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Practices of Trademark Disclaimer in Vietnam
(Ngày đăng: 2020-11-18)

Practices of Trademark Disclaimer in Vietnam

 

Email: vinh@bross.vn

 

What is the Trademark Disclaimer?

 

 “The registered trademark is wholly protected. The verbal element of […] and/or the figurative element of […] are not separately protected” is the phrase commonly appeared in certificates of trademark registration issued by the Vietnam Intellectual Property Office (VNIPO)[1].

 

Such pharse originates from the term “trademark disclaimer statement” or shortly called as “disclaimer” regularly seen in trademark registrations in many countries. According to the world practice, “disclaimer” that is often understood that an element or a portion constituting an applied-for mark that is devoid of distinctive characters is not required to omit or eliminate from the applied-for mark because in view of the whole assessement, such applied-for mark is still deemed as badge of origin (trademark function). In addition, “disclaimer” is also understood as a legal limitation to the scope of protection of a registered trademark.

 

Practices of Inclusion of Trademark Disclaimer from 1980s and 2019 and our Comments

 

Trademarks

Disclaimer by the VNIPO

Note/Comment

 

International Reg. No. 518175

Date 29/7/1987

Class 29 (milk) and others

No disclaimer recorded. Although in this case, the image of a cow’s head is obviously descriptive of milk product.

Prior to 1990s, no disclaimer recorded in international registration of mark

International Reg. No 1366539

Protected by Vietnam on 7/2/2019

Class 29: Milk and dairy products.

No disclaimer recorded

(The element “Milk” that independently stands from from the element “ME” should have been disclaimed)

After 1990s up to 2019, no disclaimer recorded on international registration designating/expanding into Vietnam

National Reg. 31748 (expired in 2008)

Reg. Date: 4/5/1998

Issued on: 9/8/1999

Class 29: Milk and dairy products

 

No disclaimer recorded

(This case, disclaimer of “Milk” should have been made because Milk stands alone)

Before 2000, it seems that Vietnam did not disclaim the trademark containing a descriptive element.

National Reg. 64419

Reg. Date: 20/4/2004

 Issued on: 4/7/2005

Class 29: Milk and milk-related products

Disclaimer recorded.

The registered trademark is wholly protected. The verbal elements of mamma and image of a prenant are not separately protected

Disclaimer is applied to both verbal and figurative signs if they are devoid of distinctive characters. However, the element “milk” was not disclaimed as it attaches to the prefix “Vina” to create a single word “Vinamilk”[2]

National Reg. 270480

Issued on 21/10/2016

Class 29: Milk and dairy products

 

Disclaimer recorded.

The registered trademark is wholly protected. The figurative element of a cow’s head is not separately protected”.

The device of a cow’s head is obviously descriptive of milk but its form of expression or its stylized representation is

unique enough so that it suffices to function a badge of origin in commerce

National Reg. 281944

Issued on 23/5/2017

Class 12: bike, motorbike

Disclaimer recorded.

The registered trademark is wholly protected. The verbal element of “Thế giới xe đạp”[the world of bicycles] and a device of cog-wheel are not separately protected”.

Both of the signs of the gear and the words "Thế giới xe đạp” (the world of bicycles)" are descriptive, but the combination of both signs in which the sign of a gear shaped as half a leaf device is still sufficient to make the unique impression to qualify as a trademark as the whole.

International Reg. 824804

Issued on 27/04/2004

Class 30: coffee

No disclaimer recorded.

(This case is confusing in determining the scope of protection because while national reg. 150500 as the example below is disclaimed against devices of seed of coffee and a cup, no disclaimer recorded on International Reg. 824804

 

 

Initially rejected under Section 6.2c of Decree 63/1996 as amended[3] because of lack of trademark function. Upon the evidences of extensive and wide use, the VNIPO withdrew its refusal and granted protection on August 24, 2006

Certificate No. 150500

Issued on 3/8/2010

Class 30: coffee,…

Disclaimer recorded

 

The registered trademark is wholly protected. The figurative elements of “coffee cup” and “nuts of coffee” are not separately protected”.

In addition to the grain of coffee, the red cup in the mark is also disclaimed

 

National Reg. 57231

Issued on 20/9/2004

Class 03: cosmetics

Disclaimer recorded

The registered trademark is wholly protected. Only verbal element of “Romano” is protected

This is a three dimensional trademark which appears not to be clear enough to determine its scope of protection: only “ROMANO”, or the combination of Romano and device of bottle, or both Romano and device of bottle?

International Reg. 1028578

Dated 16/12/2009

Class 33

No verbal element included in the trademark

This is another three-dimensional trademark which was rejected by virtue of Section 74.2b of the IP Law[4]

Pending App. No 4-2014-22436

Filing date 22/9/2014

Class 29, 35 related to cashew nuts

Prior registered trademark

National Reg. 262371

Issued on 17/5/2016

Classes 29, 30, 35 (cashew nuts).

The trademark is wholly protected. The verbal sign “ĐIỀU VIỆT” [cashew of Viet]and the device of cashew nuts are not protected separately (for cashew nuts)

The mark VietCashew was refused by reason of likelihood of confusion with the registered mark Điều Việt [cashew of Viet]. Upon appeal, the VNIPO maintained its rejection by the confirmation of refusal

App. No. 4-2004-09174

Filing date: 6/9/2004

(National Reg. 76000 granted on 11/10/2006 after  review)

Class 35, 40, 41 (publishing and trading books).

App. No. 4-2004-06236

Filing date: 25/6/2004

Notice of grant: 9/11/2005[5]

Class 35:  Trading books

Trademark is wholly protected. The words “Sách Việt” [English translation is Vietbook] is not protected separately)

Similar to the mark VietCashew above, in this case, VNIPO also rejected Vietbook because of the earlier filed mark Sách Việt but there was a difference that is the VNIPO withdrew its rejection after a review was submitted

ENSURE GOLD

 National Reg.  171511

Class 29: milk

Disclaimer: Nil

 

National Reg. 190511

Class 29: milk

Disclaimer recorded. Trademark is wholly protected. "Full and balanced nutrition", "a", "R" are not protected separately

National Reg 166534

Class 29: milk

 

Trademark is wholly protected. The verbal elements “R”, “GOLD”, “IQ”, “MAX” and “3” are not protected separately

The text element “GOLD” is used for milk products but none of Abbott’s reg. nos. 171511 and 190511 is disclaimed while reg. no. 166534 is disclaimed.

 

HIGHLANDS COFFEE

App. No. 4-2008-15894

Filing date: 25/7/2008

Class 30 & 43 (coffee)

First rejection of 13/8/2009

Second rejection (confirmation of refusal) of February 2, 2010

 

National Reg. 44471

Trademark is wholly protected. The verbal element “HIGHLANDS COFFEE” is not protected separately

The rejected application was filed during the time the holder – Viet Thai International Coporation – had successfully registered the trademark Highlands Coffee & design /Reg. 44471 in which “Highlands Coffee” is not exclusively protected

HIGHLANDS COFFEE

App. No. 4-2012-02380

Filing date 17/2/2012

Class 30 & 43 (coffee)

National Reg. 231207

Issued on 10/9/2014

 

Trademark is wholly protected. The verbal element “COFFEE” is not protected separately

This trademark under app. no. 4-2012-02380 (identical with the rejected mark under app. no. 4-2008-15894) re-filed in 2012 by the new owner – Blue Sky Holdings Limited – was approved by the VNIPO.

 

Bross & Partners has experience in supporting and representing clients to protect trademark (brand name). Should you have needs, please contact us at Email: 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 preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anti-counterfeiting, litigation and domain name matters.

 



[1] Former name of the VNIPO is the NOIP (National Office of Intellectual Property), an agency under the Ministry of Science and Technology, in charge of administering and granting titles of protection of industrial property rights, namely invention, utility solution, design, trademark, layout design

2 Similar to Vietnam, other countries also do not disclaim the descriptive elements when they are united with the non-descriptive elements to generate a unitary mark such as Vinamilk trademark under the International Reg. No.0985886.

2 Section 6 Decree 63/1996/CP as amended: these following signs cannot be protected in the form of trademarks:

c) Signs indicating time, place, methods, kind, quantity, quality, feature, ingredient, useage, describing function and origin of goods/services.

3 Section 74 of the IP Law: The capacity of distinctiveness of trademark

2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

b) Conventional signs or symbols, pictures or common names in any language of goods or

services that have been widely and regularly used and known to many people

[5] On 25/12/2008, the VNIPO officially rejected due to non-payment of granting fee.

 

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