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Is Letter of Protest of Trademark Different from Opposition of Trademark under the Vietnamese Legislation?
(Ngày đăng: 2020-09-15)

Is Letter of Protest of Trademark Different

from Opposition of Trademark under the Vietnamese Legislation?

 

Email to: vinh@bross.vn

 

Opposed Trademark

Grounds for Protest

 

 

NAM ĐẾ

App. No. 4-2016-00854

Class 30: powdered coffee, instant coffee, tea (tea)

Class 43: restaurants, hotels, cafeteria, café pub

The opposed mark is accused of being identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries. (Section 73(3) of the IP Law[1])

 

What is the Letter of Protest?

 

Although there is no mechanism of letter of protest like the US trademark practice in support of the ex parte trademark examination by the Vietname Intellectual Property Office (VNIPO), the fact that no standing of the opponent is required by the Vietnamese laws has shown that letter of protest is not different from trademark opposition procedure[2].

 

Under the US trademark practice, a letter of protest is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark provided that the trademark as filed with the USPTO subject to a letter of protest must be still pending and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process[3]

 

When is a Trademark Containing National Heroes, Famous Personalities Devoid of Distinctive Character?

 

The opponent, a Vietnamese individual, filed a letter of protest (an opposition action) with the VNIPO requesting not to grant protection of our client’s applied-for mark NAM ĐẾ (can be translated into “a king ruling in the southern region”) as shown in the above table because such mark is identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam in violation of Section 73(3) of the IP Law

 

In counter-opposing against the opposition action by the opponent, Bross & Partners contended, amongst other things, that for the marks containing names of celebrities, national heroes, leaders ..., due to their recognized status and their contributions, their names are often written down in full to show respect by the people. Therefore, ordinary people can only identify these as their names when and only when they are expressed in full form such as Ly Nam De, Nguyen Thi Minh Khai, Abraham Lincoln, Albert Einstein, etc., Where only a part of the names such as Nam De, Minh Khai, Lincoln, Einstein, etc., is used as a trademark applied for registration, it is rare for ordinary people to associate with these famous people.

 

The VNIPO, in its opposition settlement notice no. 10008/SHTT-NH of August 4, 2020, declined the opposition, concluding that NAM ĐẾ is the inherently distinctiveness and the applicant’s trademark sought for registration has matured to allowance of registration.

 

Bross & Partners is rich in experience in handling trademark opposition as well as trademark counter-opposition in Vietnam. Should you have any query, please contact us at: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057

 

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.



[1] Article 73 of the IP Law. Signs ineligible for protection as trademarks

The following marks shall be ineligible for protection as trademarks:

3. Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders,

national heroes or famous personalities of Vietnam or foreign countries.

[2] To understand in full the practices and laws of trademark opposition in Vietnam, please view our article Procedures, deadline and legal grounds for the opposition against a trademark (brand name) applied for registration in Vietnam” from the link: http://bross.vn/newsletter/ip-news-update/Procedures-deadline-and-legal-grounds-for-the-opposition--against-a-trademark-brand-name-applied-for-registration-in-Vietnam

 

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