“Do Bigger Things”: Succcessful arguments against the VNIPO’s refusal of a slogan mark
In April 2020, Samsung Electronics Co., Ltd.’s “Do Bigger Things” mark in class 09 under a national application was provisionally refused by the Vietnam Intellectual Property Office (“VNIPO”) as it was considered descriptive to the designated goods.
Disagreeing with the refusal, the client consulted D&N International and decided to file a response with the VNIPO based on the main arguments that (i) the applied-for mark is an English phrase which has vague meaning and does not directly describe any characteristics of the designated goods, (ii) the mark “Do Bigger Things” is a slogan which can function as a trademark, just like the registered slogan trademarks of other entities such as “JUST DO IT” in the name of Nike innovative C.V, “THE POWER OF DREAMS” in the name of Honda Motor Co., LTd., etc. and (iii) the applied-for mark has acquired distinctiveness through the use in commerce and is widely recognized by the customers in Vietnam.
In November 2020, after reviewing our response, the VNIPO agreed with our arguments that the applied-for mark is not descriptive to the designated goods and allowed it to be registered.
As a practice of the VNIPO, the Notification of provisional refusal in this case only invokes the Article 74.2.c of the IP Law without explaining how the applied-for mark is descriptive to the designated goods. Since there are no detailed provisions or guidelines regarding the distinctiveness of a slogan mark, many examples of slogan marks refused by the VNIPO can be seen such as “Innovation That Excites”, “Keep moving forwards”, “For seasons of love”, etc. In view thereof, we had to conduct an intensive search and then made a good use of the precedents, namely, successfully registered slogan trademarks, in support of our arguments to secure success in this case.