HIEUTHUHAI is banned from advertising Celano and Merino cream: What is the reason?

The company, of which HIEUTHUHAI is the director, has been ordered by the People's Court of Ho Chi Minh City to apply emergency measures to stop advertising Celano and Merino ice cream.

Image of singer HIEUTHUHAI associated with Celano ice cream brand in Tet sales campaign - Photo: FB

On January 17, the People's Court of Ho Chi Minh City announced its decision to apply temporary emergency measures regarding intellectual property disputes related to the Celano trademark.

Kido Group Joint Stock Company (KDC) is the plaintiff in the civil case regarding "Intellectual Property Rights Dispute" against Kido Frozen Foods Joint Stock Company (Kido Foods - KDF) and Dat Viet Media Joint Stock Company regarding the use of the Celano and Merino trademarks. Notably, HIEUTHUHAI is currently the experience director of Kido Foods.

After reviewing the evidence related to the application of temporary emergency measures, considering that the application of temporary emergency measures "Prohibiting or forcing the performance of certain acts" is an emergency situation, requiring the prevention of serious consequences that may occur, the People's Court of Ho Chi Minh City decided to prohibit KDF from using (advertising, promoting, introducing...) the Celano trademark according to the granted Celano Trademark Registration Certificate.

At the same time, Dat Viet Media JSC is prohibited from advertising, promoting, and introducing the "Celano" brand in the programs "Anh trai Say Hi" and "2 Ngay 1 Dem", as well as on the Facebook pages of these two programs named "Anh trai Say hi Vie Chanel" and "2 Ngay 1 Dem Vietnam" and on TikTok accounts named "VieON", "2Ngay1DemVietnam".

The trademark dispute occurred after Nutifood took control of Kido Foods from September 2024 with a 51% stake, while Kido Group retained a 49% stake.

Kido Group recently announced documents for the Extraordinary General Meeting of Shareholders, scheduled to be held on January 24, with one of the issues that many shareholders are interested in being the ownership of the Celano and Merino ice cream brands.

In the meeting documents, Kido affirmed that this was an important transaction but was not clearly regulated in the Enterprise Law as well as the Company Charter, so it needed to be considered and commented on by the General Meeting of Shareholders.

According to Kido, in early 2022, the Board of Directors carried out procedures to transfer all brands and trademarks from subsidiaries and member companies to the parent company. Of which, 34 brands and trademarks from KDF include the following brands/labels: MerinoX, Merino Yeah!, Merino Superteen, Merino Kool, Celano, Celano Platinum, M, Wel Yo... After that, the group owns and manages all brands and trademarks used at subsidiaries and member companies.

The Group believes that any use of this brand must have prior approval from Kido Group. Therefore, when Kido reduces its ownership ratio and Kido Foods becomes an affiliated company, the issue of exploiting and using the Celano and Merino brands needs to be approved by the general meeting of shareholders.

Kido said that on June 30, 2022, Kido Foods signed a contract to transfer all ownership rights related to the protected trademarks to Kido. According to the latest amendment on December 28, 2023, to date, the Certificate of Trademark Registration for Celano and Merino still belongs to Kido Group.

Therefore, at the meeting, Kido will present to shareholders plans on brand management and exploitation with Celano and Merino, including ensuring brand ownership within the group, authorizing or licensing use to third parties, as well as empowering the Board of Directors and General Director to sign and execute related transactions.

Currently, Kido Foods has two processing factories in Cu Chi (HCMC) and Bac Ninh province, with machinery imported from Europe and Japan.

"Buying land does not guarantee owning trees"

More than 20 years ago, Kido Group (then named Kinh Do) also completed the transfer of the principle contract to transfer the Wall's ice cream brand to Unilever Bestfood Group in Vietnam. According to this contract, Kinh Do acquired all facilities and brands to produce and trade Wall's ice cream in Vietnam.

As for the Wall ice cream brand, Kinh Do was allowed to use it until the end of 2004. After that, Kinh Do had to use another brand to market this product. In the deal with Nufifood, Kido also "applied" this experience to make the transaction.

Commenting on the trademark dispute between Kido and Nutifood, an intellectual property lawyer in Ho Chi Minh City said that this is a typical lesson about intellectual property in mergers and acquisitions (M&A) deals.

In M&A transactions while still in the DD appraisal process, the buyer must conduct reviews on labor, finance, tax obligations or legality, including intellectual property assets of the brand. Many buyers still assume that buying a company means owning the brand, so when something happens, they realize they have made a mistake.

"In fact, in brand intellectual property, there are many details that need to be clearly understood when conducting M&A transactions. In this case, if the entire ownership belongs to Kido Group, while Kido Foods is no longer a parent-subsidiary company but becomes a related company relationship, the use must have the consent of the group. Nutifood can clarify the legality of this brand intellectual property, otherwise, this will be a typical lesson in M&A," he further analyzed.

In November 2024, ice cream brand Celano made headlines with a bold marketing campaign revolving around the appointment of rapper HIEUTHUHAI as chief experience officer (CEO). This campaign effectively used social media to create a media wave at that time.

Specifically, on November 24, 2024, HIEUTHUHAI announced that he would take on the position of CEO on his personal page, attracting more than 86,000 interactions. Celano officially confirmed the information the next day by changing the fanpage image.

Even the members of the boy band MOPIUS formed after "Anh trai say hi", including HIEUTHUHAI, JSOL, Quang Hung MasterD, HURRYKNG and Duong Domic, along with artist Le Duong Bao Lam - a face of "2 days 1 night", were also introduced as part of the "Senior Management Board" of the ice cream brand.

These artists participate in many events and promotional campaigns, increasing brand awareness.

Source: https://tuoitre.vn/hieuthuhai-bi-cam-quang-cao-kem-celano-va-merino-ly-do-la-gi-2025012015313948.htm