdn. Bhd. for marks “V” and “VALENTINO”. Simultaneously, Valentino S.p.A.’s trademark “VALENTINO” and trademarks associated with “VALENTINO” have been acknowledged as trademarks widely used in Vietnam.
In today’s highly competitive market, production of counterfeit goods and acts of infringement are becoming extremely complicated and diverse. Our company always promptly and effectively take actions to prevent risks to protect our clients’ lawful rights and their interests. Not only Vietnamese companies but other foreign entities should consider this as a preventive alternative, thereby raising awareness of IP Law to take measures to protect your own reputation from the root, minimizing and avoiding major damages that may occur in the future.
If you wish to attain counseling and preparation of legal proceedings regarding property rights in Vietnam or is in need of counseling and consulting litigation, opposition to protect your intellectual properties as presented in “VALENTINO” case of Valentino S.p.A, as well as other IP legal problems, please contact us at:
Banca Intellectual Property Firm
Address: 15B Trieu Viet Vuong, Hai Ba Trung district, Hanoi, Vietnam
Hotline: +84 243 9433 007
Please state if you read about this article when contacting us!