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“SKY” Trademark case: Trademark cancellation on the ground of non-use


Recently, D&N International has been successful in requesting non-use cancelation against validity of two trademark registrations, thus overcoming the NOIP’s refusal to protect an international trademark in Vietnam. The case, once again, has given trademark owners warning about the possibility of cancelation of validity of their trademark registrations due to non-use.

Facts

On May 28, 2009, NOIP issued a Notification on refusal to protect in Vietnam the trademark “SKY” in classes 9, 36, 38, 41 & 42 under international registration (IR) n° 960959 (“the Trademark”) in the name of British Sky Broadcasting Group PLC. According to the NOIP, the Trademark did not meet protection criteria set out in Article 74.2e of the Law on Intellectual Property as it was confusingly similar to prior registered trademarks containing element “SKY” as follows:

  • National Registration No. 13344 for “untitled” for “electronic apparatus including satellite and telecommunication apparatus including satellite dish” in class 09 dated September 19, 1994 in the name of SKY CHANNEL PTY LTD. (AU) (Prior Mark 1);
  • National Registration No. 13345 for “untitled” for “services in satellite transmission and radio” in class 38 dated September 19,1994 in the name of SKY CHANNEL PTY LTD. (AU) (Prior Mark 2);
  • National Registration No. 79086 for “untitled” for “lead accumulators” in class 09 and “accessories for automobile – motorbike (brake pads, air filter, gas filter)” in class 12 granted on February 02, 2007 in the name of Công ty TNHH quan hệ quốc tế Việt Thái (VN) (Prior Mark 3).

Solutions to overcome the provisional refusal on trademark registration:

Upon reviewing the case and initial research into the prior trademarks, D&N International was of the opinion that although Prior Marks 1 & 2 were registered in 1994, they might not have been in use in Vietnam since then. D&N International therefore advised client to initiate investigation into the status of use in Vietnam to collect evidences as grounds for requesting non-use cancelation of validity of the two trademark registrations. The market survey result appeared to indicate the non-use of Prior Marks 1 & 2 within five (05) consecutive years calculated backward. The NOIP then approved the said result as evidence of non-use and issued two official decisions cancelling the validity of these two cited trademark registrations.

With regard to the Prior Mark 3, after removing goods being similar/related to “lead accumulators” in class 9, the Trademark was no longer considered as confusingly similar to Prior Mark 3, since they covered different goods/services.

Upon considering arguments and evidences provided by British Sky Broadcasting Group PLC, on February 25, 2016 the NOIP issued Decision No. 565/QD-SHTT on accepting the appeal filed by British Sky Broadcasting Group PLC and in a meanwhile accepted protecting trademark “SKY” under IR 960959 in Vietnam.