Date: 16-06-2019 by: Banca IP Law Firm
Vietnamese Asano TV producer keeps up fight in court, stopping its rival’s infringment
In 2018, Asano trademark which is owned by the Orient Commerce and Production Company Limited (hereinafter referred as Orient company) was granted the Trademark Certificate number 40107919 for 3 classes of goods including: Television; DVD player; speakers; amplifier; washing machine; electric blender for household use; electric juicer for home use; fridge; air conditioner; cooker; microwave oven (cooking equipment); oven; gas stove; electric fan; electric water heater.
However, by 2015, this company found out that there were several similar electronic and refrigeration products bearing the Asanzo trademark (hereinafter referred as Asanzo company) in the market while Orient’s Asano trademark is still being protected.
Orient Company proceeded filing a lawsuit in the court right away after a series of their warning actions to the defendant (sending cease and desist letter to Asanzo company, requesting the local authorities to handle the infringement, and sending requests to the Institute of IP Science for the assessment of infringement). Orient company brought the case to the court which requested the Asanzo company with the claimed compensation amount for damages totaling VND500 million.
About the defendant, Asanzo company said: in 2015, it already registered their Asanzo trademark at the NOIP and after that gained the protection in 2018 for the same class of products as Orient company which is valid till 2025. Hence, Asanzo company filed a counterclaim which also added the lawsuit has affected their reputation, prestige and brand position of the company, asking for a compensation of VN300 million.
Both two companies went to the Ho Chi Minh city’s court in 2018. At the first instant verdict, the court ordered Asanzo company to immediately stop their infringements, remove the infringed trademarks on their products and pay VND100 million to the Orient company as a compensation. After the verdict, both two sides appeal straightaway and came for an appellate trial by the High-court HCMC in 2019.
The Appeal Panel said when the NOIP decided although there are some certain differences in color, the consonant letters (the added “Z” letter) and the well-formed “A” letter, the combination of both letters and images still constituted a potentially misleading overall to the protected mark of the Orient company. Therefore, the NOIP said that the Asanzo company infringed the trademark of Orient company under the Article 129 of IP law.
The Appellate Panel also added, the first instance verdict only accepted the compensation amount based on reasonable grounds because the Orient company could not give clear evidence to prove their damages, making it hard to determine how the defendant earned how much profit from infringed actions.
In addition, the Panel did not accept the defendant’s appeal and decided to keep its first instance verdict which requested Asanzo company to compensate the Orient company a compensation amount of VN100 million, remove their infringement products and apologize the Orient company publicly in 3 consecutive series of Thanh Nien newspaper.
Asanzo is currently a Vietnamese television brand that is strongly covered in the medium price segment in the market with their main lines as SMART TV 4K, SMART TV, LED TV, smartphones and other electronics appliances.
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Compiled by: Banca IP Law Firm
