MEGA MGC COFFEE: A “Reversal” Strategy and Lessons in Trademark Rights Establishment in Vietnam

in IP Practice, Trademark in Vietnam, Vietnam

In Vietnam’s trademark registration practice, numerous international brand owners have been forced to withdraw from the market upon facing a critical deadlock: their applications were refused due to conflicts with prior-filed marks. When the likelihood of reversing such a refusal is deemed “very low”, the boundary between successfully introducing a multi-million dollar brand into a new market and leaving empty-handed often hinges solely on a timely strategic decision.

The case of MEGA MGC COFFEE – South Korea’s second-largest coffee chain – in Vietnam serves as a compelling illustration of such a turning point. In what initially appeared to be a foregone conclusion following a refusal notice issued by the Intellectual Property Office of Vietnam (IPVN), KENFOX’s professional resolve and differentiated strategic approach enabled the client to transform what was deemed “almost impossible” into a remarkably successful journey toward trademark protection.

Background

Ann House Co., Ltd. is the owner of the trademark “MEGA MGC COFFEE, device”, a well-known franchise coffee chain in South Korea established in 2015. By 2024, the brand had surpassed 3,000 outlets, becoming the second-largest coffee chain in South Korea, with brand ambassadors including footballer Son Heung-min and the K-pop group ITZY.

In 2017, as part of its expansion plan into the Vietnamese market, an application for registration of the trademark “” “MEGA MGC COFFEE, device” was filed in Vietnam. However, in 2020, the Intellectual Property Office of Vietnam (IPVN) refused protection on the ground that the mark was confusingly similar to an earlier-filed trademark, details of which are as follows:

Cited Mark:

Class: 43 (Café services; food and beverage services)

Application No.: 4-2016-36279
Filing Date: 15 November 2016

Registration No.: 317883

Date of Grant: 11 April 2019

Owner: Vietmega Joint Stock Company

Address: 11 Ham Nghi Street, Nguyen Thai Binh Ward, District 1, Ho Chi Minh City, Vietnam

The client’s former IP representative expressed a pessimistic view, advising that: “The refusal issued by the IPVN is well-founded, and the likelihood of reversing the situation is virtually impossible. The client should consider abandoning the application”.

In this context, the client appointed KENFOX IP & Law Office as a final recourse to reassess the legal grounds, reinforce the evidentiary record, and formulate an appropriate strategy aimed at protecting its legitimate rights and interests

Case-Handling Strategy

At KENFOX, even where a refusal may appear to be “well-founded”, we do not follow the beaten path or treat the refusal as an “irremediable” outcome. Rather than adopting a passive approach, upon being instructed in this matter, we undertook a comprehensive review of the record with a view to identifying viable alternative avenues.

1. In-depth Analysis of the “Overall Commercial Impression”

Based on the legal logic of Article 74.2(e) of the Intellectual Property Law, KENFOX has developed a rigorous argumentative framework to distinguish the applied-for mark from the cited mark, asserting that: (i) although both marks contain the shared word elements “MEGA” and “COFFEE”, these are common/descriptive components in the coffee services sector; accordingly, their inherent distinctive function is limited and must be assessed in conjunction with the remaining elements of the marks; and (ii) emphasis should be placed on the differences in layout, presentation, shapes, and, in particular, the distinctive graphic features. Taken together, these elements create a wholly different overall commercial impression, resulting in independent consumer perception and recollection, and thereby negating any likelihood of confusion with the cited mark.

However, based on extensive experience in complex matters, KENFOX also recognized that arguments on similarity and distinctiveness inherently carry a level of risk, as they ultimately depend on the examiner’s assessment and may entail protracted proceedings without guaranteeing an outcome consistent with the applicant’s expectations.

2. Challenging the Legal Validity of the Cited Mark

Typically, when confronted with a cited mark, IP practitioners generally consider three traditional remedies: (i) termination based on five consecutive years of non-use; (ii) obtaining a Letter of Consent; or (iii) invalidation of the cited mark on the grounds that it is confusingly similar to a mark widely used in Vietnam. However, in the case of MEGA MGC COFFEE, all these avenues led to a deadlock:

Time Barrier: The cited mark was only granted registration in 2019, whereas the client’s application was refused in 2020. Given this timeframe, the “five-year non-use” requirement to trigger a statutory request for cancellation was not met.
Stalemate on Similarity: Since both marks are identical in their core components – “MEGA” and “COFFEE” – experts noted that even with a Letter of Consent, the Intellectual Property Office of Vietnam would likely maintain its refusal due to the high risk of likelihood of confusion among the public.
Inapplicability of Prior Use: MEGA MGC COFFEE had not yet been utilized in Vietnam, thus providing no legal grounds to invalidate the cited mark under Article 74.2(g) of the Intellectual Property Law.

Faced with this formidable “legal wall”, most representatives would offer the conservative advice: Abandon the application.

At this impasse, KENFOX initiated a pivotal strategic shift. Rather than attempting to overturn the refusal through subjective arguments, we focused on evaluating the legal existence of the cited trademark owner. We did not merely ask, “Are the marks similar?” but instead focused on the core issue: “Does the owner of the cited mark still possess the legal capacity to maintain their registered rights?”

On that basis, we proceeded to:

Conduct a comprehensive search into the corporate legal status of the owner of the cited mark;
Review its enterprise registration records and operational status;
Verify in practice whether the rights holder continued to “exist” and operate as a legal entity.

The investigation revealed a critical development: Vietmega Joint Stock Company (the owner of the cited mark) was undergoing dissolution proceedings. This fact constituted a pivotal turning point – effectively a “light at the end of the tunnel” – providing a viable legal basis to address, at its root, the obstacle posed by the cited registration.

Invoking Article 95.1(c) of the Law on Intellectual Property, KENFOX advised the client to shift from a defensive “response” posture to a proactive “legal challenge”. Specifically, we collected and systematized evidence to demonstrate that the owner of the cited registration had ceased to exist or had terminated its business operations without a lawful successor. On this basis, KENFOX filed a petition for termination of validity of the cited trademark (Petition No. ĐN1-2020-00268).

After nearly 05 years of persistent pursuit, on 11 August 2025, the Intellectual Property Office of Vietnam officially issued a Decision terminating the validity of the cited mark. This ruling not only resolved a longstanding impasse but also served as a crucial “clearance instrument”, removing the legal barrier to registration and laying a solid foundation for the safe and sustainable expansion of the MEGA MGC COFFEE franchise chain in the Vietnamese market.

Conclusion

The MEGA MGC COFFEE case underscores an important reality in trademark registration and protection in Vietnam: a refusal notice does not necessarily constitute the end of the road, and an assessment that the “likelihood of reversal is low” does not automatically require withdrawal from the market. The decisive factor lies in whether the trademark owner views the matter as a mere debate over similarity, or is sufficiently strategic to reassess the entire legal framework of the case and select the appropriate mechanism to address the risk at its root.

In this matter, the adopted approach departed from conventional thinking and embraced a multidimensional, long-term strategy: on the one hand, constructing a well-founded system of arguments concerning overall commercial impression and distinctiveness under Article 74.2(e) of the Law on Intellectual Property; on the other hand, proactively reviewing the broader “legal ecosystem” surrounding the cited mark in order to identify a viable legal basis for action. Rather than remaining in a defensive posture limited to explanatory submissions, the strategy evolved into a decisive shift – from passively contesting a refusal to actively removing the legal obstacle – through the mechanism of termination of validity pursuant to Article 95.1(c) of the Law on Intellectual Property.

The lesson for international brand owners is clear: when confronted with trademark conflicts in Vietnam, one should not reflexively conclude that the situation is “impossible”. A comprehensive assessment of all available legal avenues – ranging from arguments on distinctiveness to examination of the continued existence and validity of the cited mark – is essential. More importantly, the chosen strategy should be capable of delivering a sustainable outcome aligned with the brand’s long-term commercial objectives, particularly in franchise models where certainty of industrial property rights is a fundamental prerequisite.

Ultimately, MEGA MGC COFFEE did more than overcome a refusal decision. The brand secured something far more significant: a clear, stable, and enforceable legal foundation, enabling it to enter the Vietnamese market with confidence – ready to expand, protect, and develop its business in a structured and sustainable manner.

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MEGA MGC COFFEE Trademark Registration in Vietnam