In the previously post , we have answered some of the questions about overview and registered trademark . Following this post, we will continue to answered about some other issues related to that a Trademark can be registered or not ?.
1. Absolute Grounds for Refusal
1.1 What are the absolute grounds for refusal of registration?
The absolute grounds for refusal of registration include:
- signs lacking distinctive characteristics, such as simple geometric shapes, figures, letters and words of uncommon languages. However, such signs may be protected as a mark if they have become distinctive through extensive use and are recognised as a mark;
- signs, symbols, pictures or common names of goods in any language, which are common knowledge or which have been extensively and often used;
- signs indicating the time, place, method of manufacture, kind, quantity, quality, property, composition, purpose or value of the goods or services, or being otherwise of descriptive character in relation to the goods or services or their origin. However, such signs may be protected as a mark if they have acquired distinctiveness through use before the filing of trademark applications;
- signs being identical with or confusingly similar to quality marks, control marks, warranty marks or like marks of international organisations having noticed and requested for repression of use of such marks, except for the very marks registered as certification marks in the name of the very organisations;
- signs being identical with or confusingly similar to a State flag, State emblems of countries, or symbols, flags, armorial bearings, abbreviations or full names of State agencies, political organisations, socio-political organisations, socio-political professional organisations, social organisations or socio-professional organisations of Vietnam or international organisations, except with the consent of the relevant agencies or organisations;
- signs being identical or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or distinguished persons of Vietnam or foreign countries;
- signs liable to mislead, confuse or deceive consumers as to the origin, nature, functions, intended purposes, quality, value or other characteristics of the goods or services;
- signs describing the legal status and domain of activity of business entities; and
- signs indicating the geographical origin of goods or services, however such except for those signs which have been widely used and recognised as a trademark or registered as collective marks or certification marks.
1.2 What are the ways to overcome an absolute grounds objection?
Absolute grounds objections in question 1.1 d), e) and f) above are impossible to overcome. Remaining absolute grounds objections in question 1.1 a), b), c), g) h) and i) may be overcome if distinctiveness of a sign has been acquired through extensive use (“secondary meaning”) and as such is recognised by customers as a mark.
1.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
Any party to a decision of refusal of registration from the NOIP has the right to appeal that decision.
1.4 What is the route of appeal?
An appeal against the rejection of an application or refusal to grant registration may be lodged with the NOIP within ninety (90) days from the date the appellant receives the decision or notice concerned. Against the decision on the appeal, further appeal may be lodged within thirty (30) days with the MoST, or administrative proceedings may be instituted. In case of disagreement with the decision of the MoST, the appellant still has the right to initiate a lawsuit in accordance with administrative procedures.
Viet Nam – An Overview on the TradeMark Protection in the Form Of Questions and Answers
2 Relative Grounds for Refusal
2.1 What are the relative grounds for refusal of registration?
Relative grounds for refusal registration on account of the existence of rights of other parties include:
- signs being identical with or confusingly similar to the mark of another party registered in Vietnam or registered in an international registration under the Madrid Agreement or the Protocol extending to Vietnam for the same or similar goods or services;
- signs being identical with or confusingly similar to a mark whose registration in Vietnam or whose international registration under the Madrid Agreement or the Protocol extending to Vietnam has been applied for the same or similar goods or services in an application having an earlier filing or priority date. This applies even for marks belonging to the same owners except for associated marks;
- signs being identical with or confusingly similar to a mark of another party the registration of which has expired or was cancelled less than five years ago, except if it was cancelled only on account of non-use;
- signs being identical with or confusingly similar to the mark of another party which is recognised as a well- known mark in accordance with Article 6bis of the Paris Convention or being identical with or confusingly similar to the mark of another party which is used on an extensive scale and recognised as that other person’s mark;
- signs being identical with or confusingly similar to a protected trade name if the use of such signs is likely to cause confusion to consumers as to origin of goods or services, or a protected geographical indication if the use of such signs is likely to cause confusion to consumers as to geographical origin of goods;
- signs identical with a geographical indication or consist of a geographical indication or being translated or transliterated from a protected geographical indication for wines or spirits, if such signs shall be registered for wines or spirits not originating from the place indicated by that geographical indication;
- signs being identical with or not significantly different from a protected industrial design or an industrial design whose protection has been applied for, having an earlier priority date; and
- in case of an application for the registration of a mark identical or similar to an earlier mark of another party, a letter of consent of that other party could be filed, but the NOIP in such case may still refuse registration if it is of the opinion that registration of the mark may lead to confusion in connection therewith it should be stated in the letter of consent that the simultaneous use of the marks by both parties concerned will not cause confusion amongst the public.
2.2 Are there ways to overcome a relative grounds objection?
A relative grounds objection can be overcome by limiting the specification so that no conflict remains, obtaining consent from the relevant earlier rights owner or removing the earlier mark from the register through revocation or invalidation due to non-use of a registered mark or bad faith registration.
2.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
See the answer to question 1.3 above.
2.4What is the route of appeal?
See the answer to question 1.4 above.
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