Painful trademark lessons learnt

The proud coffee province’s reputation is under threat

With the help of a Chinese law firm, Hanoi-based law firm Bross & Partners recently discovered that a Chinese firm (Guangzhou Buon Ma Thuot Coffee Company Limited as translated from Chinese, based in Guangzhou was found to have registered two Vietnamese trademarks, BUON MA THUOT and BUON MA THUOT COFFEE, in China for 10 years.

While the exclusive rights period of the first trademark is from November 14, 2010 to November 13, 2020, that of the latter is between June 14, 2011 and June 13, 2021. The registration numbers of the first and second trademarks are 7611987 and 7970830.

“This firm’s action has made the world misunderstand the geographical origin of the Buon Ma Thuot trademark which is now under protection in Vietnam. If this fails to be curbed, the firm can use its exclusive rights from these two trademarks to prevent Vietnam’s Buon Ma Thuot coffee exports into China,” said Le Quang Vinh, manager of Bross & Partners’ Intellectual Property Division.

“But the most dangerous thing is that if these trademarks were registered globally by this firm, Vietnam would not be able to export Buon Ma Thuot coffee to the markets where these trademarks were registered in,” said Vinh.

Based in the Central Highlands Dak Lak province, Buon Ma Thuot produces 300,000 hectares of high-quality coffee, occupying over 30 per cent of Vietnam’s total coffee exports annually.
He told VIR that other prestigious brands could be grabbed and used in other nations if they did not have trademark protection.

However, in 2005, Buon Ma Thuot coffee was registered for “geographical indication” protection under Vietnam’s Intellectual Property Law. The Ministry of Science and Technology (MST) recognised this via Decision 806/QD-SHTT dated October 14, 2005. But the indication had yet to be registered globally, according to the Buon Ma Thuot Coffee Association.

Tran Viet Hung, head of the MST’s Intellectual Property Department, said: “Dak Lak Provincial People’s Committee, as the highest management body of Buon Ma Thuot coffee trademark, is highly competent in lodging a complaint against the Chinese firm to require it to remove that trademark and reclaim that trademark for the province.”

Bross & Partners has reported the case to Dak Lak’s authorised agencies. “The local people’s committee has several times held meetings about this issue. But, no measures have been taken so far,” Vinh said.

Vinh said in order to reclaim the trademarks from the Chinese firm, Dak Lak must show evidence proving the history of Buon Ma Thuot and the prestige and history of its coffee.

In similar developments, Bross & Partners also discovered the “DAK LAK” coffee trademark was in late September, 1997 registered by France’s ITM ENTERPRISES company. This exclusive registration would be valid until late September, 2017 in 19 nations.

“Any Vietnamese coffee exports under the “DAK LAK” trademark to these nations could face troubles caused by the French firm at any time,” Vinh said. In another case, Vietnam’s “Phu Quoc” trademark was also registered by Viet Huong Fishsauce Company Inc based in San Francisco between August, 2009 and January 2019.

Doan Trieu Nhan, a senior coffee expert from Vietnam Coffee and Cocoa Association, said: “Not only Buon Ma Thuot coffee, but also other products have to be registered in Vietnam’s overseas key export markets.”