FPT UNIVERSITY
INDIVIDUAL ASSIGNMENT
Intellectual Property Rights(IPR102)
Full name: Hoàng Thanh Thủy
Student code: HE172041
Class: GD1718-ID
Lecturer: Phạm Minh Huyền (FE FPTU HN)
Hanoi, 2024
INDIVIDUAL ASSIGNMENT
Company A is the owner of the trademark "STARBUCKS COFFEE and device"
registered for coffee products, coffee-containing
beverages of Class 30 and the services of coffee and refreshment shops of Class 43 under the
Certificate of Trademark Registration No. 75523 issued on September 28, 2006. The
trademark is being protected in Vietnam.
Question 1. Company A discovered that Company B had already filed a trademark
application for "STARLUCKS TEA & JUICE and device"
at the Vietnamese National Office of Intellectual Property
for tea and juice products on August 20, 2019. From your own perspective, can the mark
"STARLUCKS TEA & JUICE and device" for tea and juice products be registered?
Question 2. How can Company A do to protect their legitimate rights against Company B
when Company B uses "STARLUCKS TEA & JUICE and device" for tea and juice
products?
Question 1. Company A discovered that Company B had already filed a trademark
application for "STARLUCKS TEA & JUICE and device" at the Vietnamese National Office
of Intellectual Property for tea and juice products on August 20, 2019. From your own
perspective, can the mark "STARLUCKS TEA & JUICE and device" for tea and juice
products be registered?
Answer: Based on the analysis of Vietnamese Intellectual Property Law, I believe that the
"STARLUCKS TEA & JUICE and device" trademark application filed by Company B on
August 20, 2019, for tea and juice products would likely be denied registration. This
conclusion stems from the strong resemblance of "STARLUCKS TEA & JUICE and device"
to the well-known, previously registered "STARBUCKS COFFEE and device" trademark
owned by Company A, which could lead to public confusion.
- According to Article 74: Distinctiveness of Trademarks
1. Distinctiveness Requirements (Article 74):
- Point e, Clause 2, Article 74: This clause states that a sign is indistinguishable if it
is identical or confusingly similar to a previously registered trademark used for identical or
similar goods or services.
- Point i, Clause 2, Article 74: It also states that a sign is indistinguishable if it is
confusingly similar to a well-known trademark registered by another entity, even if for
different goods or services, if its use could impact the distinctiveness or reputation of the
well-known trademark.
- Considering these provisions, "STARLUCKS TEA & JUICE and device" resembles
"STARBUCKS COFFEE and device" in ways that could lead to consumer confusion, even
though the products differ slightly (coffee versus tea and juice). The similarity lies both in the
word "STARLUCKS," which has a visual and phonetic closeness to "STARBUCKS," and in
the design choices, which are likely to create an association with the well-known
"STARBUCKS" brand.
2. Similarity Analysis:
- Character Similarity: The term "STARLUCKS" in Company B's trademark shares 8 out
of 9 letters with "STARBUCKS," and both use uppercase letters, similar letter arrangements,
and pronunciations. The first syllable, "STAR," is identical and central to both names,
reinforcing consumer association and potential confusion between the two brands.
- Design Similarity: Both trademarks use a white sans-serif font on a green background
with a circular layout, featuring two small stars that connect the letters. The only notable
difference is the central image (a cup in Company B's logo vs. the Statue of Liberty in
Company A's), which is minor and unlikely to mitigate confusion effectively.
3. Protection of Well-Known Trademarks (Point a, Clause 3, Article 6):
- Intellectual property rights for well-known trademarks are established based on their use,
without requiring registration. Company A’s “STARBUCKS COFFEE and device” has long
been recognized and registered in Vietnam, as evidenced by Certificate of Trademark
Registration No. 75523, issued on September 28, 2006. Given its well-known status,
Company A's trademark should receive additional protection, further supporting grounds for
opposition against any new, confusingly similar applications.
Given the significant similarities in characters, pronunciation, and design elements
between "STARLUCKS TEA & JUICE and device" and "STARBUCKS COFFEE and
device," the likelihood of consumer confusion is high. These similarities suggest that the
"STARLUCKS TEA & JUICE and device" mark may unfairly capitalize on the established
reputation of the "STARBUCKS" brand, thus infringing on Company A’s rights. Therefore, it
is unlikely that Company B’s application for "STARLUCKS TEA & JUICE and device"
would be approved by the Vietnamese National Office of Intellectual Property, given the
grounds for confusion and potential impact on the distinctiveness of Company A’s
well-known trademark.
Question 2: How can Company A do to protect their legitimate rights against Company B
when Company B uses "STARLUCKS TEA & JUICE and device" for tea and juice
products?
To protect its legitimate rights against Company B’s use of the "STARLUCKS TEA & JUICE
and device" trademark for tea and juice products, Company A can undertake several legal
actions based on the Vietnamese Intellectual Property Law:
1. Issuing a Cease and Desist Letter:
- Company A can first send a cease and desist letter to Company B, formally requesting that
they cease using the "STARLUCKS TEA & JUICE and device" trademark, which infringes
on Company A’s "STARBUCKS COFFEE and device" trademark. In this letter, Company A
can demand that Company B stop using the infringing trademark, apologize, and issue a
public correction, for example, on social media or in press outlets, to clarify any confusion
caused by their unauthorized use.
2. Filing a Lawsuit if Necessary:
- If Company B does not comply with the cease and desist request, Company A can file a
lawsuit to seek legal protection of its rights. In court, Company A can argue that Company
B’s actions constitute "trademark infringement" according to Clause 1, Article 129 of the
Intellectual Property Law. Specifically, Company A must demonstrate that Company B’s
trademark closely resembles "STARBUCKS COFFEE and device," leading to confusion
among consumers about the source of the goods or creating a misleading association with
Company A.
Clause 1, Article 129 lists the following acts as trademark infringements if carried out
without permission from the trademark owner:
- Using a sign identical to the protected trademark for identical goods or services.
- Using a sign identical to the protected trademark for similar goods or services if it causes
confusion about the origin.
- Using a sign similar to the protected trademark for identical or related goods or services if
it causes confusion about the origin.
- Using a sign identical or similar to a famous trademark for any goods or services,
including unrelated goods, if it creates confusion or implies a misleading association.
3. Providing Evidence of Confusion:
- Company A must present evidence that the "STARLUCKS TEA & JUICE and device"
mark is identical or confusingly similar to "STARBUCKS COFFEE and device," as
previously analyzed. This similarity could lead to consumer confusion, potentially harming
Company A’s reputation and diluting its brand. Under Vietnamese law, using signs that are
identical or confusingly similar to a protected trademark is considered a violation of
trademark rights.
4. Claiming Compensation for Damages:
- In addition to seeking an injunction to stop the infringement, Company A can request
compensation for damages as outlined in Point a, Clause 1, Article 205 of the Intellectual
Property Law. Company A can claim:
- The total material damages calculated in monetary terms.
- Any profit that Company B gained from the infringement if it has not been included in
the material damages.
- Compensation for any reduction in profit for Company A due to the infringement, if this
loss was not included in the material damages.
By following these steps, Company A can assert its rights, stop further infringement, and
seek fair compensation for any harm caused by Company B’s unauthorized use of a similar
trademark.