Across most of the world, the word "X-Men" has always been used to refer to a brand of Marvel comics involving mutants and heroes of such. Thus, it came as a surprise for many to learn that in Vietnam, it had lost the cases regarding using its own name in Vietnam. Furthermore, this mark a new turning page for the development of IP law in Vietnam.
Marvel Characters Inc. ("Marvel"), a well-known comic company based in the United States, is the plaintiff in this case. It is the owner of copyright to numerous well-known works, including "X-Men," a popular comic and movie about a group of mutant superheroes that is well-known and adored by viewers worldwide. Marvel is also the owner of the "X-MEN" trademark, which is registered in a number of nations, including Vietnam. In Vietnam, the mark is safeguarded by the trademark registration certificate No. 11455, which the National Office of Intellectual Property ("NOIP") issued on April 07, 1994, for goods in classes 09, 15, 22, and 28.
The government body in charge of Intellectual Property of Vietnam, the NOIP, is the defendant of this case. On June 8, 2005, it issued Decision A05811, which granted International Consumer Product Company ("ICP" for short) a Trademark Registration Certification for the trademark "X-Men & Device" in class 3, in relation to shampoo.
Following ICP's registration, Marvel filed a petition on August 8, 2006, seeking cancellation of registration no. 63481. It claimed that ICP's X-Men trademark did not meet the requirements for protection on three legal grounds: (a) coinciding with Marvel's well-known trademark "X-MEN" ; (b) identical with Marvel's character names; and (c) taking advantage of Marvel's X-MEN trademarks and characters in advertising and marketing in a way that confuses consumers. All are in violation of the current IP law and relevant decree. After reviewing Marvel's request, The NOIP denied Marvel's request for cancellation on January 22, 2008, citing the following reasons after reviewing the cancellation petition and the supporting documentation provided by the parties:
- In accordance with the Vietnamese 1995 Civil Code and other regulations, character names are not protected by copyright. Moreover, "X-Men" is not a character name, but rather, an organization in the work which contains various characters with different superpowers. As such, Marvel does not have exclusive rights to the name of the character used in its work in relation with ICP's trademark.
- The ICP's contested mark was not identical or similar to characters in Marvel's works. In addition, there is no likelihood of confusion, since the contested mark fell within class 3, while Marvel's covered 9, 16, 25, and 25. Thus, there was no likelihood of confusion among consumers.
- Marvel was not able to prove the well-known status of the mark in Vietnam. Some argue that it was due to the overharsh criteria of a well-known trademark at the time. Nonetheless, was not possible to find that ICP had engaged in unfair competition against Marvel in this nation since it had not been able to demonstrate its brand and products were well-known to Vietnamese customers.
Subsequently, Marvel filed an appeal with the Ministry of Science and Technology ("MOST"). The MOST, similar to the NOIP, came to the conclusion that there was no justification for ICP's trademark to be canceled. As a result, the MOST denied Marvel's request to have ICP's trademark revoked on July 11, 2008.
Owing to the administrative complaint's failure at both levels in accordance with the denunciation and complaint resolution procedure, Marvel filed an administrative lawsuit, which was approved by the Hanoi People's Court on October 8, 2010. The NOIP took part in the proceedings as the defendant, Marvel as the Plaintiff, and ICP as the party with relevant rights and interests, according to the court's record. Following a hearing, the Hanoi People's Court administrative court issued a first-instance administrative judgment on March 29, 2013, rebutting Marvel's petitions and stating that the trademark X-Men, registered under registration number 63481, remains valid in the interim. The first instance ruling no. 03/2013/HCST entered into force since there was no appeal.
2. The issues surrounding the case.
a) The relation between copyright and trademark right
One of the issues raised in this case is what signs can be deemed as identical or not, with "a character which Is already under the copyright of another person".
Marvel contended that the trademark "X-MEN & device" of the ICP did not meet the standards for protection because it was identical to the name and character X-MEN under Marvel's copyright, citing the aforementioned as support. However, the Trial Panels have determined that, in contrast to ICP's X-MEN, which depicts the image of "A real man," Marvel's X-MEN features a team of mutant superheroes rather than a single character, and each member of the team has a unique name. Thus, the ICP's trademark was not deemed to be identical to Marvel's copyright. Unfortunately, the court has not specifically affirmed the aforementioned information, nor has it provided a straight response to the query of why the ICP trademark "X-MEN & device" is not identical to the character and figure X-MEN as defined by Marvel's copyright.
It should be mentioned that the NOIP made a more comprehensible approach regarding this issue, and It was clear from the ruling that the Trial Panels have more or less taken inspiration from it. It becomes even more clear when the Trial Panel does not offer a clear ruling on this matter nor investigate.
b) Regarding the issue of well-known mark
Notably, the Court's decision failed to provide a concise and precise explanation for why Marvel's "X-MEN" trademark is not considered well-known in Vietnam. It is possible that the Trial Panel's conclusions contributed to the Court's decision to reject Marvel's "X-MEN" trademark recognition since Marvel's submitted evidence "had not been determined/certified by a competent authority." Unfortunately, the Court has not indicated which authority is capable of deciding whether or not to certify such evidence.
Comparably, it is also challenging to comprehend the Trial Panel's conclusion that Marvel did not have a cosmetic product at the time ICP filed its application for registration of the disputed mark and that Marvel's sales figures for goods bearing the mark did not distinguish between sales of pharmaceutical product, beauty care product.
It is important to remember that one of the factors used to determine whether a mark is well-known under the IP Law is sales numbers. However, it is customary to read these "sales figures" as the turnover of all sales of products and services carrying the mark, regardless of class. Given this, it is interesting to notice that the Court determined that Marvel's "X-MEN" must be used for "products of the same kind" in class 03 and that the sales numbers must show the percentage of sales of "products of the same kind," such as cosmetics, in order for it to be deemed well-known.
It was worth noting that the NOIP had earlier offered a more thorough justification for its ruling that Marvel's "X-MEN" is not a well-known mark. In particular, as required by Article 4.20 of the IP Law, the evidence presented by Marvel did not show that "the Vietnamese customers really know about the trademark "X-MEN" of Marvel.". Unfortunately, the Court also did not investigate and offer a ruling on this matter.
c) Regarding the unfair competition issue
Among 3 legal grounds cited by Marvel in its request for cancelation of the ICP's trademark, only the third legal ground —the alleged bad faith of ICP—that Marvel mentioned in its request to have the ICP's trademark canceled has gotten a formal answer from the Court. In particular, the Trial Panel decided that "there is no basis to determine that ICP was in bad faith and took advantage of the reputation of Marvel's trademark "X-MEN" because Marvel was unable to produce any documentation proving that ICP had, as claimed, used images of globally renowned actor Brad Pitt and the Hollywood icon to promote its products.
In response to Marvel's request for evidence gathering, the Court sent two formal letters to the Ho Chi Minh City Department of Health, but they never received a response. Moreover, Marvel was unable to produce any documentation demonstrating its ownership of the pictures featuring the well-known actor Brad Pitt and the symbol linked to the term "Hollywood.". Thus, it is definitive that there was no proof of the alleged bad faith of the ICP on this matter.
3. Conclusion
After a 7-year long trial with the NOIP, the MOST, and the Court of Law, Marvel has failed to prove that the ICP's "X-Men" mark is similar to that of its own mark. Even if the NOIP victory over Marvel shouldn't come as a surprise, this case may nevertheless be seen as significant in the evolution of Vietnam's Intellectual Property framework and demonstrated the necessity of enhancing the professional aptitude of Vietnamese judges in this emerging and specialized area of law.
4. Some afterthought of the case
The essence of this case can be split into 2 issues: the status of the well-known mark, and the overlapping area of copyright and trademark. Regarding the first issue, this case demonstrates that character name does not provide copyright protection on their own, especially in cases where there are no real references to the copyrighted material and the names are registered as trademarks. However, even though the unfair competition claim was denied in this instance, claims of a similar nature might still be granted in other situations if the evidence demonstrates that the brand in question was well-known enough for customers to mistakenly associate with the copyrighted character, and associate goods sold under that name originate from or are approved by the character's owner
Moreover, the then overly rigorous requirement to prove that a mark was a well-known mark truly undermined the whole case for the Plaintiff, since many of the Trial Panel conclusions came from the fact that Marvel was not able to prove to the NOIP that its mark was considered to be well-known in Vietnam. One could argue that this case is one of the incentives for the amendment of the latter IP law, specifically 2022's version, which greatly reduced the number of requirements needed to prove the well-known status of the mark. If the case was reopened in today's legal climate, especially after the barrage of superhero movies, it is likely that the NOIP will not have as much of a chance as it did before.
