Beware of Possible Rejection as Applied-for Trademark is Deceptive
or Deceptively Misdescriptive in the EUIPO, USPTO, CNIPA and VNIPO
Senior Partner Le Quang Vinh – Bross & Partners
Email: vinh@bross.vn
Trademark laws of almost countries in the world generally stipulate that an applied-for mark seeking for protection is registered only when it simultaneously satisfies both conditions: (1) it is neither misleading, nor deceptive, nor deceptively misdescriptive; and (2) it does not conflict with other's pre-existing trademark or IP rights. Bross & Partners below introduces some practices of determining deceptive, or deceptively misdescriptive trademarks decided by the Intellectual Property Offices of Vietnam (VNIPO), China (CNIPA), EU (EUIPO) and the US (USPTO).
Applied-for Marks Rejected Due to being Misleading or Deceptive
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Applied-for Marks
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Designated Product
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Conclusion
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(INR 1128318)
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Class 11: Electric tea making apparatus
Class 30: Tea and tea products; non-medicinal herbal tea and infusions.
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
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CNIPA refused class 32 since the mark contains the word “tea” but the goods for which the mark is used are not limited to tea. It is therefore likely to mislead consumers as to the contents of the product
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(VN 4-2008-20839)
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Class 09: Automatic revolving doors
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VNIPO refused because the trademark contains country name Japan misleading about the geographical origin of the goods
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ORGANIC ASPIRIN
(US Serial 77,208,071)
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Class 05: Dietary food for human consumption
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TTAB upheld the USPTO's rejection concluding the mark is deceptively misdescriptive, ie. Aspirin is misdescriptive because the designated product does not contain aspirin. The phrase "Organic Aspirin" may convey the message that the registered product contains natural aspirin while the applicant's advertisement misleads the public as to two types of aspirin: natural and organic aspirin
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5-LOXIN
VN 4-2013-21182
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Class 05: nutritional supplement containing herbs
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VNIPO rejected the mark assuming that 5-Loxin is descriptive if the product contains this ingredient or misleading if the product does not have such substance as “5-Loxin” is a patented chemical formulation in the US.
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TITAN
(Titanium in German)
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Class 19: Prefabricated relocation houses; movable building structures; all are not made from titanium or contain no titanium
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Board of Appeals (under EUIPO) rejected due to deceptiveness, contending that even if a non-metallic building is declared as non-titanium, German public still assumes that the product is made of titanium
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Applied-for Marks Not Misleading, Deceptive or Deceptively Misdescriptive
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Applied-for Marks
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Designated Product
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Conclusion
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5-LOXIN
VN 4-2013-21182
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Class 05: nutritional supplement containing herbs
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VNIPO withdrew its refusal after Bross & Partners filed an appeal arguing that 5-Loxin had a trademark function despite being named in the patent specification in the US.
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EUTM 419507
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Classes 29, 30 and 32 in which there are products that are is generally described as poultry
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Since the word “Gallina” in Spanish means chicken, EUIPO considers that the product as described is broad enough, specifically including poultry. So the trademark is not deceptive
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NEW SILK ROAD
US Serial 8763005
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Classes 14, 18 & 25
Class 25: clothes, etc.
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USPTO partially rejected class 25 by reason of Section 2(a) deceptiveness. On appeal, TTAB believes that Silk Road's commercial impression is not limited by silk products because "Silk Road" has historically been a multi-thing trading network since ancient times so this trademark is not deceptive
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US Reg. 3,919,504
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Class 14: precious jewelry
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Although the applicant is a US company, the USPTO does not find that the product containing the sign Paris is geographically deceptive, although it concluded "Paris Jewelry" is not protected apart from the mark as shown
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Chinese Reg 7611987
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Chinese Reg 7970830
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Class 30: Coffee, coffee-based beverages, etc.
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Although Buon Ma Thuot is a well-known geographical name in Vietnam and it is protected as a Vietnamese geographical indication, CNIPA determined that the trademark was not geographically misleading, considering that foreign place names that are not widely known to the Chinese public is still granted protection as a trademark
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Three Practical Lessons
The above practice of trademark refusal/protection regarding applied-for mark deceptive or misdescriptive allows us to draw 3 practical lessons:
1. An applied-for trademark may be refused due to deceptiveness or misdescriptiveness if applicant includes a portion describing characteristics of product in such trademark while the trademark is not used for very product. This means that a trademark seeking protection would be considered misleading or deceptive if it conveys false information about the utility, nature, quality, geographical origin of goods or services.
2. Determination as to whether a trademark is deceptive or misleading much varies from country to country. However, it is worth noting that China tends to examine deception or misrepresentation refusal (like the example above) more strictly than other countries.
3. It is advisable to carefully consider a trademark applied for registration and list of products bearing it by conduct a search and taking legal advice from a professional IP attorney before applying it to the local trademark office and foreign countries including the Madrid-based applications to avoid possible deceptive refusal.
Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties
Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.
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