FPT UNIVERSITY

INDIVIDUAL ASSIGNMENT

Student’s name : Nguyễn Thị Ngọc Anh

Class : MKT1703
Student ID : HS163252
Subjects : LAW102
Majors : Digital Marketing

Ha Noi, 26th Febuary, 2024

 Company A is the owner of the trademark "STARBUCKS COFFEE and device"
registered for coffee products, coffee-containing beverages of Class 30 and the services of
coffee and refreshment shops of Class 43 under the Certificate of Trademark Registration
No. 75523 issued on September 28, 2006. The trademark is being protected in Vietnam.

Question 1. Company A discovered that Company B had already filed a trademark

application for "STARLUCKS TEA & JUICE and device" at the Vietnamese National
Office of Intellectual Property for tea and juice products on August 20, 2019. From your
own perspective, can the mark "STARLUCKS TEA & JUICE and device" for tea and juice
products be registered?

Question 2. How can Company A do to protect their legitimate rights against Company B
when Company B uses "STARLUCKS TEA & JUICE and device" for tea and juice
products?
Answer:

Question 1:
Company A: STARBUCKS
Company B: STARLUCKS

The mark “STARLUCKS TEA & JUICE and device” can not be registered for the following
reasons:

Using signs similar to goods or services similar to or related to goods and services on the list
registered with that mark, if use is likely to cause confusion as to the origin of goods and
services.

To distinguish confusing signs:

STARBUCKS – STARLUCKS

- Structure: 9 characters, the order of letters is the same S - T - A - R - - U - C - K - S, initial

sound STAR, repeated vowels UCKS, STAR overlap, UCKS overlap.

- Pronunciation: Both pronounce STAR/BUCKS, STAR/LUCKS.

- Presentation: White text, blue background, both have 2 white circles, 2 similarly arranged
stars, 2 same fonts.
- Similar confusion: Products are all drinks.

According to point d, clause 1, Article 95 of the Trademark Law, unless otherwise provided,
the sign is identical or confusingly similar to another's registered trademark for identical or
similar goods or services. from which the registration of the mark has been terminated for less
than five years. As a result, company B has violated Unauthorized use of other people's
trademarks for commercial purposes. Illegally using another person's trademark for conducting
the business is the act of producing and trading in counterfeit trademark goods, which violates
trademark rights: According to the provisions of Article 11, the Government's Decree No.
99/2013/ND-CP on administrative violations in the field of industrial property.

For above reason, company B will suffer the following consequences:

- Forceful removal of infringing elements, forcible destruction of infringing elements, and

forcible destruction of infringing goods are all ineffective in removing infringing elements.

- For acts of violation, forcible removal from Vietnamese territory of infringing transit products
or forcible re-export of infringing imports once the infringing elements have been eliminated.
- Forcible removal of infringing goods or services information from advertising media,
electronic news sites, or modifying or withdrawing business names or domain names that
contain infringing aspects.

Question 2:
Company A can take the following steps in case their trademark is infringed:

Cease and Desist Letter: The infringed company can send a cease and desist letter
to the infringing company, demanding them to stop using the logo and potentially seeking
compensation for damages.

Copyright Registration: If the logo is not already registered, the company can register it
with the appropriate copyright office. This provides legal evidence of ownership and
strengthens their case in any legal proceedings.

Legal Action: If the infringing company does not comply with the cease and desist letter or
continues to use the logo without permission, the infringed company may choose to take
legal action. This could involve filing a lawsuit for copyright infringement and seeking
damages.

Trademark Protection: In addition to copyright, the company can also consider registering their
logo as a trademark. Trademarks provide broader protection and can help prevent others from
using similar marks in a way that may cause confusion in the marketplace.

Monitoring and Enforcement: It's important for companies to actively monitor and enforce
their
intellectual property rights. This includes conducting regular searches for potential infringemen
ts, monitoring competitors' activities, and taking appropriate action when infringements are
identified. It's worth noting that copyright laws and enforcement mechanisms can vary by
jurisdiction, so it's advisable for companies to consult with intellectual property lawyers who
specialize in copyright and trademark law to ensure the best course of action for their specific
situation.