Vietnam: whether or not is there any likelihood of confusion existed between

the junior trademark Boss Window and the senior trademark BössDoor

Email to: vinh@bross.vn

As a legal representative on behalf of the right holder of senior mark, December 7, 2011 Bross & Partners filed an opposition demanding the National Office of Intellectual Property (NOIP) to object to whole protection of the junior mark on the legal ground stipulated in Article 74(2)(e) of the IP Law by the following arguments:

1. High degree of similarity in structure and appearance found, in particular, both the prior trademark and opposed trademark share the verbal element Boss (the two dots horizonally put above the letter O under the senior mark do not change the consumer’s perception of visuality and pronounciation that this is still the letter O) that plays a role as a dominant factor or sign for the purpose of distinction while the remaining marks of "Door" or "Window", "cửa đẳng cấp – nhà an tâm” (high-class door - home of peace) are descriptive, non-distinctive characters.
2. Relatedness of the goods and services found, although commodities bearing the marks in question may be made of plastic or other materials other than metal, they are essentially doors which are the goods sold by the same distribution channel with the same intention of use and especially optional by consumers. Similarly, door design services are also closely related to the manufacture, installation and construction of the goods
3. BössDoor is a considerably influential brand name in the market of metal door, roll-up aluminum door, the co-existence of the two trademark would thus likely make consumer believe into thinking that BossWindow is a new line of product made by the opposer

On December 14, 2012, the NOIP issued a conclusion on opposition settlement no. 10252/SHTT-NH1 considering, amongst other things, that the disctinctive component Boss when is combined with Door under the previous trademark and Window under the later trademark has generated two entireties with a similar message to consumers. At the same time, despite the differences in materials and classification, the relevance of the goods and services bearing the trademarks at dispute is very close to each other in the commercial market. Therefore, the opposition submitted by Bross & Partners is fully accepted. And until November 7, 2013, a notice of substantive examination by the NOIP refusing the junior mark was released.

Bross & Partners is rich in experience in handling trademark opposition as well as trademark counter-opposition in Vietnam. 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.