Samsung Electronics Co., Ltd. (“Samsung”) received the Notification No. 2012/22/NDTT07 dated 23 May, 2013 from the National Office of Intellectual Property (“NOIP”) on provisional refusal on protection of the trademark “SYNCMASTER CLOUD” (“Applied-for Mark”) under the International Registration No. 1116814 as it is considered as confusingly similar to the trademark “Synmaster” (“Cited Mark”) being protected under the certificate of trademark registration No. 27318 in Vietnam.
Upon consideration of the case, D&N International, Samsung’s IP Representative for Vietnam, found that the Cited Mark is also owned by Samsung, but recorded under its old address. Under the NOIP’s current practice, if the Applied-for Mark is identical or confusingly similar to a prior registered trademark or pending application, it will be refused even though they are registered in the name of the same owner. The reason that is often evoked unofficially by the NOIP to explain the above practice is that the NOIP has difficulty in and has no responsibility for determining whether the owner of Cited Mark and the Applied-for Mark is the same person. Therefore, it systematically refuses to register trademarks which are identical or confusingly similar to prior marks of the same owner if there is discrepancy in recorded addresses to avoid the omittance.
In this case, in order to overcome the NOIP’s refusal, the applicant must request the NOIP to record the address change of the Cited Mark and file an appeal against the NOIP’s provisional refusal by proving that the Cited Mark and the Applied-for Mark belong to the same owner so no likelihood of confusion may be possible in the mind of customers with regard to the origin of goods.
Upon D&N International having proceeded with the above relevant required procedures, the NOIP issued the Decision No. 622/QD-SHTT on 25 February, 2016 to withdraw the provisional refusal No. 2012/22 NDT07 and accept to protect the Applied-for Mark in Vietnam.