SIKA AG succeeded in trademark case against Dai Hoa Phat Co., Ltd.

August 26, 2021 | 16:24
After an inspection through the Ministry of Science and Technology, local firm Dai Hoa Phat had to follow through with the removal of all of SIKA AG's logos, material, and trademarks in July after the latter filed a complaint through local law firm SB Law.
Sika Trademark Is Infringed - The Alarming Infringement Situation Of  Intellectual Property Rights
SIKA, through the IP Law Firm SB Law, filed an application to handle Dai Hoa Phat's trademark infringement

SIKA AG is a Swiss multinational company founded in 1910, with reputation in building additives, waterproofing solutions, flooring, roofs, construction finishes, and in the automotive industry.

After more than 80 years of building a reputation in the international market, SIKA AG decided to enter the Vietnamese market and established SIKA Ltd. Vietnam in 1993, representing a long-term investment decision.

Recognising the importance of trademarks through business experience in many international arenas, in 1994, SIKA AG registered its trademarks. However, the company had to deal with the alleged intellectual property (IP) infringement by Dai Hoa Phat Co., Ltd. Accordingly, SIKA immediately filed a request to handle the infringement with the inspector of the Ministry of Science and Technology (MoST).

On January 18, SB LAW filed an application to handle SIKA's case, requiring Dai Hoa Phat to respect SIKA's IP rights and stop using the SIKA trademark on logos, business vehicles, and transaction documents.

Dai Hoa Phat has officially ceased to be a distributor of SIKA's products on August 20, 2020. This means that Dai Hoa Phat has no longer been allowed to use SIKA's trademarks on logos, business vehicles, transaction documents, and other items.

However, Dai Hoa Phat continued to use the SIKA trademark without permission, affecting SIKA's legitimate rights and interests.

Dai Hoa Phat, in response to the inspector of the MoST, argued that because it has been a distribution agent for 14 years, the company still sells genuine SIKA products imported from other distributors, so it considers itself to have the right to use the above trademarks. Furthermore, the company believes that its usage does not infringe the rights of the trademark.

Sika Trademark Is Infringed - The Alarming Infringement Situation Of  Intellectual Property Rights
Dai Hoa Phat has not seen a problem in continuing using SIKA's trademarks

However, according to the provisions of the Law on Intellectual Property, even though the unit trades products of the correct origin, the use of the trademark in advertising and business activities without the permission of the owner is still an infringement.

This regulation is intended to maximise the legitimate rights and interests of owners like SIKA, helping them to control the quality and origin of products and services bearing their trademark.

After the explanation about the legal provisions by the Inspector of the MoST related to the infringement, Dai Hoa Phat had to immediately stop using the signs and trademarks of SIKA, and remove these from all vehicles and products starting from April 23.

According to current regulations, using signs that are identical or similar to the point of confusion constitutes an infringement of trademark rights.

Trademark infringements with brands like SIKA are not rare in Vietnam. There have been many trademark infringements, whether intentional or unintentional, affecting the legitimate interests of businesses as well as consumer experience.

According to the statistics of the Center for Science and Technology Communication, in 2020 alone, functional forces from ministries and branches have handled up to 1,460 cases of IP infringements.

In which up to 1,320 cases were handled by administrative measures and prosecuted, with 158 cases going to court with a total of 269 defendants, and fines exceeding $1 million.

Although last year was heavily affected by the pandemic, the number of IP violations shows no sign of abating. Stepping up the handling of the above violations could be an effective way to purify the market, ensure a favourable environment for enterprises, and ensure the quality of goods that reach consumers.

By Duy Khuong

What the stars mean:

★ Poor ★ ★ Promising ★★★ Good ★★★★ Very good ★★★★★ Exceptional