Apple sends ‘ultimatum’ to mobile stores over trademark infringement

It is not uncommon for Vietnamese phone stores to use the Apple logo, the Apple and iPhone brands, along with other registered trademarks including the iPad, MacBook or Apple Store livery on their shop banners, advertisements and even their business plans despite not being authorized to do so.

Vo Tran Co. Ltd., a company hired by Apple Inc. to protect its intellectual property in Vietnam, has sent an 'announcement and recommendation letter' to mobile stores in Ho Chi Minh City and Hanoi to alert them of their trademark infringements.

A mobile phone store with an Apple logo is seen in Ho Chi Minh City.

The document claims that recipients are “using the ‘half-eaten apple’ logo and the Apple and iPhone brands on their shop front signage despite not being authorized to sell or repair Apple products.”

Specific mobile stores received variations of the same letter, which include an addendum saying those venues “were at some point selling fake products under the Apple brand name.”

Citing the law on intellectual property protection, Vo Tran emphasized in the warning letter that “using Apple brands on shop banners and business papers without Apple’s permission is an infringement of Apple’s intellectual property.”

Vo Tran has requested that the offending stores cease their unauthorized use of the Apple logo and brand name, as well as the sale of fake Apple products within seven days of receiving the ‘recommendation letter.’

Vo Tran director Vo Thi Minh Tam confirmed to Tuoi Tre (Youth) newspaper on April 9 that the move was part of a joint effort between the company and market watchdogs in Ho Chi Minh City and Hanoi.

According to a list updated on its website on February 24, 2017, Apple has nearly 300 registered trademarks, from individual product lines to technology used in the company’s devices.

The iPhone maker also states clearly on its website that in order to use Apple copyrighted material in third party businesses, an entity must submit a detailed request to the company’s copyright division.

“Only Apple and its authorized resellers and licensees may use the Apple logo in advertising, promotional, and sales materials,” the California-based company said in its guidelines for using Apple trademarks and copyrights

There are only a few companies authorized to officially provide Apple products and services in Vietnam. Among them are Futureworld, which was established in Vietnam in 2007 as an Apple Premium Reseller (APR) and Apple Service Provider (ASP), and F.Studio by FPT.

F.Studio by FPT is the official Apple-authorized dealer in Vietnam, having obtained both the APR and Apple Authorized Reseller (AAR) statuses.

Legitimate request

Vo Tran’s letter is seen as an ‘ultimatum’ for mobile stores in Vietnam to stop publicly violating Apple’s intellectual property.

Shop owners have shared photos of the letter on Facebook, discussing how to respond to the warning by the iPhone maker.

Some say the request is “irrational,” adding that it is unreasonable to ban them from including the Apple logo or brand on shop signs when they sell Apple products.

“Should I say ‘Ai Phon’ or ‘Ai Mac’ on the signs instead?” one Facebook user mocks, using the phonetic equivalents of the iPhone and iMac in Vietnamese.

However, from a legal perspective, lawyers have said that Vo Tran is doing the right thing to protect the interests of its client.

Lawyer Tran Thi Mien said the Apple logo and trademarks are both protected in Vietnam as per the law on intellectual property protection, so Vo Tran, as a legal representative of the US company, is fully authorized to demand that mobile stores cease infringing on their brand name.

Lawyer Nguyen Kieu Hung agreed that stores who use the Apple brand in their business activities without the company’s authorization are committing an obvious violation of the company’s intellectual property.

“Apple is entitled by law to request violators of its intellectual property to stop their infringement, apologize to and compensate the company,” the attorney said.

If mobile stores refuse to follow the request, Apple has the right to bring them to court, Hung added.

Le Ngoc Lam, deputy head of the intellectual property department under the Ministry of Science and Technology, also said that Apple’s request to the offending mobile shops is “totally legitimate.”

“Apple has registered protection of their products, services and brands throughout Vietnam, so they have full discretion on whether or not to allow an entity to use them,” Lam said.