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Whether Does Burger King Stop the Use and Registration of King’s Ice Cream?
(Ngày đăng: 2015-04-15)

Written by Linh, Nguyen Khanh - Lawyer of IP Department - BROSS & Partners

FACTUAL BACKGROUNDS

On 19/08/2011, Burger King Corporation, a US global chain of hamburger fast food restaurants  headquartered in Florida, United States, owner of a variety of trademarks “Burger King” and Burger King & device protected in Vietnam for the goods and services in classes 29, 30, 32 and 43 (Opponent), filed an opposition against the applications for registration of the mark "King’s Ice Cream, device" under App.No. 4-2010-19216 for food products in class 30 in the name of King’s Creameries (S) Pte Ltd, a Singapore company (recently changed name as F&N Creameries (S) Pte Ltd) (Applicant).

In its Notice No. 5132/SHTT-NH1 of August 19, 2011, National of Intellectual Property Office (NOIP) requested the Applicant to respond within 01 month or before 19/08/2011.


Opponent’s Argument

The Opponent argued that the opposed mark is not distinguishable from the prior trademarks as above depicted in accordance with Article 74.2.e of the Law on IP because:

  • The sign “King’s” of the proposed trademark “King’s & device” and the word “KING” under the protected trademark “BURGER KING & device” are similar in structure and pronunciation pertaining to similar goods and services, thus they would cause confusion to customers.
  • All of the marks are registered for the same products and related services (food and restaurant) 

Applicant’s Counter-opposition

Acting for the Applicant, Bross & Partners requested NOIP to throw out the opposition by reason of:

  • The opposed mark is different from visual impression because of containing a silk ribbon bent from two sides with interlocking oval in middle stylized word “King’s”. Meanwhile, the prior marks include one word mark and one mark designed with a lacking circle;
  • The opposed mark is distinctive with the prior marks on overall impression: on semantic aspect, the word “King” of opposed mark translated in Vietnamese is “Vua, quoc vuong, chua te” and “ice cream” is mean that “kem lanh”, other while, the word “Bugger” could be written by another word of “Humbugger” or “Hamburg” translated into Vietnamese are “thit bo bam vien, banh ham-bo-go, banh my xăng- uyt hăm-bơ-gơ”;
  • Hence, approaching on average knowledge of Vietnamese customers, prior marks “Bugger king” could be aware that “Vua banh Hăm-bơ-gơ” and the opposed mark “King’s Ice cream” could be memorized as “Kem cua Vua”. Thus, in assessment on meaning of the marks, there is groundless to allege that co-existence of the marks “Bugger King” and opposed mark “King’s Ice Cream” making any confusion to source of origin thereof.
  • The words “King” is weakly distinguishable sign that be used and registered by many other holders for the same of classes 30 and 43 in Vietnam such as trademarks “King Crab”, “Sea King”, “Candy King”…..

Conclusion

After considering the contentions submitted by the parties, NOIP issued Notification No. 4123/SHTT-NH1 dated 29/05/2014 rejecting the opposition by reason of the followings:

  • The opposed mark and the prior marks are different from visual impression and presentation;
  • The word “King” has been protected by many owners for the same products and services in classes 30 and 43.

As NOIP’s response to the opposition is the final and not subject to be appealed and/or additional argued, thus the opposed mark “King’s Ice cream, device” were accorded protection on 29/01/2015.


© 2014 BROSS & Partners


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