Background
A well-known German company, a producer and distributor of eyewear, sunglasses and protective helmets, applied for trade mark protection under the Madrid system for its brand ‘X’ in 2010. The registration was applied for ‘goods & services’ in international trade mark classes 6-20, 35-37, and 39-41 (these categories indicate the type of product and must be used when filing for trade mark registrations internationally). Following the application, the brand ‘X’ was successfully registered in many countries worldwide. One of the designated countries was Vietnam.
The trade mark application in Vietnam specified goods in class 9: ‘spectacles; sunglasses; spectacle frames; spectacle cords; spectacle cases; protective helmets; protective helmets for sports; recorded sound storage media, recorded picture carriers, recorded audio-visual data carriers and recorded data carriers of all kinds; computer hardware; video games’.
In late 2010, the German company received a notification of refusal for a trade mark registration from the Vietnam Trademark Office. The reason for that was that the examiner claimed the trade mark ‘X’ to be confusingly similar to the already registered local trade mark ‘Y’ (National Trademark Registration No. 12345). An identical sign was registered for the services in class 38: ‘mobile phone services and message sending; computer aided transmission of messages and images’.
The trade mark examiner in charge informed the Germany company that their goods in class 9 were confusingly similar to the services in class 38 of the nationally registered trade mark. Thus, the trade mark examiner refused the application, despite the fact that other goods applied for were significantly different.
Action taken
The German company sought the assistance of a local law firm in Vietnam and filed an appeal, at the same time proposing an amendment to the trade mark application. The amendment consisted in removing the confusingly similar goods from the application, while keeping other unrelated goods such as ‘spectacles, sunglasses, spectacle frames, spectacle cords, spectacle cases, protective helmets, protective helmets for sports, and video games’ in class 9.
After this modification, trade mark ‘X’ applied for internationally was considered NOT confusingly similar to the earlier trade mark registration (No. 12345). Two trade marks are considered as identical/ confusingly similar when they are applied for similar/ identical goods and/or services AND for similar/ identical signs. Goods/ services are considered similar/ identical provided they are similar/ identical in nature (composition, appearance, etc.), in their functions (purpose) and in the way their functions are performed, or the goods and/or services have a related nature (constituted by the same material, one is part or component of the other), are complementary or they are distributed by the same trade channels (sold in the same shops).
Outcome
The Trademark Examiner was convinced that, after the limitation, the applied for goods: ‘spectacles; sunglasses; spectacle frames; spectacle cords; spectacle cases; protective helmets; protective helmets for sports; video games’ and services in class 38 covered by the earlier national registration had NO relation, and thus, were not confusingly similar. The Trademark Certificate was successfully issued for the German company’s trade mark ‘X’.
Lessons Learned
- The specified goods/ services play a crucial role in determination of the similarity during the trade mark examination in Vietnam.
- Similar/ identical signs can still be registered provided the goods and/or services applied for are unrelated to the ones covered by earlier similar/ identical trade marks.
- Trade mark searches should be performed not only for the similarity of signs, but also for the similarity of goods and/or services covered.
- The trade mark examination criteria vary in each country and the final decision is subject to the examiner’s decision.
- An experienced local attorney can significantly contribute to the success of the case.