Two big wheat flour manufacturers sued for “bamboo hedges”

VietNamNet Bridge – The two big guys in the food processing industry, specializing in making products from starch and wheat flour, have become the defendants in the lawsuits in which they have been accused of using others’ brand when exporting products to the US.

Tufoco, a company in the southern province of Tien Giang, registered its trademark and got the certificates from the Vietnam National Office of Intellectual Property (NOIP) and the US competent agencies on the protection over the trademark. This includes the picture of three bamboo trees, the words “bui tre” and other special words in Chinese.

This is the trademark of Vietnamese traditional rice paper, mostly used to make nem (spring rolls).

Tufoco has recently, through its sales agents in the US, has found that Safoco, a HCM City based company and Tigifood in Tien Giang province also export their products with the “bui tre” trademark and the picture of three bamboo trees. The products of the two companies have been available at SF Superstore in the US. Especially, on the packs of the two companies’ products, one can see the sign ®, which means the trademark has been registered.

Mai Van Nuoc, Deputy Director of Tufoco, has affirmed that Safoco and Tigifood have committed the intellectual property infringement when using the trademarks similar to Tufoco’s trademarks, being protected by the laws.

Nuoc said in September 2009, Tufoco sent a dispatch to Safoco, requesting to stop making the products with bui tre trademark and recall the products on the US market.

However, Safoco has not done the thing requested by Tufoco, which has prompted Tufoco to take legal proceedings against the violator.

Some years later, Tufoco discovered that Tigifood also exported products to the US with the trademark of three bamboo trees.

Tigifood then argued that it simply made the products to the orders of a company which provided packs and sets design and trademark. It also said that the trademark was not exactly the same with Tufuco’s trademark; therefore, it did not violate the laws on intellectual property.

Tufoco then brought the case to the court which then decided that Tigifood had to pay VND153 million as the compensation for Tufuco’s loss.

Not only suing domestic companies, Tufoco also took legal proceedings against the US SF Superstone for the import and distribution of the products using Tufoco’s trademark illegally.

The California court then decided that SF Superstone had to pay $60,000 as the compensation.

Dying of “ignorance”

Lawyers believe that in that case, the defendants suffered because of the lack of knowledge about the intellectual property laws.

Tigifood, for example, thought that it merely did the outsourcing as ordered by the clients, and packed the products in the way requested by the clients. It believed that it did not violate the laws because the products did not bear its brands.

The enterprise might think that it would be innocent in case the infringement was discovered, and that only the foreign partner would be punished by the laws.

Tran Cong Ly Tao from the HCM City Bar Association has warned that more similar cases may occur in the future.

Truong Dinh Hoe, Secretary General of the Vietnam Association of Seafood Exporters and Producers VASEP said the majority of Vietnamese enterprises, not only in the farm produce industry, but in many other fields, have been doing the outsourcing for foreign companies. This means that they only make products in accordance with the design and packaging set by clients.

Doanh Nhan