Representing the applicant - Nha Rong Consulting & Informatics Training Co., Ltd. - Pham & Associates appealed against the NOIP’s Decision no.10308/QD-SHTT dated February 29, 2012 on rejecting application no.4-2009-08525 for registration of the “eduFirst & Design” mark for goods/ services in Class 41 “Education and training; informatics; foreign languages; translation, vocational training, educational support services" on the grounds that the applied-for trademark is confusingly similar to the cited mark “Education First, EF & Design” of the International Registration no. 937985 for services in the same Class 41.
The appeal is based on the following grounds:
(i) The applied-for trademark "eduFirst & Design" is not likely to cause confusion with the cited mark "Education First, EF & Design" because they: a) differ in appearance; (b) differ in structure, specifically "eduFirst" is a word set of 7 characters and "Education" and "First" are two separate words, one word consists of 7 characters, the other word consists of 5 characters; c) differ in pronunciation, namely: ",edʒэ’fэ:st” is different from ",edʒэ’kei∫n”- fэ:st”;
(ii) The applicant has provided documents to prove that the "eduFirst & Design" mark has been used in advertising banners, brochures, marketing activities, letters of recommendation, open letters, posters and advertising expenses, thereby proving the continued use of the trademark in question for services in Group 41 under the name of the applicant - Nha Rong Consulting & Informatics Training Co., Ltd.
Upon careful consideration of the appeal, the NOIP also found that
(iii) The cited "Education First" (being written separately) protected by the International Registration no. 937985 is composed of two English words "Education" and "First", this sentence can be normally understood [by the Vietnamese] as "Education is the number one "or "Education is the first” and they describe properties of the service in Group 41 that the cited applies to, namely "Education and language training; examination of language proficiency; provision of information on language teaching on a global computer network; computer-aided language education, teaching and training; provision of teaching tools online; provision of educational experiences in connection with cultural, historical and social themes, places and events such as educational tours and exchange programmes for students and teachers”. The scope of protection of the cited is too broad for the services in Group 41; and
(iv) The applied-for trademark is presented as "eduFirst & Figure", in which "eduFirst" can be understood as an acronym and is composed of two words "Education" and "First"; "eduFirst” is created word, having no specific meaning, so it is capable of functioning as a trademark and can be registrable as a whole, the protection of "edu" and "First" must be disclaimed.
On the footing that the appeal is grounded, the NOIP issued Decision no.3210/QD-SHTT dated July 5, 2019 on canceing its previous decision of refusal and proceeding with the protection of the mark “eduFirst & Design” as a whole, no claim is made to the exclusive right to use “edu” and “First” apart from the mark as shown.