It is difficult to overturn a trademark refusal decision in Vietnam, more so when the trademark examination must follow a rigid multi-step process. This creates a process in which delays, extended reviews, and unnecessary tough denial rulings. If that is the case, how can any trademark owner hope to overturn the NOIP decision regarding this issue? Let's find out.
Securing a trademark can be a daunting task, particularly when faced with a refusal based on similarity or identity to an existing mark. This scenario often sparks confusion and frustration, leaving applicants unsure of how to proceed. However, it's important to remember that refusals are not the end of the road. With strategic planning and a clear understanding of trademark law, applicants can overcome these obstacles and secure the valuable legal protection they deserve for their brands.
This guide aims to equip you with the knowledge and tools necessary to navigate the complexities of overcoming trademark refusals based on similarity or identity. We'll delve into the legal framework, explore various strategies to address the examiner's concerns, and provide practical advice on crafting effective responses. By demystifying the process and providing actionable steps, this guide will empower you to confidently navigate this challenging stage and transform a trademark refusal into a valuable opportunity to refine and strengthen your brand identity.
2. The word of the law regarding identical or similar expired trademark
A later filed trademark that is identical to or confusingly similar to an earlier mark may not be registered if it has been referenced, as per Article 74.2h of the Intellectual Property Law, even if it has expired but hasn't been out of use for more than three years. Many people who are not legal experts find this clause absurd and confusing. They believe that a trademark that has expired ought to be regarded as invalid to deny protection to a later-filed trademark. But the clause that came before it is important on its own. The clause aims to prevent misunderstanding among customers. The legislators contend that it takes at least three years for the public and pertinent clients to forget about the presence or appearance of a mark. In some other nations, this period is only 01 year, like Hong Kong and Macao, because of their robust marketplace. This was a reduction from the previous 5-year period following the newest amendment, showing a reflection on how much trademark a consumer is exposed to in that same period. This clause was used to ensure there are no opportunistic registrars who just waiting for a mark to expire and then waltz in and steal it legally.
The expired mark will be used as a cited mark to deny protection to identical or similar marks filed later within three years of the expiration date, for instance, if a trademark application filed on January 1, 2022, is found to be similar to an expired trademark filed on January 1, 2023. In other words, only trademark applications submitted by January 2, 2026, three years after the mentioned mark's expiry, would be considered for a protection title.
The Ministry of Science and Technology of Vietnam issued Circular No.01/2007/TT-BKHCN on February 14, 2007, outlining many criteria to determine whether two marks are similar or not, with the aim of formalizing the legal regulations concerning whether two marks are similar or not. Specifically, pursuant to point 39.8a of Circular 01/2007/TT-BKHCN: To assess whether or not a sign is identical or confusingly similar to another mark (hereinafter referred to as cited mark), it is necessary to compare the structure, content, pronunciation (for character signs), meaning and form of presentation of the sign (for character signs and figure signs), and concurrently compare the goods/services bearing the sign with those of the cited mark defined at this Point.
(i) Is the applied mark identical or confusingly similar to another mark that has been previously filed/registered in Vietnam? and
(ii) Are the goods/services bearing the applied mark identical or confusingly similar to those of the previously filed/registered trademark in Vietnam?
The evaluation of these two elements has to be based on certain guidelines as stipulated by Vietnam Intellectual Property Law.
3. The application of the law regarding the expired trademark
a) The cited mark had not been used for three consecutive years
With the wording of the law, as it is, the most prominent evidence is the proof that a mark was not used in the last 3 years, and with try-and-error, is findings of a market study from the Ministry of Finance's Price Bulletin or the Ministry of Industry and Trade's Information Center attesting to the fact that the mentioned mark had not been used for three years in a row. The subsequent applied-for mark would then be permitted by IP Vietnam to mature into registration.
However, the arguments that Article 74.2h is a closed clause without an exemption saying that [save when the referenced mark has not been used for three consecutive years] have led to the examination rule for trademarks that have been rejected under that section being revisited. Thus, in recent cases, IP VIETNAM issued decisions refusing registration of the later filed mark based on Article 74.2h of the Vietnam Intellectual Property Law, even though the applicant submitted a market survey proving that the cited mark had not been used in Vietnam for three years in a row.
b) The criteria to determine the similarity of two marks
Regarding the criteria to determine whether two marks are similar or not, one can try and group the possible infringement caused by the cited mark into three categories: primary infringement, secondary infringement, and well-known mark infringement.
Primary infringement
Primary infringement is when a sign is considered to be identical to a cited in terms of structure, content, meaning, and form of presentation. Furthermore, the goods and services bearing the mark are identical to the cited mark
Secondary infringement
Secondary infringement is a sign that is deemed similar to a cited mark if it is similar in terms of structure, content, pronunciation, meaning, or style of presentation in a way that leads consumers to mistakenly believe that the two items are one and the same, or that they are variations of each other, and if the products or services bearing the mark are the same or comparable to the cited mark. Therefore, if the resemblance might lead to misunderstanding among consumers regarding the origin of goods, the National Office of Intellectual Property (NOIP) may reject the protection of the applied mark based on just one criterion (such as content).
Another word for this type of infringement is "likelihood of confusion", since it is exactly what it will cause the consumer to think of, for example, in the case of MacCoffee v. McCafe, the later a trademark of McDonald's, and the court found the former was too close for comfort
Well-known mark infringement
Well-known mark infringement is as the name suggests, a mark in which the use of its may make consumers believe that there exists a relationship between the goods and services bearing the infringing mark with the owner of the well-known mark. In general, the scope of protection of a well-known mark is broader than that of a common mark, especially if it can be protected without having to register in the appropriate jurisdiction. Furthermore, if a mark is able to reduce the distinctiveness or damage the reputation of the well-known mark, it may be refused for protection, regardless of whether their designated goods are similar or different from each other.
However, there is a possible loophole in the phrasing of the law. In the event that the mark, borrows some element of a well-known brand, but it neither reduces the distinctiveness nor damages the reputation of the well-known mark, what would the NOIP or the Court say?
4. The dosier needed to prepare in the event of refusal
Due to the nature of the work, there can be no 2 cases the same, as such, the details are on a case-by-case basis. However, some document is always present in this type of refusal case.
- The proof that the opposition mark has not been used for three straight years (typically from findings of a market study from the Ministry of Finance's Price Bulletin or the Ministry of Industry and Trade's Information Center)
- Proof that the cited mark is not renewed (available publicly on the IP Vietnam Trademark Search Website)
- Proof that the opposition trademark and the client trademark is different in pronunciation, meaning, structure, etc (following a case-by-case basis)
5. Case study
1) BEIGENT v BEVIGENE
In this case, the mark "BEVIGENE" is the cited mark, which was registered and expired, and has not been used since its registration date. On an overall look, "BEIGENE" bears a striking resemblance to the referenced mark "BEVIGENE" in this instance. The referenced mark has the letter "V" included, however the application mark does not. That is the only distinction between the two marks. This makes it simple for customers to become perplexed about the product's place of origin.
However, it was quickly discovered that the mark "BEVIGENE" is descriptive of products in Class 05 and thus incapable of performing the mark's most fundamental function, its distinctiveness. As such, it did not meet the condition for trademark registration and should not be registered as a trademark. Meanwhile, the applied mark "BEIGENE" is the application trade name and bears no relation to the cited mark.
2) Louis Vuitton v. Haute Diggity Dog
In 2006, a clash between luxury and humor unfolded in the legal arena as Louis Vuitton (LV) sued pet toy company Haute Diggity Dog (HDD). The bone of contention? HDD's "Chewy Vuiton" parody toys, feature plush handbags adorned with a "CV" logo reminiscent of LV's iconic monogram. LV claimed trademark infringement, trade dress infringement, and copyright infringement, arguing that HDD's toys were confusingly similar to their luxury goods. HDD, however, countered with the defense of parody, asserting that their toys were clearly intended as humorous commentary and did not compete commercially with LV. Both the District and Appeals Courts ultimately sided with HDD, recognizing the transformative nature of their parody and its minimal impact on LV's brand. This landmark case established parody as a viable defense against trademark infringement claims, setting a precedent for future cases and highlighting the delicate balance between protecting intellectual property and upholding freedom of expression.
If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung
