Samsung Electronics Co., Ltd. (“Samsung”) received the Notification No. 2012/22/NDTT07 on May 23rd, 2013 from the National Office of Intellectual Property (“NOIP”) on provisional refusal on protection of the trademark “SYNCMASTER CLOUD” (“Trademark”) under the International Registration No. 1116814 with the reason that this mark is considered as confusingly similar to the “Spymaster” trademark (“Cited Mark”) being protected under the certificate of trademark registration No. 27318 in Vietnam.
Samsung Trade Mark Register SYNCMASTER CLOUD
Upon consideration the case, Samsung authorized to experts and found that the Cited Mark is also owned by Samsung, but recorded under its old address. Under the NOIP’s current practice, if a mark is identical or confusingly similar to a prior registered trademark under same owner, it will be refused when has two different address what filling in application. The reason that is often evoked unofficially by the NOIP to explain the above practice is that the NOIP has difficulty in and has no responsibility for determining whether the owner of Cited Mark and the Applied-for Mark is the same person. Therefore, NOIP has refusing to register trademarks which are identical or confusingly similar to prior marks of the same owner but there is discrepancy in recorded addresses.
In this case, the applicant must to procedure to change the address of the registered trademark ago in the NOIP. Then, file an appeal against the provisional refusal notice of NOIP by proving that the Cited Mark and the Applied-for Mark belong to the same owner so no likelihood of confusion for customers with regard to the origin of products.
After representative units for Samsung having proceeded with the above required procedures, on February 25th, 2016 the NOIP issued the Decision No. 622/QD-SHTT to withdraw the provisional refusal notice No. 2012/22 NDT07 and accept to registered to protect for the Applied-for trademark in Vietnam.