GIGA SOUND: An unprecedented appeal against the VNIPO’s refusal of protection of the Madrid trademark application designating Vietnam.

In 2014, Samsung’s “GIGA SOUND” mark in class 09 under the International Registration (IR) no. 1143271 designating Vietnam was provisionally refused protection by the Vietnam Intellectual Property Office (“VNIPO”) as it was considered confusingly similar to the prior mark “GIGAMAX”.

Advised and represented by D&N International, Samsung filed an appeal with the VNIPO. Under the current IP regulations and practice of Vietnam, a decision on settlement of appeal must always (i) confirm whether or not the appeal is accepted, and (ii) if the appeal is accepted, the applied-for mark must be allowed to proceed to registration. However in this case, the EAD rendered an unprecedented decision which caused confusion to all the relevant parties as well as difficulties in implementation of the decision.

In detail, in 2018, after reviewing our appeal, the Enforcement and Appeal Settlement Division (“EAD”) of the VNIPO issued a Decision on the one hand accepting our appeal so as to revoke the provisional refusal which was grounded on the prior mark, but, on the other hand, opining that the applied-for mark “may be descriptive to the designated goods”. Accordingly the EAD requested the Department for International Registration of Marks (“DIR” – the department which examined the applied-for mark and issued the provisional refusal) to re-examine the applied-for mark as regards its inherent registrability.

Realizing that the said Decision was improper, we persistently appealed and requested the relevant departments of the VNIPO to withdraw this Decision. As a result of our restless efforts, in December 2020, the VNIPO eventually issued another Decision to replace the previous one in which they decided to accept our entire appeal and accordingly allow our client’s mark to be protected in Vietnam in its whole form, but the word elements “GIGA” and “SOUND” are individually disclaimed.