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Trademark case “ENSHU”: Obtaining consent from the citied mark to overcome the NOIP’s refusal


Recently, D&N International, representing ENSHU Limited, Japan, has successfully overcome the NOIP’s refusal of registration of the trademark “enshu” on the ground that it is confusingly similar to the trademark “ENSHU” (“The Cited Mark”), protected under the Registration No. 121449 in the name of ENSHU Vietnam Limited Company (“ENSHU Vietnam”).

Facts

ENSHU Limited, Japan (“ENSHU Japan”) has filed an international trademark registration designating Vietnam for enshu for goods in class 07 (“The Applied-for mark”). Nevertheless, National Office of Intellectual Property of Viet Nam (“NOIP”) issued a Notification on provisional refusal of protection for the Applied-for mark on the ground that it is confusingly similar to the registered trademark “ENSHU” for the similar and related goods in the name of ENSHU Vietnam Limited Company (“ENSHU Vietnam”), thus did not satisfy requirements for protection as provided for in Article 74.2e of the Law on Intellectual Property.

Having reviewed the case, D&N International found that there is a “parent-subsidiary relationship” between ENSHU Japan and ENSHU Vietnam, the owner of the Cited Mark and accordingly advised and assisted ENSHU Japan in obtaining a Letter of Consent from ENSHU Vietnam which would allow coexistence of the two marks. D&N International then filed, on behalf of ENSHU Japan, a response to the NOIP’s refusal of trademark protection based on consent for coexistence from ENSHU Vietnam.

Having reviewed D&N International’s arguments, on September 12, 2017, the NOIP issued Decision No.2970/QD-SHTT accepting trademark protection for enshu for goods in class 07 in the name of ENSHU Japan.

Our comments

When an application for registration of a trademark is refused on the ground that it is confusingly similar to a registered mark or earlier-filed pending mark (“Cited Mark”), acquiring a Letter of Consent from Cited Mark’s owner is one of solutions to overcome the NOIP’s refusal.

However, before adopting this solution, applicant should carefully consider possible risks of acquiring a Letter of Consent. If there is a close relationship between the applicant and the Cited Mark’s owner (for example: parent company and its subsidiary company), Letter of Consent can usually be obtained without difficulty. However, in case there is no relationship between the two of them, the applicant should evaluate the possibility that the Cited Mark’s owner files an opposition against the registration of the applied-for mark upon hearing about the application.