Filter

Open

VIETNAM: The Strength or Weakness of Earlier Trademark Should be Also Taken into Account When Determining a Likelihood of Confusion of Later Trademark

24

JUN

2020

A mark NESSO under app. no. 4-2015-19931 filed 27/7/2015 designating tea, coffee, mineral water, non-alcoholic drinks, among other things, in classes 30 and 32 was rejected by the National Office of Intellectual Property of Vietnam (NOIP) by an office action no. 6139/SHTT-NH1 of February 28, 2017 by reason of confusing similarity (likelihood of confusion) with 3 earlier registered trademarks in violation with Article 74(2)(e) [1] of the Intellectual Property (as depicted below):

Applied-for Mark

(Junior Mark)

Cited Mark 1

(Senior Mark 1)

Cited Mark 2

(Senior Mark 2)

Cited Mark 3

(Senior Mark 3)

App. 4-2015-19931

Class 30 & 32

Reg. 1054554

Class 30

NESPRESSO

Reg. 777873

Class 30

NES

Reg. 933668

Class 30 & 32

To avoid subjective conclusions by trademark examiners, the law sets out a six-factor rule to consider when evaluating a likelihood of confusion that we mentioned in the previous article[2], according to which Bross & Partners, on behalf of the Applicant, filed a response against the office action, arguing that:

  1. Regarding pronunciation, the junior mark has 2 syllables that is read (by an average Vietnamese consumer) as NES-SO differently compared with 5 syllables (under the two senior marks) read as NỜ-E-SPỜ-RES-SO and only one syllable being NES (under senior mark 3). As a result, it is unlikely to cause any deceptive similarity amongst them in terms of origin of trade.

  1. The streng or weak rating of trademarks or brand names[3] significantly impacts the determination of a likelihood of confusion, meaning that the coined mark has the strongest distinctiveness while a trademark is considered “weak” if it consists or is comprised of non-distinctive matter and such a trademark is normally entitled to a narrow scope of protection[4]. The first two senior marks that are all composed of by combining the letter N and ESPRESSO, wherein ESPRESSO is an Italian-originated popular type of coffee, so the junior cannot create any likelihood of confusion with the senior marks even though commodities bearing them are identical or the same kind.

  1. Global assessment is the rule provided by the laws, means the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression must be taken into account. Thus, in this case, upon the overall evaluation of the marks, no likelihood of confusion may exist.

With the above reliably reasonable arguments, on April 27, 2018, the NOIP accepted the complaint by Bross & Partners by issuing its notice of allowance no. 152233/SHTT-NH1 and as a result a registration no. 304239 was granted.


[1] Article 74 Distinctiveness of marks

2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

(e) Signs other than associated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member.

[3] The INTA assumes that a suggestive mark hints at or suggests the nature of a product or service or one of its attributes without actually describing the product or service. See more: https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx

[4] “A trademark is considered “weak” if it consists or is comprised of non-distinctive matter. Such a trademark is normally entitled to a narrow scope of protection” according to Trademark Basics, Paul W. Kruse, Bone McAllester Norton PLLC, Nashville, Tennessee, page 8

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

Related Articles

03
AUG
2020
8 Best Practices for Registering Patent in Vietnam
03
AUG
2020
8 best practices below summarized by Bross & Partners may help you understand the patent protection ...

Read More

03
AUG
2020
Legal Basis of Penal Liability for Criminal Offence of Infringing Upon Intellectual Property Rights According to Current Vietnamese Laws
03
AUG
2020
General principles on handling IP rights crimes The Vietnamese Intellectual Property Law (IP Law...

Read More

15
JUL
2020
Protection of Well-Known Trademark in The United States Viewed The Case Coach Services, Inc. v. Triumph Learning LLC Decided by The United States Court of Appeals for The Federal Circuit[1]
15
JUL
2020
Senior mark recognized as well-known mark in the US Junior mark[2] ...

Read More

15
JUL
2020
A Glance at Common Intellectual Property Rights and The Conflict or Overlapping Amongst Them
15
JUL
2020
Trademark or brand name A trademark (aka "brand name" used in marketing language) is one of many...

Read More

08
JUL
2020
Fair Use, Fair Dealing or Also Known As “Cases of Use of Published Works Where Permission and Payment of Royalties and/or Remunerations Are Not Required” under The Copyright Legislation of Vietnam
08
JUL
2020
Limitations and exceptions to copyright infringement Limitations and exceptions to copyright in...

Read More

  • 1
  • 2
  • 3
  • 4
  • 5