International application no.1168792 "AQUA KEEP" for goods of Class 01 in the name of Sumitomo Seika Chemicals Co., Ltd. was temporarily refused to registration by Notice No.2013/29 TDH22 dated August 6, 2014 of the National Office of Intellectual Property (NOIP) on the ground that the "AQUA KEEP" sign does not meet the protection requirements as provided for in Article 74.2 c of IP Law, namely the applied-for mark is descriptive.
The applicant appealed (first-time) against the NOIP’s notice, arguing that
(i) "AQUA KEEP" does not directly describe the characteristics and functions of goods bearing such sign. "AQUA KEEP" is a created set of words which does not exist in English dictionary. Although standing separately its elements have meaning, namely "AQUA" is water" and "KEEP" means "to have or retain possession of (as verb); food, clothes, and other essentials for living (as noun), but the set of words" AQUA KEEP " is not used in life and does not exist in dictionaries.
Thus, "AQUA KEEP" does not indicate, refers directly to goods, i.e. “unprocessed acrylic resin, unprocessed artificial turpentine; chemical preparations for scientific purposes, not for veterinary or pharmaceutical purposes; chemical preparations for industrial use; industrial chemicals", that bear the applied-for mark, as well as their properties. Therefore, when the set of words "AQUA KEEP" is used as a mark for goods claimed to be protected it is fully capable of performing the distinguishing function of a trademark.
(ii) Practice of mark registration abroad showed that no country has refused to protect the mark in question for the reason of non-distinctive. The "AQUA KEEP" mark has been registered in many countries such as the United States, Algeria, Argentina, Yemen, Singapore, India, Australia, Canada, the Philippines, Indonesia ...
However, in its appeal resolution no.3755/QD-SHTT of November 3, 2017, the NOIP reserved the conclusion stated in its previous notice, stating that the protection of a trademark in other countries cannot serve as the basis and reason for obtaining protection in Vietnam.
The applicant further appealed (second time) to the Ministry of Science and Technology (MOST) with provision of the proof that the trademark has been registered and used in more than 50 countries and regions. In Vietnam, the products bearing this trademark have been imported and distributed since 1997 with increasing quantity year by year. In addition, in order to clearly define the scope of protection of the trademark and to avoid any potential conflicts (if any) with other entities when the trademark is used, the applicant requested the NOIP to protect the "AQUA KEEP" as a whole, not to protect “AQUA” separately.
This complaint was accepted by MOST. On November 26, 2018, the Minister of MOST issued Decision no.3624 QD-BKHCN to request the NOIP to register the "AQUA KEEP" trademark as a whole, no claim to the exclusive right to use the verbal element "AQUA" apart from the trademark as shown./.