Parties should clearly stipulate scope of license
29 March 2023
Parties should clearly stipulate the scope of their license agreement.
According to Yen Vu, executive and country manager of Rouse Legal Vietnam in Ho Chi Minh, this is one of the key takeaways from the recent development involving the Miss Universe Organization (MUO), Saigon Universe Corporation (Unicorp) and Miss Universe Vietnam JSC.
In February, MUO announced the non-renewal of its contract with Unicorp. As the organizer of Miss Universe Vietnam for the past 15 years, Unicorp had been sending the country’s official representative to Miss Universe.
With the contract’s non-renewal, Unicorp can no longer use the Miss Universe brand and the name “Miss Universe Vietnam.” According to MUO’s manager JKN Global Group, this includes the Vietnamese translation "Hoa Hau Hoan Vu Viet Nam.”
MUO also made it known that Miss Universe Vietnam JSC, which sends the country’ official representatives to Miss World and Miss Grand International, is the copyright owner of Miss Universe Vietnam.
However, Unicorp said Miss Universe Vietnam JSC does not have the right to use Miss Universe Vietnam’s Vietnamese name because its contract with JKN merely covers the right to send local candidates to Miss Universe and its ownership of the brand. Thus, Unicorp stated they will continue holding the Hoa Hau Hoan Vu Viet Nam pageant.
“From what was reported in the media, it seems that the license agreement does not specifically mention the Vietnamese version of ‘Miss Universe’ marks under the scope of the agreement. Therefore, Unicorp seems to rely on this to explain that the scope of license does not cover the use of Disputed Sign and the company also considers Disputed Sign as belonging to Unicorp as an independent name for an independent pageant but not the Vietnamese translation,” said Vu.
It is also worthy to note that while the word element “Hoa Hậu Hoàn Vũ” was considered generic and was disclaimed by IP Vietnam in a previous registration, Unicorp seems to argue that these word elements are eligible for trademark protection.
Another key takeaway, according to Vu, is that intangible assets (IAs) should be at the centre of a company’s business strategy
“While Unicorp has been established and organized beauty contests for a long time, the trademark portfolio of this company appears to be limited to only 03 “Unicorp”/ “Unimedia”-formative marks. This appears to be rather common for local Vietnamese entities where IAs do not seem to attract significant attention from their owners. Having a clear and long-term business strategy with intellectual property rights right at the centre of it is a must for any company to steadily grow and sustain, and at the very least, protect itself from potential disputes with competitors,” she explained.
According to Vu, there are no trademark applications/registrations bearing the disputed sign in Vietnam under any company.
Fortunately, the case now seems to be resolved via negotiation between the parties.
- Espie Angelica A. de Leon
