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.
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:
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:
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.
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.