Name of recommendations: The Thien Phu Thanh Co., Ltd has filed an application for registration of Kita's brand that infringes the trademark of the Binh Tan Company

Status: Has not been responded

Recommended by units: The Binh Tan Consumer Goods Production Co., Ltd

Official letter: No 0707/PTM - VP, dated: 2018-04-12

Recommended contents:

The Binh Tan Company has a history of nearly 30 years of manufacturing and trading high quality footwear in the Vietnamese market and now is one of the leading companies in this field. Bita's products are selected by Vietnamese consumers as high quality products for many consecutive years, in addition to the Gold Star Award, Vietnam Prestige Brand ... by the central and local organizations. The Binh Tan Company has 5 branches in Lao Cai, Hanoi, Da Nang, Ho Chi Minh City. and Can Tho City with over 1,000 agents.  

The brand of "BITA'S" was registered for the first time in Vietnam since 1992 under the Certificate of Trademark Registration (GCNDKNH) No. 6776. Since then, in the process of expanding production and business, the Company has successfully registered many "BITA'S" brands for footwear products / services in group 25, such as: GCNKKK No. 15821 & 15822 issued on March 17, 1995; the Registration Certificate No. 25379 & 25380 issued on October 24, 1997, the Registration Certificate No. 33062 was issued on January 10, 2000, Registration Certificate No. 66969 was issued on September 30, 2005.

In 2013, the Binh Tan Company found on the market appeared Kita's footwear brand produced by the hien Phu Co., Ltd. We have submitted dossiers and documents to the Institute of Science and Intellectual Property for assessment. On December 25, 2013, the Institute of Science and Intellectual Property has concluded the sign of "Kita's" on the footwear products of Thien Phu Thanh Co., Ltd. is the infringing element of Bita's trademark that is protected of the Binh Tan Company.

A representative of the Binh Tan Company is Truong Xuan Co., Ltd (hereinafter referred to as Truong Xuan Company) under the Contract No. 014 / HD-SHCN / 2015 dated 30 March 2015 that submitted the application to the National Office of Intellectual Property. (hereinafter referred to as the NOIP) requested to cancel a part of the validity of Certificate of Trademark Registration No. 237061 issued on December 10, 2014, the trademark "kita's" granted to the Thien Phu Thanh Co. Ltd. This trademark does not meet the protection conditions at the time of granting the protection title under Article 74.2.e of the I Law on ntellectual Property.

Then, at the request of the Department of Intellectual Property, the Binh Tan Company has provided sufficient documents to prove the brand "BITA'S" is widely used and recognized in Vietnam.

During the two years 2016-2017, the Binh Tan Company, represented by the Truong Xuan Law Company, repeatedly sent a written notice to the Department of Intellectual Property to resolve the case. On October 3, 2017, the Department of Intellectual Property sent a document to the Truong Law Company (the representative of Thien Phu Thanh Company) requested to comment on the objection of the Binh Tan Company within 01 month. However, we have not received any response from the Department of Intellectual Property so far. Recently, the company has continued to receive information that the Thien Phu Thanh C. Ltd continues to apply for registration of trademark Kita's and infringe the trademark of the company as above (No. 4-2017-37186).

The achievements that the Binh Tan Company has achieved today that is the trade-off with sweat, effort of all employees of the company on a long way. Therefore, the enterprise is very angry against the unlawful behavior of many individuals and businesses which have been taking advantage of prestige and reputation of the Binh Tan company to profit themselves. The company is also suffering heavy losses caused by the Thien Phu Thanh Co., Ltd.

Therefore, Binh Tan Company would like strongly recommend to the Ministry of Science and Technology to intervene in time and inform the company of the resolution of the above case as soon as possible.