KENFOX IP & Law Office > Case Studies

Case study 33: Overcoming Notification of Provisional Refusal against an IR designating Cambodia – what should be taken into account?

Overview: As you know, Cambodia became a member of the Madrid System for the International Registration of Mark on 05 June 5 2015. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a trademark owner can file a single application with their national or regional IP office, and then designates protection of their mark in Madrid member countries. This greatly simplifies and reduces the cost of the process, however in case your trademark faced a provisional refusal by the Department of Intellectual Property of Cambodia, what...

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Case study 32: What to do to overcome a provisional refusal in Cambodia due to a prior mark where the trademark applicant and the cited trademark owners are actually one entity?

As you know, Cambodia became the 95th member of the Madrid System, following the deposit with the Director General of WIPO on March 5, 2015, of its instrument of accession to the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Protocol enters into force, with respect to Cambodia, on June 5, 2015. With this accession, the applicant just having to file a trademark application in each country, a trademark owner can file a single application with their national or regional IP office, and then designates protection of their mark in Madrid member countries, including...

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Case Study 31: Overcome a provisional refusal against an International Registration Designating Vietnam – difficult but never give up !

How should you address to overcome a provisional refusal against an International Registration Designating Vietnam (“IRDV”)? What steps can be taken to ensure your trademark is protected in Vietnam? In recent years, international registration of trademarks designating Vietnam has increasingly preferred taking into account of the simple and convenient procedures that can save a lot of time and money, but it also include many potential risks relating thereto. KENFOX IP & LAW OFFIC has assisted its client to overcome a provisional refusal against an IRDV under various proceedings in Vietnam....

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Case study 30: Some takeaways on overcoming the provisional refusal against International Registration designating Cambodia

As you know, Cambodia became a member of the Madrid System for the International Registration of Mark on 05 June 5 2015. The system facilitates the filing of applications in multiple countries around the globe. Rather than having to file a trademark application in each country, a trademark owner can file a single application with their national or regional IP office, and then designates protection of their mark in Madrid member countries. This greatly simplifies and reduces the cost of the process, however in case your trademark faced a provisional refusal by the Department of Intellectual Property of Cambodia, what...

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Case study 29: Overcoming Relative Ground Refusal Against International Registration Designating Cambodia

Overview of the Madrid System of International Registration: The Madrid system of international registration is governed by two treaties: (i) the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and (ii) the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on 01 December 1995, and came into operation on 01 April 1996. Cambodia is party only to the Protocol, not to the Agreement. The Madrid Protocol became effective in Cambodia on 05 June 2015. ...

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Case study 28: Overcoming trademark refusal in Vietnam arising from multiple grounds of rejection, difficult but not impossible.

It is no doubt very difficult to overcome a refusal against a trademark which arise from conflicts with earlier mark(s), especially when more than one grounds of rejection are raised. How to overcome multiple grounds of rejection against an applied-for trademark requires in-depth knowledge, expertise and experience from IP practitioners.  Our firm, KENFOX IP & LAW OFFICE has succeeded in a trademark case which confronted two times of refusal based on two grounds of subjection (i.e. absolute and relative ground) from the Intellectual Property of Vietnam (“IP Vietnam”), under which our client’s applied-for trademark has been accepted for registration in...

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Case Study 26: Facing civil remedies due to improper use of a registered trademark in Vietnam

In 2015, Dong Phuong Company detected that A Sanzo Company used the sign “ ” (“Asanzo, device”) to affix on various products such as television, air conditioners and other consumer goods. To take actions against A Sanzo Company, in July 2015, Dong Phuong Company requested a bailiff service provider to document the evidence of alleged infringement against A Sanzo Company for selling products bearing the sign “Asanzo, device” in various products and business means....

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Case Study 23: A court case concerning well-known trademark “X-Men” between Marvel Characters Inc. and the Vietnamese applicant

A recent court case has attracted significant public attention in Vietnam: Marvel Characters Inc., USA v. the National Office of Intellectual Property over registration of the trademark “X-MEN & device” in the name of ICP, a Vietnamese company. Although it’s no surprise that the NOIP won against Marvel, this case may still be considered as important in the development of the IP protection system in Vietnam and showed the need for improving professional capabilities of Vietnamese judges in this new and specialized legal field....

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