Entertainment One accused of illegally using the Wolfoo trademark

In the latest developments related to the intellectual property rights dispute between cartoon characters Wolfoo and Peppa Pig, Sconnect Vietnam (Sconnect) has just filed a lawsuit against two London-based companies, Entertainment One UK Limited and Astley Baker Davies Limited (referred to as EO), to the People's Court of Hanoi.

EO is the owner of the cartoon character Peppa Pig, and Sconnect is the owner of the Vietnamese cartoon character Wolfoo.

In the file sent to the court, Sconnect accused EO of illegally using its Wolfoo trademark in Peppa Pig videos (this is a violation of point b, clause 1, Article 129 of the Intellectual Property Law). At the same time, Sconnect proposed the Court to force EO to stop the trademark infringement and publicly apologize to Sconnect in 3 international newspapers.

At the end of March 2022, Sconnect filed a complaint letter to Vietnam Competition Commission about EO’s unfair competition practices which violate Clauses 3 and 4, Article 45 of the Law on Competition).

Specifically, EO had spread false information in order to damage Sconnect’s reputation and its Wolfoo cartoon character set. At the same time, EO used many disruptive tricks, aiming to disrupt and suspend Sconnect's business in the digital environment. Sconnect’s economic damage was estimated up to US$300,000 by EO's bad business behaviors.

Sconnect said that the company will file a lawsuit to the People's Court of Hanoi in September 2022 against EO for its breach of Wolfoo trademarks and illegal technical measures to deliberately violate Sconnect’s intellectual property rights. EO's behavior violated Clauses 2, 8, and 12, Article 28 of the Intellectual Property Law.

Peppa Pig owners lose trademark infringement lawsuit in Russia

EO has sparked the intellectual property dispute between Wolfoo and Peppa Pig and suffered a catastrophic failure in Russia. Specifically, on January 11, 2022, EO filed a lawsuit in a Moscow court to accuse Wolfoo of drawing comparisons to Peppa Pig in terms of its format and some of its characters. As a result, Sconnect was sued for allegedly breaching to create derivative works and illegally post them online.

However, Sconnect presented all legal evidence and documents proving the company’s intellectual property rights to the Wolfoo character and cartoon products, including Certifications of Sconnect's Wolfoo character ownership rights in accordance with international law; Independent reviews of Russian literary and artistic experts on Wolfoo and Peppa Pig cartoons.

In July 2022, Russian art and literature experts concluded that the lawsuit documents and expert opinions that EO previously had provided to the court violated the Russian Law on Experts because the expert committee does not have the capacity to evaluate; The assessment is beyond the authority of the EO's experts. At the same time, Russian art and literature experts affirmed that "The Wolfoo character set is not a remake of the Peppa Pig character set".

As a result, on July 7, 2022, EO canceled all lawsuits. At the same time, the Moscow Court gave the ruling: "EO has no longer the right to complain and claim that the Wolfoo characters are copying the Peppa Pig characters”.

EO lost the lawsuit and the case was officially closed by Moscow court. EO also filed a lawsuit against Sconnect in the UK High Court from February 2022, but so far has not been accepted by the court. However, EO still used it to copyright Wolfoo videos and YouTube still accepted it, resulting in significant economic loss for Sconnect.

In August 2022, Sconnect decided to file a counter-suit against EO in a Moscow court asking for compensation for the economic damages caused by EO. According to lawyer Pham Van Anh, Head of Sconnect's Legal Department, based on Article 6, Article 75 of the Vietnam Intellectual Property Law 2005 (amended and supplemented in 2019), Wolfoo is a well-known trademark with its long-term use and popularity in many countries. When Wolfoo is a well-known trademark, it is automatically protected without registration.

In terms of intellectual property rights, Wolfoo has now been granted a copyright certificate for the character sets in Vietnam and the US (with 20 characters); certification of film and cartoon script copyright in Vietnam. The Wolfoo trademark suite has successfully filed for registration in Vietnam, Russia, the US and the EU.

According to Article 14 of the Vietnam Law on Intellectual Property 2005 (amended and supplemented in 2019) and Article 2 and 3 of the Berne Convention of 1971 (amended and supplemented in 1979) on the protection of literary and artistic works, the legal value of Wolfoo copyright certificates is globally valid and applicable to 181 countries that are members of the Berne Convention.

"According to the Berne Convention, the Wolfoo cartoon character set and all of Sconnect's Wolfoo cartoon episodes are naturally protected in 181 countries including the United Kingdom and the United States, Russia, and Vietnam (which are the member states of the Berne Convention)" - said lawyer Pham Van Anh.

Sconnect is a Vietnamese digital content enterprise engaged in the production of cartoons for children since 2014. The Wolfoo cartoon series was launched in June 2018, and is viral on YouTube and many social media platforms, television channels. Recently, 2,700 episodes of Wolfoo have been translated into more than 17 languages and become a famous global brand. The online video technology site Tubefilter showed that Wolfoo's channels have attracted more than 50 million followers with an average of 2 billion views per month, reaching 30 billion views since its release.

Quyen Pham