The case in brief
In July 2019, the Vietnam Intellectual Property Office (“VNIPO”) issued a notification informing that our client’s “” mark under a national application in classes 05, 29, 30, 32 was accepted for registration, but a number of elements incorporated in the mark are disclaimed.
Disagreeing with the disclaimer of the three elements: (1) “” (which the VNIPO called “Yin-Yang device”), (2) “” (Chinese characters), and (3) “the ginseng devices”, Korea Ginseng Corp. consulted D&N International and decided to file a petition with the VNIPO based on the following arguments:
- The figurative elements “” and “the ginseng devices” incorporated in the mark are the creative, impressive and distinctive designs which are not the ordinary images of the “Yin-Yang symbol and ginseng roots and plants;
- All the said 03 elements have been individually and collectively used as trademarks and acquired sufficient distinctiveness through such uses in commerce.
After reviewing our vigorous arguments, in August 2020, the VNIPO agreed to withdraw the disclaimer previously imposed on “” and “ginseng devices” thanks to the inherent distinctiveness of these elements, but it remained its disclaimer imposed on the Chinese characters “” as the evidence provided was not sufficient to prove the wide use of this sign.
At the time of this case in 2019, filing petitions against the VNIPO’s disclaimers was still a new procedure officially allowed by a new IP regulation (Circular 01 as amended).
Currently there has been no provision or a detailed guideline on imposing disclaimer conditions on a certain part/element of a trademark. In most cases this matter depends on the perspectives and discretion of the examiners. Under the current practice, the disclaimer will be indicated in the registration certificate (and the national registry) in a very simple manner, e.g. “the Yin-Yang device, the Chinese characters and the ginseng devices are disclaimed”. Such simple indication would likely cause serious controversies and difficulties in determining exactly the scope of protection of the mark and accordingly the possibility of enforcement of the trademark rights. Typically, the trademark owner tends to understand that the said devices are disclaimed only in respect of their basic forms/ common motifs, but the creative and unique designs of these elements as shown in the mark are still protected. Whereas, a third party tends to simply understand that all the devices “named” in the disclaimer are not protected no matter what forms or designs they are in, and accordingly they may think they are free to copy such disclaimed devices for registration or use.
It has been rather often that during the trademark registration process, agents and/or applicants may not pay sufficient attention to the disclaimer stated in the VNIPO’s Notifications of intention of grant, and accordingly lost the rights to oppose such disclaimer. In fact, in a prior trademark of the same client (registered through another agent in 2009), the VNIPO did impose the disclaimer on the device “” but unfortunately it seemed that the client might have not filed any petition at that time. Thus, with our successful defence of the crucial designs (“” and “ginseng devices”) of the mark in this case, we have assisted Korea Ginseng Corp. to reclaim and retain their rights over the corporate identity symbols of their preeminent brand that they have built and invested in over half a century.