Our client, Johnson & Johnson (“J&J”), is an American-based multinational medical devices, pharmaceutical and consumer packaged goods manufacturing company. Neutrogena is one of its well-known trademarks registered for cosmetics in many countries including Vietnam. Because of its considerable reputation and goodwill, it is also one of the most counterfeited cosmetic brands. In the past, we have already assisted the Client in its fight against counterfeit Neutrogena products and have successfully stopped several Vietnamese infringers through amicable dispute resolution.

In 2021 the Client detected again rampant counterfeiting activities against its Neutrogena brand in Vietnam. Counterfeit products bearing the trademark Neutrogena were advertised rampantly for sale and sold on different e-commerce platforms such as Lazada, Sendo, Shopee…, social networks such as Facebook. However, the Client had difficulty to identify the real person behind such counterfeiting activities.

D&N International (DNI) was engaged by the Client to conduct an investigation to identify the infringer and his/her counterfeiting activities. Upon investigation conducted by our in-house investigator, the infringer was identified as a Vietnamese individual named Nguyen Ngoc Q residing in Hanoi. He operated an “underground” store in a residential building from where he might ship counterfeit Neutrogena products offered for sale on the internet (e-commerce platforms, social networks). He had also registered the domain name <neutrogena.com.vn> and operated the website www.neutrogena.com.vn), on which he offered for sale Neutrogena products.

Snapshot of an infringing online shop taken from shopee.vn

On behalf of the Client, we have sent a Cease and Desist letter to Mr. Q. Unlike other infringers we had dealt with in the past, Mr. Q did not seem sufficiently cooperative, as he rather tried to drag things on as a tactic to avoid responsibility. Thus, the Client was advised to take an administrative action before the Inspectorate under Ministry of Science and Technology (“MoST”) to stop his infringing activities and force him to transfer the domain name <neutrogena.com.vn> to the Client.

Having examined our complaint lodged in early June 2022, the MoST Inspectorate agreed that J&J was the sole owner of the protected trademarks “Neutrogena”, thus the act of selling products bearing the trademark “Neutrogena” constituted infringement of J&J’s trademark and the registration and use of the domain name <neutrogena.com.vn> constituted an act of unfair competition. However, taken into consideration Mr. Q’s cooperative attitude (recognition of responsibility, agreement to stop infringement and render the domain name), the MoST Inspectorate issued on October 03, 2022 a Conclusion Notice ordering Mr. Q to stop infringement and render the domain name. In case of non-compliance or recidivism, he would face stricter sanctions in accordance with the law.

The Inspectorate’s Conclusion Notice was sent to VNNIC for the purpose of domain name transfer in accordance with the Joint ministerial Circular No. 14/2016/TTLT-BTTTT-BKHCN guiding the order and procedures for changing and revoking domain names infringing upon IPRs, signed by MoST and the Ministry of Information and Communication (“MoIC”).

To our great surprise, however, VNNIC arbitrarily opposed to our request to directly transfer the domain name to J&J in order to avoid possible registration by a third party. Instead, it intended to make it available for registration on a first come, first served basis. On behalf of the Client, we lodged a complaint against VNNIC’s decision. Our lawyers then had to have several working sessions with VNNIC officers to explain legal grounds to ensure safe transfer of the domain name to the Client. As a result, we have successfully registered the domain name in the name of J&J.

This article is also published on our website at dnlaw.com.vn.