VIETNAM: The strength or weakness of earlier trademark should be also

 taken into account when determining a likelihood of confusion of later trademark

Email to: vinh@bross.vn

A mark NESSO under app. no. 4-2015-19931 filed 27/7/2015 designating tea, coffee, mineral water, non-alcoholic drinks, among other things, in classes 30 and 32 was rejected by the National Office of Intellectual Property of Vietnam (NOIP) by an office action no. 6139/SHTT-NH1 of February 28, 2017 by reason of confusing similarity (likelihood of confusion) with 3 earlier registered trademarks in violation with Article 74(2)(e) [1] of the Intellectual Property (as depicted below):

To avoid subjective conclusions by trademark examiners, the law sets out a six-factor rule to consider when evaluating a likelihood of confusion that we mentioned in the previous article[2], according to which Bross & Partners, on behalf of the Applicant, filed a response against the office action, arguing that:

1. Regarding pronunciation, the junior mark has 2 syllables that is read (by an average Vietnamese consumer) as NES-SO differently compared with 5 syllables (under the two senior marks) read as NỜ-E-SPỜ-RES-SO and only one syllable being NES (under senior mark 3). As a result, it is unlikely to cause any deceptive similarity amongst them in terms of origin of trade.

2. The streng or weak rating of trademarks or brand names[3] significantly impacts the determination of a likelihood of confusion, meaning that the coined mark has the strongest distinctiveness while a trademark is considered “weak” if it consists or is comprised of non-distinctive matter and such a trademark is normally entitled to a narrow scope of protection[4]. The first two senior marks that are all composed of by combining the letter N and ESPRESSO, wherein ESPRESSO is an Italian-originated popular type of coffee, so the junior cannot create any likelihood of confusion with the senior marks even though commodities bearing them are identical or the same kind.

3. Global assessment is the rule provided by the laws, means the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression must be taken into account. Thus, in this case, upon the overall evaluation of the marks, no likelihood of confusion may exist.

With the above reliably reasonable arguments, on April 27, 2018, the NOIP accepted the complaint by Bross & Partners by issuing its notice of allowance no. 152233/SHTT-NH1 and as a result a registration no. 304239 was granted.

We had experience in helping the clients successfully responding or appealing against the NOIP’s refusal of trademark in Vietnam. Should you have particular question, feel free to contact us at vinh@bross.vn or cellphone 84-903 287 057.

Bross & Partners, a renowned intellectual property law firm founded in 2008, regularly ranked/recommended as one of the Vietnam's leading intellectual property law firms by the reputable legal guides such as the Managing Intellectual Property (MIP), Jetro, World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). Bross & Partners has had intensive expertise and extensive experience enabling it to assist clients to effectively protect or defense in complex intellectual property disputes regarding trademark, copyright, related rights, patent, design and domain name in Vietnam and abroad.