Assessing relatedness of the goods/services for examining registrability of trademarks in Vietnam
How the goods and/or services bearing this trademark are deemed related/relevant to those under an earlier mark is very important to determine registrability of similar trademarks in Vietnam. Whether Nice Classification is the only basis for making an assessment on relatedness/relevance of the goods/services bearing trademarks? Of course, it is not.
Generally, in evaluating the relatedness of goods or services, the more similar the trademarks are, the less related the products or services need to be to cause a probability of confusion. This principle was demonstrated in Rule 23, Regulation on Trademark Examination in Vietnam, providing that [An applied-for trademark may be deemed similar to a prior mark, but if the former is applied for the designated goods/services which are quite remote/far from those claimed under the cited mark, likelihood of confusion may not occur]. Thus, arguments on relatedness/non-relatedness is significant in winning a trademark refusal or opposition/invalidation action in Vietnam.
1. How to assess the relatedness of the compared goods and/or services in the examination process for a new trademark application? Is Nice Classification the only basis for making an assessment? Will other factors, like marketing practices, affect the said assessment?
In order to determine whether a sign sought to be registered and stated in a trademark application is identical or confusingly similar to another mark (“the cited mark”), an examiner is required (i) to compare such sign to the cited mark(s) and at the same time (ii) to compare goods or services bearing such sign to those bearing the cited mark(s). A finding of likelihood of confusion may be established if the following two conditions are fully met:
- A sign is identical or confusingly similar to the cited mark. In detail, the examiner in Vietnam examines the similarity or dissimilarity of the sign/mark(s) in their entireties as to appearance, pronunciation, connotation, etc. Under the laws, if similarity is found in either appearance, pronunciation or connotation, the trademark is found similar to the prior mark.
- Goods or services bearing an applied-for mark is identical or similar/related to the protected goods or services claimed under a prior mark.
In trademark substantive examination process in Vietnam, if an applied-for trademark is deemed confusingly similar to a prior mark, the examiner shall assess similarity/relatedness of the goods/services bearing the marks in question to determine whether a finding of confusion should established to allow or reject protection of the applied-for trademark. Thus, goods or services do not have to be the same or even competitive and still there can be a likelihood of confusion.
Similarity/Relatedness of the goods/services is assessed in compliance with Point 39.9, Circular No. 01/2007/TT-BKHCN, as revised. In detail:
[Point 39.9. Assessment of similarity of goods and services:
a) Two goods or two services shall be considered identical (of the same type) if these two goods or services have the following characteristics:
(i) They have the same nature (composition, ingredients) and the same function and utility; or
(ii) They have similar natures and the same function and utility;
b) Two goods or two services shall be considered similar if these two goods or services have the following characteristics:
(i) They are similar in nature; or
(ii) They are similar in function or utility; and
(iii) They are marketed in the same commercial channel (they are distributed by the same mode, or sold together or compete with each other in the same type of shop…);
c) A goods and a service shall be considered similar if they fall into one or several of the following cases:
(i) They have a correlation in nature (a goods or service or a material or component of a goods or service forms constitutes part of the other); or
(ii) They have a correlation in function (to accomplish the function of a goods or service, it is necessary to use the other or they are usually used together); or
(iii) They have a close correlation in method of realization (a goods or service is the result of the use or exploitation of the other)].
In evaluating the relatedness of goods or services, the more similar the trademarks are, the less related the products or services need to be to cause a probability of confusion. This principle was demonstrated in Rule 23, Regulation on Trademark Examination in Vietnam, implying that [An applied-for trademark may be deemed similar to a prior mark, but if the former is applied for the designated goods/services which are quite remote/far from those claimed under the cited mark, likelihood of confusion may not occur].
Following Point 39.9, Circular No. 01/2007/TT-BKHCN, an examiner in Vietnam also assesses how consumers are encountering the goods/services in the marketplace (i.e. marketing practices) to determine a likelihood of confusion. In other words, if consumers encounter the goods/services and mistakenly believe they share a common source, affiliation, or connection, the marks will be considered confusingly similar. The specified goods/ services play a crucial role in determination of the similarity during the trademark examination in Vietnam. In fact, it is commonly held that confusion is likely where there are similar marks and one mark is for goods and the other is for a service related to those goods. E.g. An applied-for mark “XYZ” for “Wholesale and retail store services featuring motorcycles and their parts and accessories” in Class 35 may be held likely to cause confusion with a prior mark “ZYZ” for “motorcycles and their parts and accessories” in Class 12. Similarly, the “alcoholic and non-alcoholic beverages” in Class 32 may be deemed similar/related to “food and drink catering services” in Class 43. As a result, marketing practices are also considered by the examiner to assess whether the public will be confused as to the commercial source of the goods/services.
Conversely, if consumers do not encounter the products or services in the marketplace, then even if the marks are identical/confusingly similar, no likelihood of confusion exists. Similar/ identical signs can still be registered, provided that the goods and/or services applied for are unrelated to the ones covered by earlier similar/ identical trademarks. E.g. An applied-for mark “XYZ” for “Pharmaceutical preparations” may be held unlikely to cause confusion with a prior mark “ZYZ” for “Plant Protection Preparations” although they fall in the same Class 05.
In light of the foregoing, NICE Classification is not the only basis for the examiner in Vietnam to assess similarity/relatedness of the goods/services bearing the marks.
2. What solutions are there to deal with the irregularities concerning the identification of goods and services?
A trademark application in Vietnam shall statutorily undergo 02 phases of examination, i.e., formality examination (or examination as to form) and substantive examination (or examination as to substance). In formality examination, a trademark application shall be subject to formality examination for evaluation of its validity (See Article 109, Vietnam IP Law). Formality examination of applications means examination of observance of regulations on formalities applicable to applications, serving as a basis for concluding whether applications are valid/regular or invalid/irregular (See Point 13.1, Circular No. 01/2007/TT-BKHCN, as revised). In detail, an examiner will assess whether a trademark application follows the formality standard and the information relating to, inter alia, (i) the inconsistent identity of the applicant, (ii) lack of description of the mark, (iii) lack of Vietnamese translation of the priority documents, (iv) the insufficient clear representation of the mark, (v) insufficient filing fees, (vi) a mark contains matter in characters other than Latin characters or Arabic numerals without a transliteration of such matter, (vii) incorrect classification of goods/services, (viii) unclear identification of goods and services (e.g. the designated goods/services are too vague or too broad), etc. (See Point 13.3, Circular No. 01/2007/TT-BKHCN, as revised).
Generally, a generic term or class headings for a goods/service shall not be accepted for trademark registration unless such generic term has a code in the Nice Classification (for example, Class 25_Clothing, footwear, headgear). Accordingly, in most cases, the identification of goods/services claimed under a trademark application must must be specific, definite, clear, accurate, and concise for (i) calculating the filing fees because fees for filing a trademark application in Vietnam depends on the number of goods/services in each class and (ii) determining the scope of a trademark protection of which is, apart from the trademark specimen, based on the list of designated goods/services in a Trademark Registration Certificate, (See Article 11.2, Decree No. 105/2006/ND-CP).
The identification of goods and/or services is the description of the products/services covered in a trademark application. To cope with the IP Vietnam’s Notice on irregularities concerning the identification of goods and services, a response must be submitted to IP Vietnam within 02 months from the date of its Notice (See Point 13.6, Circular No. 01/2007/TT-BKHCN, as revised). In the response, the applicant should
- Compare the identification of goods/services claimed in the present application with those previously accepted identification in other trademark application and/or identification of goods/services under NICE Classification to determine whether the IP Vietnam’s irregularity Notice is grounded.
- File a response which specifies the designated goods/services which are deemed too vague or too broad if the IP Vietnam’s irregularity Notice is deemed grounded. The applicant should ensure that the specified goods/services must be within the scope of the identification in the filed application. The specified goods/services in a trademark application filed with the IP Vietnam must not expand beyond the list of goods and services initially designated. If the speficiation of goods/services is deemed to expand the protection coverage (increases the protection volume) for the mark, it will not be accepted and the applicant shall file a new application and all procedures shall be carried out anew (See Point 17.1c, Circular No. 01/2007/TT-BKHCN, as revised).
- File a response which renders counter-arguments against the IP Vietnam’s irregularity Notice, providing supporting evidence (g. the identification of goods/services has been accepted in many other trademark applications and/or under NICE Classification).
- In some cases where the identification of goods and services are deemed incomprehensible, a product catalogue should also be submitted to support specifying the goods/services.
3. If a response to irregularity notice is filed, is it possible that a second or more irregularity notice will be further issued?
An examiner in Vietnam is not statutorily barred from issuing second or more irregularity Notice. However, in practice, there are hardly any cases where the second or more irregularity Notice will be issued. In formality examination, the examiner will raise all irregularity issues in the first Notices for the applicant to respond.
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