Trademark Refusal on Absolute Grounds: KENFOX Successfully Helps Secure Protection for 4 International Trademarks in Vietnam
KENFOX IP & Law Office has recently achieved a significant victory in helping clients successfully register and protect 04 International Registrations (IRs) designating Vietnam. All 04 of these trademarks were initially refused protection by the Intellectual Property Office of Vietnam (IP Vietnam) on absolute grounds, specifically for being considered descriptive.
Trademark Refusal on Absolute Grounds in Vietnam
During the examination process for trademark applications in Vietnam, refusals issued by IP Vietnam based on absolute grounds (stipulated in Articles 73, 74 of the Intellectual Property Law) are a quite common situation and pose significant challenges for trademark owners. The most common reason for refusal in this category is that the trademark is considered descriptive – meaning it directly describes the type, quality, function, characteristics, etc., of the registered goods or services, or the trademark is considered to lack inherent distinctiveness.
Facing such a refusal decision, many rights holders may feel deadlocked because if they cannot respond or appeal successfully, the trademark will not be granted a certificate of registration. This not only directly affects legal rights and brand-building strategies but also carries potential risks of other parties legally using similar signs, causing consumer confusion and negatively impacting business operations in the Vietnamese market.
Trademarks Refused on Absolute Grounds: What Are Effective Strategies?
To respond to or appeal a notification or decision of refusal based on absolute grounds, the most crucial step is to carefully review and analyze the nature of each trademark, the scope of registered goods/services, comparing them with current legal regulations and the examination practices of IP Vietnam.
Based on the analysis results, KENFOX developed a system of tight and logical legal arguments for each case. We focused on pointing out elements that allow the trademark, although potentially suggestive of the product/service, to still possess sufficient distinctiveness for consumers to identify the commercial origin, and demonstrating that the trademark has acquired distinctiveness through actual use in the market (secondary meaning). For the “twozzim” trademark, we also emphasized the unique visual element, contributing to its distinctiveness.
KENFOX actively coordinated with and guided clients to collect and systematize relevant evidence proving our arguments. This evidence concerned the extensive actual use of the trademark, consumer recognition, marketing materials, business scale, design uniqueness, etc. The evidence was presented scientifically and persuasively before IP Vietnam.
Reversing Refusal Decisions, Paving the Way for Safe Business Operations
The persuasive analyses, arguments, and robust evidence system helped KENFOX IP & Law Office succeed in convincing IP Vietnam to reconsider and subsequently grant protection for all 04 aforementioned international trademarks in Vietnam.
With the withdrawal of the refusal notifications, the above trademarks are now protected under Vietnamese law, providing the trademark owners with a solid legal basis to avoid unnecessary legal risks and effectively prevent intellectual property infringement acts in Vietnam.
Conclusion
A refusal decision on absolute grounds, although a quite common and challenging situation, is not necessarily the end of the road for the brand protection journey in Vietnam. However, practice also clearly shows that successfully appealing these refusal decisions is by no means easy.
Overcoming this legal barrier and persuading IP Vietnam to reconsider requires meticulous preparation and a systematic approach. Success heavily depends on professionalism, deep expertise in intellectual property law, sharp analytical skills for case details, extensive practical handling experience, and especially the ability to build, collect, and present strong, relevant evidence. Only when all these factors converge does protecting the legitimate rights for a trademark refused on absolute grounds become feasible.
QUAN, Nguyen Vu | Partner, IP Attorney
PHAN, Do Thi | Special Counsel
HONG, Hoang Thi Tuyet | Senior Trademark Attorney