Merely Similar in terms of Form of Expression May Suffice Likelihood of Confusion

Email to: vinh@bross.vn

As a legal representative of the owner of the senior trademark Vinacafe (in the right column), Bross & Partners successfully prevented the junior mark (in the left column) from registration in a trademark opposition proceeding by arguing that even if only the existence of element 4 - similar in form of presentation (appearance)[1] - is sufficient to constitute a likelihood of confusion because:

1. The opposed mark contains the design of the sign (element) or the form of expression of the word "Vinamorning cafe" similar to the design (form of expression) of the word "Vinacafé", namely: (i) the "V" in the junior mark has the same design as the "V" in the senior trademark "Vinacafé" under registration nos. 10790, 10791, 66625 and 191181; (ii) the word "Vinamorning" is written in the same bold font, white color, black border with black shadow, and the arc design is identical to the letter design in the brand "Vinacafé" / registered.
2. The opposed mark is designed in the form of copycat of the design of the senior trademark "Vinacafé" while the design of senior trademark "Vinacafé" as shown on the package has been widely used and known to consumers not only in Vietnam but also in dozens of countries around the world, specifically this design has been officially used since 1993 and has been used consistently on all packaging of Vinacafé Bien Hoa's instant coffee products from 1993 to the present
3. Products bearing the appearance of the senior trademark “Vinacafé” displayed on products have also been successfully sold and registered for protection in 51 countries around the world under international registration no. 776188. And later, despite the change of brand identity system but in fact the form of expression "Vinacafe" has not changed according to international registration no. 1117010[2]
4. The appearance of the junior mark is similar to that of the senior trademark, constituted an act of unfair competition, took advantage of the prestige of the senior trademark during which the senior trademark is highly reputable due to its widespread use and recognition by the consumer

5. In view of the criteria "characteristics of consumers and the level of attention of consumers when selecting, buying and selling goods", can it be seen that coffee products is not a product that attracts a long attention for consumers in the selection process and at the same time, consumers of coffee products are diverse consumers. Therefore, by registering the sign "Vinamorning cafe, design" for coffee products as above, there is a high risk that consumers can believe that the products of the opposed party are products of the same commercial origin with "Vinacafe" coffee products of the opposer.

Agreed with the argument of Bross & Partners, the NOIP issued its Office Letter No. 9341/SHTT-NH2 dated March 26, 2018 refusing to protect the junior mark subject to the opposition because the words "Vinamorning" has a confusingly similar representation with the words "Vinacafé" protected under registration nos. 10790, 10791, 66625, 191181 and 261293.

Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057

 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.