It can not be denied that overcoming refusal arising from conflicts with earlier mark(s) is not easy, especially when more than one grounds of rejection are raised. How to overcome multiple grounds of rejection against an applied-for trademark requires in-depth knowledge, expertise and experience from IP practitioners. Our firm has succeeded in a trademark case which confronted two times of refusal based on two grounds of subjection (i.e. absolute and relative ground) from the Intellectual Property of Vietnam (“IP Vietnam”), under which our client’s applied-for trademark has been accepted for registration in Vietnam via appeal proceedings.

Background:

Having acted as an IP agent for Origin Herbal Hair Treatment Pte. LTD, We applied to register “” (“Bee Choo Origin, device”)the goods in Class 03 mainly covered hair care products under Trademark Application No. 4-2013-10176 in Vietnam.

On completion of substantive examination, the IP Vietnam issued its refusal (first refusal) against the “Bee Choo Origin, device” trademark, concluding that it did not satisfy requirements of protection under Article 74.2(c) and 74.2(e), Vietnam IP Law given that the verbal element “origin” is descriptive of the claimed goods in Class 03 and the rest element “BEE CHOO” is deemed confusingly similar to prior trademarks “CHOO” and “DrBEE” under Registration No.77258 and 154327 respectively, with particulars as follows:

Actions taken:

Having reviewed the case, we find that the applied-for trademark and the citations may be distinctive in terms of structure and representation. Thus, at the client’s request, we submitted arguments and analysis on distinguishability and inherent distinctiveness of the applied-for trademark based on the arguments and facts as summarized as follows:

• Appearance of the marks: The applied-for trademark is composed of the verbal element “Bee Choo Origin”represented in bold red and a figurative element (i.e. two green leaves), making it a whole and, thus, it is an inherent distinctive mark. The cited marks merely consists of verbal elements without any stylization or figurative elements. As such, the representation of the applied-for trademark is completely different from the cited marks “Dr. Bee” and “CHOO” under under Registration No. 154327 and  77258 respectively, making the overall impressions created by the marks at issue different. Thus, the the marks in question will be perceived or memorized in the minds of the average consumers in different manner.
• The applicant does not request excluvive protection for the verbal element “Bee”, “Choo” or “Origin” and accordingly, proposes that the applied-for trademark should be protected as a whole.
• The trademark “Bee Choo Origin, device” is protected and co-existing in various countries where the cited mark “CHOO” is also accepted for registration.
• Difference in goods sought for protection although all the marks in question are intended for the goods in Class 03.

In light of the foregoing facts, we emphasized that likelihood of confusion on the commercial origin of goods bearing the mark in question can not be established.

In review of our response, the IP Vietnam continued to withstand its rejection (second refusal) and released a Decision No. 12667/QĐ-SHTT (“Decision 12667”) on refusal against the applied-for trademark.Unsatisfactory with the IP Vietnam’s Decision 12667, we filed a complaint/appeal No. KN4-2015-00486 with arguments almost the same with those submitted in the first response.

Outcome:

Having thoroughly reviewed our complaint/appeal, the IP Vietnam’s Enforcement and Appeal Settlement Department found that our arguments, facts and evidence are rooted and convincing, as such, reversed the conclusion of the examiners at the IP Vietnam’s Trademark Department,annulled Decision 12667 and approved protection for the mark “” under Trademark Application No. 4-2013-10176 in the name of Origin Herbal Hair Treatment Pte. LTD in Vietnam.

Lessons learnt:

• Splitting applied-for trademarks for examination on registrability thereof has now become a common practice in Vietnam. The breaking of a trademark into separate elements to assess its similarity to other prior marks without taking the mark entirety (trademark constituents) into account will result in a false inference on likelihood of confusion created by this trademark against others. We take the view that an applied-for trademark must be examined in its entirety to decide whether there exists a risk of actual confusion on commercial origin of the goods bearing the applied-for trademark as opposed to prior ones, based on which a trademark refusal is deemed grounded.
• In case a trademark is refused for protection by one or more than one cited trademarks, arguments and analysis of the most prominent and impressive part of the trademarks in questions and the commercial impressions that the trademarks brought to consumers must be stressed and focused. Furthermore, documents that demonstrate the co-existence of those marks in different countries are valuable and persuasive for the IP Vietnam to consider withdrawing its refusal against the applied-for trademarks.