Bross & Partners to assist client to successfully obtain, upon multiple administrative complaints, a Vietnamese registration of the trademark VIATERA rejected due to the breach of Article 74(2)(h)-based residual goodwill protection[1]

Email to: vinh@bross.vn

The first complaint failed

According to the office action no. 21588/SHTT-NH1 dated June 29, 2012, the National Office of Intellectual Property of Vietnam (NOIP) refused to register the applied-for mark Viatera by reason of a likelihood of consfusion with the cited mark Vitera depicted as above in violation of Article 74(2)(h) of the 2005 Intellectual Property Law as revised in 2009[2].

On August 27, 2012, as the legal representative acting for the applicant, Bross & Partners filed a response against the NOIP’s rejection, arguing that:

(a)        the junior trademark has a different pronunciation from the senior trademark, namely it consists of four (04) syllables pronounced as [vi-a-te-ra] while the senior mark comprises only three (03) syllables read as [vi-tơ-ra]; and

(b)        A significant difference in the goods bearing the trademarks in question, ie. the list of products pertaining to the applied-for mark is very narrow compared to that bearing the earlier mark, specifically “artificial marble" in class 19 in comparison with “non-metallic building materials" in class 19.

The 2nd Appeal Succeeded

On October 26, 2012, the NOIP issued Decision No. 60667/QD-SHTT declaring that it maintains its position on refusal, stating that the trademarks in question: (a) are similar to each other as to structure (having the same same 7 characters arranged as V / I / A / T / E / R / A and V / I / T / E / R / R / A while identical characters found are the key characters stressed while reading), (b) similar in pronunciation: “vi-a-te-ra” compared to “vi-tơ-ra”, and (c) "artificial marble" is also a kind of "non-metallic building material" and “non-metallic building material" may include “artificial marble”.

On 17/01/2013, Bross & Partners continued to submit the 2^nd appeal against Decision No. 60667/QD-SHTT wherein the new evidence supplemented contained a non-use market survey report demonstrating the senior mark under the international registration no. 724378 had been not used in the Vietnamese market for a consecutive period of 5 years since the validity of such mark was suspended 4 years ago or since July 16, 2009 due to failure to pay renewal. This means the exclusive right to use the earlier trademark has been automatically terminated by Article 95(1)(a) of the IP Law[3].

Agreeable with the additional evidence and arguments by Bross & Partners, on December 13, 2013, the NOIP released Decision No. 3395/QD-SHHT on resolving the complaint against rejection of grant of registration of trademark, declaring that it shall revoke Decision No. 60667/QD-SHTT and shall carry out to grant protection in the form of the overall protection, the element "Quartz Surfaces" is not separately protected[4] in favor of the junior trademark under application 4-2011-06215

On March 12, 2014, the NOIP issued a notice of allowace no. 7417/SHTT-NH1 along with a request for grant payment and after that a certificate of trademark registration no. 223709 was issued on 28 April 2014 as copied below

Bross & Partners is rich in experience in appealing, complaining against refusal of registration of trademarks in Vietnam. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057, 84-4-3555 3466.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.