Trademark Infringement Lawsuit

I. Details of the incident

In January 2018, HQ Vina Company filed an application to register the trademark “HQ, image” for group 35: trading and distribution of lighting fixtures and decorative lamps.

In July 2018, HL Group filed an objection to the granting of a patent to HQ Vina.

In June 2018, HQ Vina Company filed an application to register the trademark “HL, image” for group 11: lamps, electric lamps, lighting fixtures, ceiling lamps, flashlights; group 37: construction and installation services for interior and exterior equipment; installation and repair of lamps, decorative lamps; installation of electrical systems;

The HL trademark, registered under group 11: lamps, electric lamps, lighting fixtures, ceiling lamps, chandeliers (excluding lamps for sanitary fixtures); group 37: installation and repair services for lamps, decorative lamps; electrical system installation, filed in July 2018 by HQ Vina Company, has been registered nationally.

In December 2018, HL Group filed a lawsuit against HQ Vina Company in the Ho Chi Minh City Court. The lawsuit’s claims were as follows:

1. The plaintiff alleges that HQ Vina Company infringes on the intellectual property rights of HL Group Company regarding the protected trade name and trademark.
2. We compel HQ Vina company to cease its infringing activities.
3. The authorities ordered HQ Vina company to publicly apologize and correct its violations.
4. The court ordered HQ Vina to pay HL Group the maximum amount of 500,000,000 VND in compensation for material damages as stipulated by the Intellectual Property Law.
5. The court ordered HQ Vina to pay HL Group the maximum amount of compensation for emotional distress stipulated by the Intellectual Property Law, which is VND 50,000,000.
6. The company HQ Vina is required to completely remove the “HL, image” logo from all documents, promotional materials sent to customers, on its website, on social media, and on its signage.

The industrial property expert’s conclusion states: The mark “HL and image” affixed to the signboard of HQ Vina Co., Ltd. – as shown in document 1 – infringes on the rights under group 42 of trademarks protected under the Trademark Registration Certificate of HL Group Company.

The “HL and image” mark affixed to the website interface of HQ Vina Company—as shown in document 2—infringes on the rights under group 42 of the trademark protected under the Trademark Registration Certificate of HL Group Company.

The expert assessment report is a Trademark Registration Certificate, protecting trademarks in groups 19, 21, 35, 37, and 42. However, groups 19, 21, 35, and 37 were not considered in this assessment conclusion.

Trademark disputes occur very frequently.

In May 2019, the Ho Chi Minh City Court issued a notice of acceptance of the case. Worried that HL Group’s lawsuit would completely cripple HQ Vina’s business operations, HQ Vina’s representatives sought advice from Inter Justice lawyers to develop a strategy to protect HQ Vina.

II. Legal provisions related to the case

Intellectual property law stipulates the following:

Article 76. General conditions for protected trade names

A trade name is protected if it is capable of distinguishing the business entity bearing that trade name from other business entities in the same field and geographical area.

Article 204. Principles for determining damages caused by infringement of intellectual property rights

1. Damages resulting from intellectual property infringement include:
2. b) Moral damages include losses to honor, dignity, reputation, and other mental losses caused to the author of a literary, artistic, or scientific work; the performer; the author of an invention, industrial design, layout design, or plant variety.

III. Legal Solutions from Lawyers

• The plaintiff’s claim is unfounded because:
• HQ Vina Company does not conduct business

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  with Group 42: architectural consulting, interior design, and construction design of civil and industrial works, as sued and assessed by HL Group Company according to the expert assessment conclusion.
• The service under consideration, according to the Industrial Property Expertise Conclusion, is “consulting and providing interior decoration products and equipment.” This service does not infringe on the rights of group 42: architectural consulting, interior design, and construction design of civil and industrial works, because the HL trademark registered for group 11: lamps, electric lamps, lighting fixtures, ceiling lamps, chandeliers (excluding lamps for sanitary equipment); group 37: construction, installation and repair services for lamps and decorative lamps; electrical system installation, of HQ Vina Company, has been nationally registered. Group 37: construction, installation and repair services for lamps and decorative lamps; electrical system installation is related to group 42: architectural consulting, interior design, and construction design of civil and industrial works. However, the trademark registered for group 37 is still protected, so the trademark of group 37 is not similar to or confusingly similar to the trademark of group 42 [because decorative lamps are also considered interior furnishings]. There is no evidence to prove that the defendant provided advice or supplied interior decoration products and equipment.
• The claim for compensation for emotional distress is unfounded, as the claimant is not entitled to compensation for emotional distress.
• There is no basis to prove material damage, as there is no evidence to support it.
• The claim for trademark infringement is unfounded, as there is no evidence to prove that HL Group’s trademark is protected.
• Based on the above grounds, we request that the Court dismiss all of the plaintiff’s claims.

IV. Court Judgment

• The court accepted the lawyer’s arguments and dismissed all of the plaintiff’s claims.
• Thus, HQ Vina Company has protected its business operations and intellectual property rights.