Written by Linh, Nguyen Khanh - Lawyer of IP Department - BROSS & Partners
On 23/01/2013, The Body Shop International Plc (UK)- owner of a series of trademarks “The Body Shop” protected in Vietnam for the goods in class 03 (the Opposer), filed an opposition against the applications for registration of the marks "the Beauty shop, device" under App.Nos. 4-2012-03933 and 4-2012-03932 for cosmetic products in class 03 in the name of Cong ty TNHH Quoc te Tra Giang, a Vietnamese company (Applicant). In accordance with Law on Intellectual Property, National of Intellectual Property Office (NOIP) issued Notice No. 1360/SHTT-NH1 requesting the Applicant to respond within 01 month or before 03/23/2013.
Argument of Opposer
The Opposer argued that the opposed marks is not distinguishable with the prior trademarks as above in accordance with Article 74.2.3 of Law on IP because:
- All of the prior marks and opposed marks contain three (03) words and components of "THE" and "SHOP" presented in the same position (in order from top to bottom, each paragraph containing a word). “The Body Shop” and “The Beauty Shop” are read by the same way, the first and third characters are spelled by the same way, the middle word "Body" and "Beauty" have two syllables and are directed to pronounce by initial consonants "B" and the final consonant "Y";
- All of the marks are registered for the same products (cosmetics)
Acting for the Applicant, Bross & Partners had requested NOIP to reject the opposition, in particular:
- The opposed marks "the Beauty shop" are different from forms of expression, meaning and overall impression to prior trademark;
- Signs "The" and "shop" have not distinctive function absolutely and the components of the prior marks are weakly distinguished signs such as “The”, “Body”, “Shop”. In particular, the existence of other marks have the same structures as "The + noun + shop" that has become popular, such as "The Face Shop", "Candy Shop", "Le Verger shop" thus do not mislead to consumers, and;
- The Applicant absolutely do not take advantage of image of prior marks "The Body Shop" to build its own marks;
- Furthermore, the Applicant showed realistic photos of chain shops bearing the opposed mark and the Opposer’s marks in order to compare the disputed marks at issue and demonstrate the ability to distinguish between the dispute marks as well as the fair competition engine of the Applicant.
After considering the contentions submitted by the parties, NOIP issued Notification No. 6536/IP-NH1 dated 07.30.2013 rejecting the opposition by reason of the followings:
- Although the marks presented together the words "the" and "shop", but the words "BODY" and "BEAUTY" are different as to pronounciation and meaning;
- Although the marks are arranged vertically from the top to down, but the letters are embodied in the different forms, additionally, the text in the prior mark is expressed in a stylized circle, and the letter "B" of the opposed mark is designed as a stylized butterfly shape. Thus, the compared marks are capable of distinguishing to each other.
As NOIP’s response to the opposition is the final and not subject to be appealed and/or additional argued, thus the opposed marks “The Beauty shop, device” were accorded protection on 09/12/2013.
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