A mark NESSO under app. no. 4-2015-19931 filed 27/7/2015 designating tea, coffee, mineral water, non-alcoholic drinks, among other things, in classes 30 and 32 was rejected by the National Office of Intellectual Property of Vietnam (NOIP) by an office action no. 6139/SHTT-NH1 of February 28, 2017 by reason of confusing similarity (likelihood of confusion) with 3 earlier registered trademarks in violation with Article 74(2)(e) 1 of the Intellectual Property (as depicted below):
| Applied-for Mark (Junior Mark) |
Cited Mark 1 (Senior Mark 1) |
Cited Mark 2 (Senior Mark 2) |
Cited Mark 3 (Senior Mark 3) |
 App. 4-2015-19931 Class 30 & 32 |
 Reg. 1054554 Class 30 |
NESPRESSO Reg. 777873 Class 30 |
NES Reg. 933668 Class 30 & 32 |
To avoid subjective conclusions by trademark examiners, the law sets out a six-factor rule to consider when evaluating a likelihood of confusion that we mentioned in the previous article2, according to which Bross & Partners, on behalf of the Applicant, filed a response against the office action, arguing that:
- Regarding pronunciation, the junior mark has 2 syllables that is read (by an average Vietnamese consumer) as NES-SO differently compared with 5 syllables (under the two senior marks) read as NỜ-E-SPỜ-RES-SO and only one syllable being NES (under senior mark 3). As a result, it is unlikely to cause any deceptive similarity amongst them in terms of origin of trade.
- The strengh or weak rating of trademarks or brand names3 significantly impacts the determination of a likelihood of confusion, meaning that the coined mark has the strongest distinctiveness while a trademark is considered "weak" if it consists or is comprised of non-distinctive matter and such a trademark is normally entitled to a narrow scope of protection4. The first two senior marks that are all composed of by combining the letter N and ESPRESSO, wherein ESPRESSO is an Italian-originated popular type of coffee, so the junior cannot create any likelihood of confusion with the senior marks even though commodities bearing them are identical or the same kind.
- Global assessment is the rule provided by the laws, means the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression must be taken into account. Thus, in this case, upon the overall evaluation of the marks, no likelihood of confusion may exist.
With the above reliably reasonable arguments, on April 27, 2018, the NOIP accepted the complaint by Bross & Partners by issuing its notice of allowance no. 152233/SHTT-NH1 and as a result a registration no. 304239 was granted.
Footnotes
[1] Article 74 Distinctiveness of marks
2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(e) Signs other than associated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member.
[2] For more understanding Vietnamese practices of trademark, see: http://bross.vn/newsletter/ip-news-update/2-LEGAL-STANDARDS-AND-6-FACTORS-FOR--DETERMINING-LIKELIHOOD-OF-CONFUSION-UNDER-THE-LAWS-OF-VIET-NAM
[3] The INTA assumes that a suggestive mark hints at or suggests the nature of a product or service or one of its attributes without actually describing the product or service. See more: https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactSheet.aspx
[4] "A trademark is considered "weak" if it consists or is comprised of non-distinctive matter. Such a trademark is normally entitled to a narrow scope of protection" according to Trademark Basics, Paul W. Kruse, Bone McAllester Norton PLLC, Nashville, Tennessee, page 8
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