Lost in Translation: VINACAFE Trade Mark Removed After Authorised Use Argument Unravels

Lost in Translation: VINACAFE Trade Mark Removed After Authorised Use Argument Unravels

Holding a trade mark registration for nearly three decades is no guarantee of keeping it. When non-use proceedings are filed and the paper trail of authorised use falls apart under scrutiny, even a long-standing registration can be cancelled. The VINACAFE case is a cautionary tale about what happens when the corporate connection between a registered owner and a using entity is too tenuous to bear legal weight.

Background: A Famous Name, a Long-Held Registration

VINACAFE is a well-known Vietnamese coffee brand with international recognition. The Vietnamese company Vinacafé Bien Hoa Joint Stock Company is the source of that fame — producing and marketing VINACAFE-branded coffee products globally.

But in Australia, the plain word mark VINACAFE (TM 721958, filed 1996, Class 30 — coffee products) has been held since 1996 by Men Xui Do, not by the Vietnamese company. Vinacafé filed to remove the mark in July 2025, covering the relevant period from 9 June 2022 to 9 June 2025.

Men Xui Do's Use Claim

Men Xui Do's case rested on a supply chain: I&T Enterprise Inc — a US company operated by her husband, in which she served as Vice President — supplied VINACAFE coffee to Lotus VN Pty Ltd in Australia, which then distributed it to Asian supermarkets. Coffee bearing the VINACAFE name had, she argued, made its way onto Australian shelves through this chain.

On the surface, it seemed plausible. The problem was in the details.

Three Fatal Problems

The mark on the shelves wasn't the registered mark. The coffee products displayed in supermarkets bore a stylised VINACAFE logo mark — a composite design with distinctive visual elements. The registered trade mark, however, was the plain word mark VINACAFE. Delegate Louise Tuohy found that the logo mark was not substantially identical to the word mark. Use of one is not use of the other.

I&T wasn't authorised to use the mark in Australia. Here the case became particularly damaging. I&T Enterprise was bound by Exclusive Distribution Contracts with Vinacafé Bien Hoa — the very Vietnamese company seeking removal of the mark. Those contracts expressly restricted I&T's distribution of VINACAFE-branded goods to the United States only. I&T had no authority to use the VINACAFE mark in Australia. Use by an entity that is contractually prohibited from using the mark in Australia cannot constitute authorised use under the registered owner's mark in Australia.

The "unity of purpose" argument didn't work. Men Xui Do attempted to argue that her role as Vice President of Tran's Family Inc — the parent company of I&T — was sufficient to establish the kind of controlling relationship needed to treat I&T's use as her own. But the corporate documents did not demonstrate common directorship between Do and I&T itself. A senior position in a parent company is not the same as exercising control over a subsidiary's use of a trade mark in a specific country.

The Decision

Delegate Tuohy found that the evidence did not establish use of the registered word mark in Australia during the relevant period by Men Xui Do or any authorised user. Late-filed evidence from both parties was excluded as being of limited probative value. No obstacles to use were established. The discretion to maintain the registration was not exercised. Costs were awarded against Men Xui Do.

Practical Takeaways

• The mark you use must match the mark you registered. A stylised logo is not automatically the same as a plain word mark. If you use a device or composite mark in practice, ensure you have protection for both the word alone and the composite form.

• Distribution agreements can cut both ways. If the entity distributing your goods under a mark is contractually limited to a specific territory, use outside that territory may not count — and could even undermine your position in third-country proceedings.

• Corporate structures require clear documentation of control. Being an officer of a parent company does not automatically mean you control how a subsidiary uses your trade mark. The law requires evidence of actual oversight and direction. Paper structures alone will not suffice.

• File evidence of use contemporaneously. Reconstructing a use chain years after the fact is difficult. Sales records, invoices, and distribution agreements should be maintained from the outset, not assembled in a hurry when proceedings commence.

Citation: Men Xui Do v Vinacafé Bien Hoa JSC [2026] ATMO 130 (14 July 2026)

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