US embassy cable - 03HOCHIMINHCITY767

UNCLAS SECTION 01 OF 02 HO CHI MINH CITY 000767 
 
SIPDIS 
 
STATE FOR E, EB/IPC:DRBEAN, EAP/BCLTV AND EB/ODC 
STATE ALSO PASS USTR BURCKY/ALVAREZ AND BRYAN 
STATE ALSO PASS USPTO FOR BERESFORD AND URBAN 
STATE ALSO PASS LIBRARY OF CONGRESS FOR TEPP 
USDOC FOR LASHLEY AND 4431/MAC/AP/OKSA/HPPHO 
USDOC ALSO FOR ITA/TD/OTEA/JJANICKE AND ITA/TD/SIF/CMUIR 
 
E. O. 12958: N/A 
TAGS: ETRD, EINV, ECON, KIPR, VM, IPROP 
SUBJECT: VIETNAM: LOCAL BUSINESS KNOWS VALUE OF TRADEMARKS-- 
SEMINAR A SUCCESS 
 
 
1.  Summary:  In a seminar on trademark protection in the U.S. and 
Vietnam, USG and private speakers introduced the system of 
trademark registration and enforcement in the US.  Well over a 
hundred local businesspeople attended the seminar in Ho Chi Minh 
City, which was one of four locations around the country where the 
seminar was presented.  Based on their level of attention and 
rigorous questioning, these businesspeople understand the 
importance of trademarks.  Acting CG opened the seminar by 
reminding the audience of the importance the US places on IPR and 
urged Vietnam to adopt some of the US best practices in trademark 
registration and enforcement.  End Summary 
 
2.  On August 13, the USAID-funded Support for Trade Acceleration 
Project (STAR) in conjunction with the National Office of 
Industrial Property (NOIP) and the Ministry of Trade, sponsored a 
seminar on "The Protection of Trademarks in the United States and 
Vietnam."  The seminar was conducted at the request of the GVN 
which wanted to educate Vietnamese business people on how to 
register a trademark in the US.  U.S. speakers included Ms. Lynne 
Beresford, Deputy Commissioner for Trademark Examination Policy, 
and Barbara Kolsun, Senior VP and General Counsel for Kate Spade. 
Reflecting the importance of the topic, the seminar was opened by 
Vice Minister of Trade Le Dan Vinh followed by a keynote speech 
from the Deputy Director General of the NOIP.  Well over one 
hundred local businesspeople attended along with several local 
officials involved in IPR issues.  Local press covered the event 
in some detail and urged readers to check out the USPTO website. 
 
3.  Acting CG opened the seminar by stressing the priority the 
United States places on IPR.   She linked IPR to the future 
development of Vietnam's economy by reminding the audience that 
Vietnam's trading partners regard IPR as a high priority issue and 
one that can influence foreign investment.  She acknowledged that 
the GVN, with partners like the STAR Project, was working to 
improve laws and regulations related to IPR protection.  However, 
effective enforcement was still a major problem in Vietnam.  She 
encouraged Vietnamese businesses to register their trademarks in 
the U.S. and offered the U.S. system as a model Vietnam should 
consider in crafting its system of trademark protection. 
 
NOIP Notes Value of Trademarks 
------------------------------ 
4.  Mr. Tran Viet Hung, Deputy Director General of NOIP, urged 
Vietnamese companies to recognize the value of trademarks by using 
an iconic U.S. company as an example.  Mr. Hung told the audience 
that the Coca-Cola Company was valued at approximately 60-70 
billion dollars.  Yet what he called the "real value" of Coca- 
Cola's assets was only around 15 billion dollars.  Mr. Hung stated 
that the difference in these two numbers was the intangible value 
of the Coca-Cola Company, built up over the years and in large 
part represented by the value of its trademark.  He then discussed 
the devaluation of legitimate products by counterfeits through 
loss of consumer confidence and `erosion of enthusiasm' among law- 
abiding companies.  Mr. Hung described Vietnam's system of 
trademark registration, but detailed mention of enforcement 
actions or procedures was noticeably absent.  One revelation from 
Mr. Hung's speech was that the GVN would begin publicizing 
trademark applications prior to issuing a decision in order to 
improve transparency and allow for comment from other parties. 
 
5.  According to Mr. Hung, many foreign companies have filed for 
trademark protection under Vietnamese law.  By his count Vietnam 
has issued almost 9,000 trademarks to foreign applicants. 
Conversely, he claimed that only 164 trademarks for Vietnamese 
products have been registered in the United States, with an 
estimated 54 additional Vietnamese trademarks registered in 
Europe, Asia, and the former Soviet Union.  He hoped that more 
Vietnamese companies would make the effort to register their 
trademarks overseas. 
 
U.S. Speakers Describe the U.S. System 
--------------------------------------- 
6.  Ms. Lynne Beresford, Deputy Commissioner for Trademark 
Examination Policy at the United States Patent and Trademark 
Office (USPTO), gave an overview of the U.S. legal system as it 
pertains to trademarks and provided a step-by-step description of 
the application process.  She noted that 16-18% of trademark 
applications filed in the U.S. originate from foreign entities. 
The USPTO representative also led the audience on a tour of 
www.uspto.gov and walked through the steps to file an electronic 
application. 
 
7.  Numerous questions from the audience indicated the level of 
interest in registering a trademark in the U.S.   Questioners 
wanted to know:  Was an applicant required to retain legal counsel 
or hire an agent in the U.S. prior to filing for a trademark?  Can 
foreign businesses file on-line?  Does the `confusingly similar' 
doctrine apply to words in different languages; i.e. could an 
applicant register the trademark Home Depot provided they used 
Vietnamese words?  Could individuals file for trademarks?  Several 
additional questions requested a clarification of the filing fee 
cost structure and clarification of who was considered an attorney 
in the U.S. 
 
8.  Barbara Kolsun, Senior Vice President and General Counsel for 
Kate Spade provided a private industry perspective.  Ms. Kolsun 
detailed her experiences fighting trademark infringement at Kate 
Spade and previously as head of the Calvin Klein anti- 
counterfeiting program in North and South America.  Much of her 
presentation recounted enforcement options and tactics, including 
raids against counterfeiters and legal action in civil and 
criminal courts.  Questions directed to Ms. Kolsun covered the 
methods and value of trademark enforcement, namely, how U.S. firms 
prosecute trademark infringement occurring abroad and whether the 
time and money spent on enforcement was supported by any cost- 
benefit analysis. 
 
9.  Interestingly, audience members also asked questions about 
business responsibilities in the U.S. trademark regime.  One asked 
if subcontractors working for a trademark holder were responsible 
for trademark violations if goods were stolen from their 
facilities and sold on the street.  Another inquired about the 
responsibility of the retailer to verify the legitimacy and origin 
of products received from their suppliers.  While the seminar was 
intended to help Vietnamese companies register their trademark in 
the United States, these questions illustrate the ongoing climate 
of IPR insecurity in Vietnam. 
 
10.  Comment:   The high level of attendance and staying power of 
the participants indicate that there is a real interest in 
trademark issues in the local business community.  Unlike many 
seminars in which participants start drifting away after lunch, 
nearly all of the participants remained for the full day.  The 
event ran way over time and the hotel eventually ejected the 
seminar in order to set up the room for another function.  One 
hopes that this level of interest and the understanding that 
trademark protection is something of value to Vietnam businesses 
will eventually translate to better and more rigorous enforcement 
in Vietnam.  Post will continue to support efforts to raise 
awareness of the issue. 
YAMAUCHI