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The “Elégance” Trademark Case: The NOIP’s current trend of citing prior marks to refuse registration


Recently, D&N International, on behalf of Albion Co., Ltd., Japan, (“Applicant”) has successfully overcome the NOIP’s provisional refusal to register the untitled trademark for goods in classes 03 and 21 (“Applied Mark”) on the ground that it is similar to the same mark for goods in classes 9, 14, 16, 18, 24, 25, & 26 (“Cited Mark”). Of note, both the Applied Mark and the Cited Mark are applied for different goods in different classes. However, the NOIP considers them as conflicting to each other.

 

Facts:

 

The Applicant filed an application for registration of the Applied Mark for goods in classes 3 & 21 in Vietnam. However, the NOIP provisionally refused to grant protection on the ground that it did not meet protection criteria stipulated in Article 74.2e of the Intellectual Property Law, as it was confusingly similar to the Cited Mark “untitled”, registered for goods in classes 9, 14, 16, 18, 24, 25, & 26 in the name of ELEGANCE PARIS.

 

Disagreeing with the NOIP’s provisional refusal, on October, 2016, the Applicant, represented by D&N International, filed a response against the refusal basing on the following arguments:

 

  • The designated goods of the Applied Mark are totally different from those bearing the Cited Mark; and
  • The Applicant has acquired from the owner of the Cited Mark all trademarks copy-of-untitled and untitled for goods in classes 3, 18 & 21 in some countries including Vietnam. These arguments are evidenced by a relevant notarized assignment agreement of trademarks between the Applicant and the Owner of the Cited Mark and printout from wipo’s website of information on result of assignment of the markcopy-of-untitled.

 

After reviewing the arguments and supporting documents provided by the Applicant, on November 24, 2016, the NOIP issued the Notification No. 40827/SHTT-NH1 accepting D&N International arguments.

 

Comments:

 

Under the current examination trend, if an applied mark is identical to a prior trademark, this prior mark will be a bar against the registration of the later-applied mark, even though the goods/services bearing these marks are totally different. However, this examincation trend is not applied for a word mark, which is just a dictionary word in a standard font. In view of this, individuals/organization should pay attention to designing a new trademark in case the mark is presented in stylized forms, to avoid overlap on idea and design so that to avoid the risks of being refused by the NOIP.