This matter concerned two entities both using marks including the words “Bao Xuan”. The first entity, Ich Nhan Pharma Co., uses its “Bao Xuan and Device” trade mark in relation to a food supplement that it claims has anti-aging properties. Ich Nhan Pharma holds a trade mark registration in Vietnam in Class 5 for its “Bao Xuan and Device” trade mark for medical goods.
The second entity, Ngan Anh Enterprise uses its “Bao Xuan” word trade mark in relation to a cosmetic skin cream. Ngan Anh applied to register its “Bao Xuan” word trade mark for cosmetics goods in Class 3, but its application was blocked by the prior Ich Nhan Pharma registration in Class 5 on the basis that the National Office of Intellectual Property (Vietnam TMO) deemed the goods to be similar.
The refusal was overturned on appeal by Ngan Anh to the Hau Giang Province Court on the basis that the goods are in differing classes and are otherwise not similar (being cosmetics v medical goods).
The Vietnam TMO filed an appeal against the Hau Giang Province Court’s decision.
On 29 August 2016, the People’s High Court of Ho Chi Minh City reviewed the case and accepted the TMO’s appeal to annul the earlier Court Decision. The People’s High Court confirmed the goods were similar and as such the “Bao Xuan” word trade mark application should be rejected.
The Decision of the People’s High Court of Ho Chi Minh City ends what was a long-running dispute between the respective parties regarding uses of their respective trade marks in the markets and at the TMO. The TMO Decision clearly establishes that pharmaceuticals and cosmetics, generally, will be considered as similar goods in Vietnam even though they are in different Classes under the Nice Classification.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.