Failure to counter-argue led to revocation by default?

An application for registration of mark “Cá Sấu Hoaca” (its English translation of Vietnamese characters is Crocodile) by a Vietnamese company is partially rejected by NOIP, particularly the word “Cá Sấu” is concluded to be confusingly similar to the earlier well known marks “Crocodile devices” and “Crocodile” under IR Nos. 437001, 638122 and 723443 designated Vietnam, amongst other countries, covering multiple classes such as 25, 29, 31 under the Nice Classification in the name of Lacoste. However, in another case, an applied-for mark “Cá Sấu” (its English translation is Crocodile) designating non-alcoholic drink, beer, alcoholic in classes 32 & 33 is rejected by NOIP because of likelihood of confusion with the earlier registered marks (not the earlier well known marks) which are the same as the former.

It is worth noting that unlike Section 74(2)(i) famous trademark based refusal ground applied by NOIP in the first case, the second case is objected differently based on Section 74(2)(e) of the IP Law providing that no mark is registered if it is or consists of signs other than associated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member.

Upon successfully persuading the applicant for the second case that a famous trademark may be still subject to non-use cancellation regarding non-used goods bearing it, Bross & Partners filed two non-use cancellation actions in part (class 32 & 33) against the marks crocodile devices before NOIP and readily pending counterarguments from Lacoste. However, due to no response made by Lacoste in the prescribed time limit, recently NOIP handed down Decision 2534/QD-SHTT declaring termination of partial validity of marks crocodile devices under IR Nos. 808033 and 437001.

Is NOIP’s Position on Well-known Mark Protection Divided?

As a signatory to both Paris Convention for the Protection of Industrial Property (the Paris Convention) and Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPs), Vietnam has transposed its well-known mark protection obligation setting out at Article 6bis of the Paris Convention and Article 16 of the TRIPs into IP Law of 2005 as revised, thereby well-known mark is defined as a mark widely known by consumers throughout the territory of Vietnam.

Section 74(2)(i) sets forth no protection of an applied-for mark is approved if it contains signs identical with or confusingly similar to another person's mark recognized as a well-known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration was aimed at taking advantage of the reputation of the well-known mark.

The principle for establishment of right over well-known mark following Article 6(3)(a) of the IP Law stipulating that industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures. However, Article 6(6) Decree 105/2006/ND-CP as amended providing the guidance on implementation of IP Law makes clarification that the well-known mark protection shall be merely determined based on the substantiated evidence showing the wellknowness of a particular mark as result of satisfaction of 8 criteria of Article 75 providing for the following criteria shall be taken into account when considering whether or not a mark is well known:

(a)     The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

(b) The territorial area in which goods or services bearing the mark are circulated.

(c) Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

(d) Duration of continuous use of the mark.

(e) Wide reputation of goods or services bearing the mark.

(f) Number of countries protecting the mark.

(g) Number of countries recognizing the mark as a well-known mark.

(h) Assignment price, licensing price, or investment capital contribution value of the mark.

Regardless of the above principle, Article 75 well-known mark determination rule has been never probably used by NOIP. Instead, NOIP usually proclaims some senior marks (it is examiner’s personal understanding that those are famous ones but groundless) as the relative refusal ground as per Section 74(2)(i) to reject junior marks even though the goods or services bearing them are neither identical nor similar. However, most recently this point of view seems to be changing since some examiners assume that no famous trademark is existed as long as it has been not yet recognized as famous trademark according to a valid decision or judgment by an authority or a court.

Bross & Partners, a Vietnamese registered Patent, Design, Trademark and Copyright agent, constantly ranked by Managing Intellectual Property, World Trademark Review, The Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business. We are providing clients all over the world the reliable, affordable contentious and non-contentious IP services including IP enforcement, anti-counterfeiting, litigation and domain name recovery before courts and arbitrations. For further discussion, please get in touch with us via vinh@bross.vn or contact@bross.vn or saigon@bross.vn