In July 2008, Anheuser-Busch, represented by Lê & Lê, won a major victory in the Ministry of Science & Technology (MOST).  On July 22, 2008, the Inspectorate of the MOST ordered Phuong Trinh Investment & Trading Jsc – a local distributor of Budweiser Budvar beer of Czech brewery Budejovicky Budvar in Vietnam (“Phuong Trinh”) – to stop importing, advertising, selling beer products bearing the words “BUDWEISER BUDVAR, N.C.” on the label/can (as shown in the attached photo). 

After having stopped selling the Czech brewer’s beer with the name “BUDWEISER” in block letters on the label/can pursuant to the cease and desist letters of Anheuser-Busch and Lê & Lê, in April 2008, Phuong Trinh started selling the Czech brewer’s beer having the words “BUDWEISER BUDVAR, N.C.” on the label/can, which were represented in bold type (standard block letters, big size, prominent color) and in an eye-catching position on the front label.

Phuong Trinh argued that its activity did not infringe Anheuser-Busch’s trademarks “BUDWEISER” (Reg. No. 37578) and “Budweiser” (Reg. No. 37579) as “BUDWEISER BUDVAR, N.C.” was the trade name of the Czech brewer.

The legal issue of this case is whether Phuong Trinh’s activity is an exception to the trademark law based upon trade name law. In other words, whether Phuong Trinh is entitled to make use of the “trade name” defence under the trademark law.

Trademark owners have the exclusive right to prevent third parties from using in the course of trade identical or similar marks for goods/services which are identical or similar to those in respect of which the trademark is protected where such use would be likely to cause confusion.  However, this exclusive right is not without limitations.  Article 17 of TRIPs permits Member States to provide limited exceptions to trademark infringement, “provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties”. Often, countries provide for the fair use of trade names even though it otherwise might have been an infringement.

Under Article 125.2(h) of the Vietnamese IP law 2005, which provides for the “fair use” of trademark, the owners of trademarks have not the right to prevent others from “honestly using names of persons.”

In their request, submitted to the MOST’s Inspectorate, for administrative enforcement against Phuong Trinh, Lê & Lê argued, among others, that the above - mentioned manner of representing the words “BUDWEISER BUDVAR, N.C.” should not be considered “honest” because: (i) it intentionally dilutes the border line between Anheuser-Busch and the Czech brewer in terms of trademark rights for the name BUDWEISER, which was clearly established by the NOIP in 2000 – the former has the exclusive right to use the trademarks BUDWEISER in block letters and Budweiser in lowercase for beer; while the latter has only the right to use the combining trademarks “Budweiser Budvar (stylized) & Device” and “Budweiser Budbrau (stylized) & Device” as shown in its two International Registrations Nos. 614536 and 614537 for beer –, and, therefore, unfairly affects the value of Anheuser-Busch’s trademarks; and  (ii) the manner is not in accordance with fair practices in this business – it is not necessary to use this manner to show the trade name and in fact, this manner is completely different to the common manner of using trade names  by other beer producers (trade names in small size and positioned in rear label).  Lê & Lê also drew the MOST Inspectorate’s attention to the fact that the trade name of the Czech brewer as shown in its international trademark registrations which have been being protected in Vietnam and in the ROMARIN  of WIPO is Budejovicky Budvar, Narodni Podnik, other than Budweiser Budvar, NC.

In addition, Lê & Lê attorney argued that using the words “BUDWEISER BUDVAR, N.C.” in this manner would be very likely to cause confusion with Anheuser-Busch’s BUDWEISER trademark.

Both the NOIP and the MOST Inspectorate agreed with the above-mentioned opinions of Lê & Lê.

Finally, Phuong Trinh, in its letter dated August 8, 2008 to the MOST’s Inspectorate and Lê & Lê,  admitted its act of infringement of Anheuser-Busch’s BUDWEISER trademark, requested for an extension of time until August 17, 2008 to have all infringing products removed from the market, and undertook not to re-commit the infringement.  Anheuser-Busch accepted this request of Phuong Trinh.

Lê & Lê attorney Le Hoai Duong represented Anheuser-Busch.