A Complaints related to "Emart" trademark: Considering the overall mark for assessing distinctiveness.
Recently, in the complaint about the decision to refuse protection of the EMART mark for the services under groups of 35. This case again shows that to assess distinctiveness of trademarks need to considered overall factors. A trademark is a combination of elements with little or no distinctiveness capability, can be considered capable of distinguishing about overall.
E-MART Co., Ltd. of Korea has filed a Emart trademark registration for the service "wholesale, retail all type of products ..." of groups of 35 (" Trademarks ") in Vietnam. However, the NOIP has refused with reason:
(i) Signs suggested direct for consumers that made them associate with this kind of e-commerce services or online purchases - "electronic mart" in groups of 35 therefore Marks considered to describe for registration services (Article 74.2c); and
(ii) Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable. Include: AN HOA e-Mart and SAIGON e- Mart (Article 74.2 (g) IP Law 2005.
Because of disagree with the opinion of the NOIP refusal, on March 20th 2013, E-MART co.ltd, through its representative, has filed a complaint to the NOIP to protest the refusal of a trademark registration certification for the following arguments:
About the absolute refusal basis:
According to the trademark owner, This mark has distinctiveness because it has been stylized presentation, including colors and letters "e", therefore, the overall of trademark created impression what impact to consumer awareness, and do not direct suggest for consumers that made them associate with this kind of e-commerce services or online purchases because:
- Don not find word “ emart” in English-Vietnamese dictionary or Vietnamese-English dictionary.
- The letters “e” in trademark meaning that “everyday” aim at to convey the message: "Emart enhance your daily life by providing products and services fresh every day"; and the image “Image1” in letters “e” likely to ears, convey the meaning: We always listen to what customers say ; the image “ Image2 ” in letters “a” likely leaf, show fresh products. In reality, there are so many marks under protection which is a combination of letters and words "mart" for services "wholesale and retail" similar to Trademarks registration. The dissemination make consumers can distinguish mark registration without any reference to the type of e-commerce services.
- In Viet Nam, trademarks protection for groups of 1, 2,3, 5, 8, 9, 10, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 36, 37, 38, 39, 40, 41, 42, 43, 44, & 45.
- Trademarks have been registered in some countries in the world, used and widely acknowledged (with documents proving);
- Revenue from the business of products / services during 2009-2013 has been increasing;
- In Vietnam, E-MART co. ltd, has been the People's Committee of HCM city granted investment certification for project about building the first supermarket "Emart Go Vap" and has invested 60 million USD to build this supermarket.
- Trademarks has overall protection requirement , not protected to single elements is "e" and "mart".
About the relative refusal basis:
Trademark owners argue that mark is not confusingly similar with two label controls , because:
- The element "E" and "mart", "Emart" in two control labels do not be separate protection;
- About Overall of mark, this mark different with two control labels include: about structure, form of expression and pronunciation.
- The mark contains elements "e" and "mart" is registered for the similar service and the same type / related have been granted to various entities and co-exist in the market without confuse to consumers about the origin of products / services;
- Trademarks has overall protection registration claims, not register to protected for individual elements is "e" and "mart".
After considering the arguments and evidence by the E-MART company provided, on September 12th 2015, NOIP has published Decision No. 3158 / QD-IP about accept complaints by E-MART Company as well as accept protected for overall trademark of services under groups of 35.