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Response to the NOIP’s provisional refusal against the application for trademark “10-FLEX”: PROTECTION OF A TRADEMARK CREATED BY A SIMPLE NUMERAL AND A DESCRIPTIVE ELEMENT


Recently, D&N International has been successful in responding to the NOIP’s provisional refusal against the trademark “10-FLEX”. Significantly, in this case, the trademark is a simple combination of an indistinctive numeral and a descriptive element presented in a normal font which was considered lack of inherent distinctiveness.

Facts

TOZEN Corporation (a Japanese company) filed an application for registration of the trademark “10-FLEX” for the goods “Pipe joints [not of metal]; flexible joints [not of metal] in class 17 (“Trademark”) in Vietnam. The NOIP provisionally refused for registration of this Trademark for the reason that the trademark is just a combination of a numeral (number 10) and a descriptive element (the word FLEX, which is the abbreviation of the word FLEXIBLE), accordingly, it lacked inherent distinctiveness as provided for in Article 74.2a and Article 74.2c of the IP Law.

Having disagreed with the NOIP’s provisional refusal, on June 23, 2016, TOZEN Corporation, through D&N International, filed a response to the NOIP’s provisional refusal against the Trademark basing on the grounds that the Trademark is inherently distinguishable even though it is a combidiation of a numeral and an indistinctive or less distinctive element, details of which are as follows:

  • The Trademark is a combination of the number 10 and an English word FLEX connected by a dash (-) between two elements which as a whole is not separated;
  • The Trademark is a coined word having no obvious meaning;
  • The Trademark has been considered inherently registrable and protected in many Asian countries including Japan;
  • A similar case in which the trademark had been granted protection upon result of an appeal in Japan is cited for the NOIP’s reference.

In addition, to put more weight on chance of success, as advised by D&N International, TOZEN Corporation provided the NOIP with documentary evidences proving that the Trademark has been widely used and recognized in the market, thus, has achieved distinctiveness through use in commerce for the designated goods.

After reviewing the arguments and documentary evidences submitted by D&N International, on May 10, 2017, the NOIP issued the Notification No. 16245/SHTT-NH2 accepting the response filed by D&N International and accept to protect the Trademark for the desinaged goods accordingly.

Comments

Under the current regulations and in practice, a trademark which is a simple combination of a numeral and an indistinctive or less distinctive element can still be accepted for protection if the application is accompanied by documentary evidences proving that such applied mark has been widely used and recognized in the market, thus, has achieved distinctiveness through use in commerce before its filing date. Accordingly, in this case, the documentary evidences proving the wide use of the Trademark is very important as it plays a decisive role leading to sucesss in the registration of this kind of marks.