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The Emart trademark case: Considering trademark as a whole for assessment of distinctiveness


Recently, D&N International has succeeded in appealing against the refusal to protect the emart trademark for services in class 35 in Vietnam. This case once again confirms that a trademark shall be assessed as a whole for assessment of distinctiveness. A trademark which is a combination of low or non distinctive elements may be considered as distinctive as a whole.

Facts

The Korean Client, E-MART Co., Ltd (“E-MART Company”) filed an application for emart  trademark (“the Trademark”) for “wholesale and retail” services in respect of a wide range of goods in class 35 in Vietnam. Nevertheless, the National Office of Intellectual Property of Vietnam (“the NOIP”) refused to protect this trademark on the grounds that: (i) the Trademark directly guides the consumers to refer to the service of electronic commerce or trading via internet- “electronic mart” in class 35, therefore, the Trademark is considered merely descriptive to the applied services (Article 74.2(c) of IP Law); and (ii) the Trademark is considered confusingly similar to the prior registered marks anhoa and saigon (“the Cited Marks”) (Article 74.2(e) of IP Law).

Having disagreed with the NOIP’s refusal, on March 20, 2013, E-MART Company, represented by D&N International, filed an appeal against the NOIP refusal basing on the following arguments:

With regard to the absolute ground of refusal:

The applicant argues that the Trademark is presented in stylized form, including colours and the emphasized element “e”, thus as a whole creates specific impression to the consumers. It does not directly guide the consumers to refer to the service of electronic commerce or trading via internet- “electronic mart” for the following reasons:

  • The word “emart” has not been found in English-Vietnamese dictionaries or English-English dictionaries;
  • The letter “e” in yellow colour of the Trademark means “everyday”, which has been reinterpreted as “Emart helps to improve your everyday life by providing fresh products and service solutions”; the shape “e” in the letter “e” looks like an ear , being reinterpreted as “we listen to what our customers say”; the shape “a” in the letter “a” looks like a leaf representing freshness;
  • As a matter of facts, many registered marks are combination of an alphabetic letter and the word “mart” for services “wholesale and retail” that is often similar to the presentation of the Trademark. Such popular usage of this presentation helps consumers recognize the Trademark without any reference to electronic commerce;
  • In Vietnam, the Trademark has been registered for almost all classes including 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;
  • The Trademark has been registered in some countries, has been widely used and recognized (accompanied by supporting document);
  • Turnovers from providing services bearing the Trademark in period of 2009-2013 increased;
  • In Vietnam, E-MART Company has received a certificate of investment from the People Committee of Ho Chi Minh City for the first supermarket “EMART Go Vap” and has invested USD 60 million in building this supermarket;
  • The Trademark is claimed to be protected in its whole form (stylized). The elements “e”, “mart”, or “emart” are disclaimed for exclusive protection.

With regard to relative ground of refusal:

The applicant argues that the Trademark is not confusingly similar with the Cited Marks for the following reasons:

  • Elements “E”, “mart”, “eMart” incorporated in the Cited Marks are not exclusively protected;
  • The Trademark as a whole is distinguishable from the Cited Marks in terms of structure, presentation and pronunciation;
  • As a matter of fact, a number of marks containing elements “e” and “mart” for similar/ related services has been granted to different entities and have co-existed without causing any confusion as to the origin of goods/services;
  • The Trademark is claimed to be protected in its whole form (stylized). The elements “e”, “mart”, or “emart” are disclaimed for exclusive protection.

After examining and considering the above arguments and supporting documents provided by E-MART Company, on December 9, 2015, the NOIP issued decision No. 3158/QD-SHTT accepting appeal filed by E-MART Company as well as accepting to protect the Trademark in its whole form (stylized form) for applied services in class 35.