Dealing with substantive trademark Office Action based on absolute grounds in Vietnam
A substantive trademark Office Action is issued by the Intellectual Property Office of Vietnam (“IP Vietnam”) to indicate an issue with an applied-for trademark. While a substantive trademark Office Action shows that an applied-for trademark has been rejected, it is usually possible to file a response thereto that either corrects a defect identified by the IP Vietnam or that explains to the IP Vietnam why the applied-for trademark should be allowed.
Substantive trademark Office Actions issued by the IP Vietnam typically include a refusal to register the trademark either based on absolute ground or relative ground, or both on absolute and relative grounds. A trademark refusal may be total or partial.
Generally, absolute grounds for refusal include immoral, generic, descriptive, non-distinctive and customary marks (see Article 73, Vietnam IP Law and Article 74.2(a, b, c, d and đ)). Meanwhile, relative grounds cover identicalness to or confusing similarity with previously registered or earlier filed trademarks, widely used trademarks, well-known trademarks, trade names, geographical indications or currently protected industrial designs of others (see Article 74.2(e, g, h, i, k, l, m and n), Vietnam IP Law).
Absolute grounds for refusal against trademarks filed in Vietnam
The IP Vietnam runs its substantive examination on the “absolute grounds of refusal”, which aims at determining if an applied-for trademark falls within the scope of signs that are prohibited from protection as provided under Article 73.5, Vietnam IP Law. In detail:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
Absolute grounds of refusal may also extend to applied-for trademarks devoid of any distinctive character to denote the signs which are not capable of distinguishing the goods of one enterprise from those of others. Generally, these signs cannot be registered unless the applicant is able to, basically, provide evidence to prove that they have acquired secondary meaning. The following signs are generally deemed devoid of distinctive character under Article 74.2(e, g, h, i, k, l, m and n), Vietnam IP Law:
- Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
- Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
- Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
- Signs describing the legal status and business sector of business entities;
- Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law.
Some takeaway tips:
(1) Refusal on basis of identicalness or confusing similarity to “national flags or national emblems”
Article 73.1, Vietnam IP Law bars the registration of marks that consist of or comprise (whether consisting solely of, or having incorporated in them) the flag or emblems of Vietnam or of any foreign nations. It should be noted that the aforesaid provision also bars the registration of marks that consist of or comprise signs which are deemed confusingly similar to national flags or emblems, meaning that signs that give the appearance or effect or has the characteristics of such original symbols may face a refusal. We note, however, that the incorporation in a mark of individual or distorted features that are merely suggestive of flags or emblems may not be refused for registration. Further, designs that do not rise to the level of being emblems of national authority should not be refused. Arguments may be rendered in case of rejection on basis of flags or emblems that (i) flag designs incorporated in the proposed mark are not recognizable as the flags of a specific nation, (ii) the applied-for mark contains a representation of certain flags, but not the flag or flags of any particular nation and (iii) the mark creates an overall commercial impression distinctly different from any particular flag/emblem. In another option, the applicant may choose to delete such rejected element out of the applied-for mark or request a disclaimer of the unregistrable matters to obviate a refusal of registration
(2) Refusal on basis of identicalness or confusing similarity to “Emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations”
Proposed marks that contain the emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio politico-professional organizations, social organizations or socio-professional organizations or with international organizations (unregistrable symbols or designations) will be refused registration on the ground of Article 73.2, Vietnam IP Law. A disclaimer of these unregistrable symbols or designations will not render the mark registrable. Of note, In case the applicant submits an amendment deleting the unregistrable symbols or designations, the IP Vietnam’s examiner may still, if appropriate, refuse registration because the amendment to the mark is material and maintain the refusal(s). The statute carves out an exception for registering such symbols or designations if the applicant obtains a clear permission from the bodies or organization in question.
(3) Refusal on basis of identicalness or confusing similarity to “real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries”
As provided in Article 73.3, Vietnam IP Law, an applied-for trademark which consists of or comprises real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries will be refused registration. It can be interpreted broadly that if a mark comprises a name, aliase, pseudonym or image that could reasonably be perceived as identifying the aforesaid persons, the IP Vietnam’s examiner will issue a refusal. How to overcome such a refusal remains unclear.
Whether a written consent/permission from the aforesaid persons may afford registration of the proposed mark is still controversial, but it may be supportive, taking note that (i) a name appearing in a mark may be the name of more than one person, (ii) in the absence of fame or public recognition, the name, aliase and pseudonym are not necessarily associated with a particular individual, thus, the relevant public may not actually perceive the name, aliase and pseudonym as identifying a particular individual.
(4) Refusal on basis of identicalness or confusing similarity to certification seals, check seals or warranty seals of international organizations
Registration must be refused if the nature of an applied-for mark consist of or comprise (whether consisting solely of, or having incorporated in them) certification seals, check seals or warranty seals of international organizations which require that their signs must not be used to avoid a false connection between the applicant and such organization to the public or mislead the public into assuming approval or sponsorship by such organization.
Disclaiming exclusive rights over certification seals, check seals or warranty seals of international organizations contained in the mark generally will not overcome the refusal. In case an applied-for trademark comprises various elements including the above-mentioned seals, deletion of such seals out of the mark may be an option to overcome the refusal. Kindly note that the IP Vietnam’s examiner may accept such a deletion if the seal is separable from the other elements in the mark (i.e. the seal is spatially separated from other matter in the mark so that deletion of the seal would not significantly change the commercial impression of the mark).
(5) Refusal on basis of descriptiveness: Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services are, as provided in Article 73.5, Vietnam IP Law, not eligible for registration. For a trade mark to be caught by this ground for rejection, the connotation (contained in the trademark, its use in relation to nominated goods or services which is deemed to deceive or cause confusion) must arise from the trade mark itself, it must be obvious and direct, and the danger of being misled by the trade mark needs to be immediate. As such, arguing that the connotation of the applied-for mark is not obvious and direct and the immediate danger of deception/misleading confusion does not occur may be an option to respond to deceptiveness refusal. In addition, an applicant may avoid or overcome a deceptiveness refusal by amending the identification of goods or services, if accurate, to include the potentially deceptive term. Amending an identification of services to add “featuring” or “including” a material term may be also sufficient to obviate deceptiveness. It is also advisable that applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations on how the mark is perceived by consumers to overcome a deceptiveness refusal.
(6) Refusal on basis of descriptiveness: An applied-for mark may be rejected when the trademark examiner believes that it is merely descriptive of the goods/services claimed thereunder. A trademark is considered “merely descriptive” if the mark itself just functions as “signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services”. Under Vietnam IP Law, a mark cannot be merely descriptive. The idea behind preventing people from obtaining trademark protection for descriptive marks is that that individuals or commercial entities should not be allowed to claim exclusive trademark rights in descriptive words that competitors may need to use when describing their own goods/services. As a result, trademarks that comprise commonly descriptive (or generic) words are usually prohibited from being registered by the IP Vietnam. In practice, there are not uncommon instances where trademark applications face refusal/rejection based on an alleged descriptiveness of goods/services. However, those marks are not, in fact, descriptive, but just suggestive. The difference between descriptive and suggestive marks is a minor one. In certain cases, deciding if a particular mark is merely descriptive or suggestive is a close case where reasonable people might disagree. Vietnam IP Law does not contain provisions on refusal of a mark which is suggestive. Therefore, it usually makes sense to respond to a descriptiveness-based rejection by arguing that the applied-for mark is not merely descriptive of some aspect of the goods or services, but is rather only suggestive. Applicants may also submit evidence that the applied-for trademark subject to descriptiveness refusal has been accepted for registration in other countries worldwide to increase chance of success in overcoming the refusal.
(7) Secondary meaning (or distinctiveness through use): Secondary meaning occurs when an otherwise descriptive word or phrase has, through usage or other means, acquired a special significance such that the consuming public believes the word to be a trademark. a proposed trademark or service mark is not inherently distinctive, it may be registered upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce.
An applicant may submit affidavits, declaration, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services claimed thereunder.
The following should be taken into account to prove that an applied-for trademark has acquired distinctiveness through use:
- Distinctiveness acquired between the date of the application and the date when the IP Vietnam examines the application does not count. Thus, evidence should predate the filing of the trademark application.
- The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services depends on the facts of each case, the nature of the mark sought to be registered, and the circumstances surrounding the use of the mark, etc.
- Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness
- Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.
- Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. To show secondary meaning, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. Moreover, the survey should reveal that the consuming public associates the proposed mark with a single source, and not that the applicant is the first among many parties associated with the designation. The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. Evidence of secondary meaning may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source.