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The “D&N” trademark case: Protection of trademark, which is just a combination of two simple letters


D&N International has recently succeeded in appealing against the NOIP’s refusal to protect the “D&N” trademark for services in classes 35, 36, 41, 42 & 45 in Vietnam. Of note, the mark in this appeal is just a combination of two simple alphabetic letters and the ampersand “&”, which are considered indistinctive.

Facts

D&N International filed an application for “D&N” trademark for services in classes 35, 36, 41, 42 & 45 (“the Trademark”) in Vietnam. Nevertheless, the National Office of Intellectual Property of Vietnam (“the NOIP”) refused to protect this trademark on the ground that the Trademark is the simple alphabetic letters, therefore, lacks distinctiveness (Article 74.2a of IP Law).

Having not agreed with the NOIP’s refusal, on 22 May 2014, D&N International filed an appeal against this refusal arguing that the Trademark must enjoy an exception to the regulation because it has been widely used and recognized as a trademark, therefore, it has acquired distinctiveness with respect to the used services. To prove the above, D&N International has submitted the following arguments:

  • The Trademark is also the trade name of the Applicant and has been continuously in use since 1992;
  • Since the date of its establishment, D&N International has been providing consulting and related services to a great number of clients from over 50 countries in the world, from Asia to Australia, Europe and America;
  • Through continuos and extensiveuse for consulting and related services for over 20 years, the Trademark has gained reputation and goodwill amongst customers, thus acquired distinctiveness in Vietnam and abroad;
  • D&N International and its Trademark have continuosly been advertised and promoted through a variety of advertising channels;
  • The sales value of services provided under the Trademark increased over the last five years from 2008 to 2013;
  • The trade name “D&N International” has also continuously been used in correspondences between D&N International and the NOIP.

All the above arguments were accompanied by supporting document and evidences including certified true copy of certificate of business registration, in which the trade name “D&N” is stated, documentation proving use of the Trademark, list of clients, assessements and prizes from relevant magazines, copies of articles, …

After reviewing the arguments and supporting documents provided by D&N International, on January 25, 2016, the NOIP issued Decision No. 239/QD-SHTT approving the appeal filed by D&N International and  accepting to protect the Trademark “D&N” for the applied services.

Comments:

According to the current IP Law as well as practice of Vietnam, marks which are simple devices and geometric figures, numerals, letters, are still registrable if the owners thereof succeed in proving that those marks have been used as a trademark and been widely recognized before the filing date. In such cases, evidences of use of the marks are essential for successful registration.