Vietnam: Transposition of Marks Can Be Likely to Cause a Likelihood of Confusion?

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Assuming that an applied-for mark (junior trademark) and an earlier mark (senior trademark) contain two elements (signs) of A and B wherein an applied-for mark is B+A while the other is A+B, so the applied-for mark can be considered to be likely to be confusing with the earlier mark if they are used for the same goods or services?

Having known the six-factor rule[1] to consider when assessing a likelihood of confusion between the junior trademark and the senior trademark comprises:

1. The degree of identity or similarity to the extent that can cause confusion in terms of the structure (composition) of applied-for mark compared to cited trademark
2. The degree of identicalness or similarity to the extent that can cause confusion in terms of the pronunciation (reading) of applied-for mark compared to cited trademark
3. The degree of identity or similarity to the extent that can cause confusion with respect with the content (meaning or connotation) of applied-for mark compared to cited trademark
4. The degree of identity or similarity to the extent that can cause confusion with regard to form of expression (eg. graphic, fine art, etc.) of applied-for mark compared to cited trademark
5. Are goods or services bearing the applied-for mark identical with or similar to those pertaining to the cited trademark?
6. The mark applied for registration and the cited mark must be assessed globally (entirely commercial impression), including the degree of distinctiveness of the cited mark, strong or weak elements constituted the cited trademark must be taken into account.

In a simpler statement, according to the above six-factor evaluation rule, the junior trademark would be considered confusingly similar to the senior trademark if the former nearly resembles the senior trademark in terms of structure or/and connotation or/and pronunciation or/and appearance to the extent that consumers can mistakenly believe that the two subject matters are the same subject or this subject is a variant of the other.

Concerning the reversal of the constituents of a trademark, especially in the case where the junior trademark made of only two elements, A and B, in our view, the junior trademark composed of B + A is not considered likely to be confusing with the senior trademark made of A + B because this reversal indicates that the junior mark is supported by the factors 1, 3 & 6 above (in the meantime the senior trademark is backed by the remaining factors). Such reversal is able to make a significant difference in structure and overall impression compared with the senior trademark as objectively speaking, the behavior of consumers is that they will read, look and/or associate the trademarks in their mind from left to right, and in practice no one does the opposite.

Practically according to our observations, it seems that our views are similar to those of the National Office of Intellectual Property of Vietnam (NOIP). Specifically, a junor mark "Anh Vũ Law" (the term Law is disclaimed) used for legal service in class 45 was accepted protection regardless of the existence of a senior mark “VŨ ANH” used also for legal services in class 45.

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.