Applied-for mark “KINGSTON RESIDENCE” of application No. 4-2015-01997 for products/services in Class 36. "Buying and selling houses, leasing apartments, leasing offices, investing capital in the construction of residential and industrial infrastructure, making capital investment projects" was rejected registration by the NOIP (Decision No.14374/QD-SHTT of February 28, 2018) on the ground that the word element "KINGSTON" is likely to make confusion for consumers about the origin of goods/services.
The applicant appealed, proving that the applied-for mark "KINGSTON RESIDENCE" which contains the geographical name "KINGSTON " does not confuse consumers about the origin of the products/services bearing the mark, namely:
(i) There are 38 places in eight countries over the world named "KINGSTON". In the case in question, the word element "KINGSTON" of the applied-for mark is the city, capital and chief port of Jamaica, sprawling along the southeastern coast of the island, backed by the Blue Mountains. Kingston city is the island's main manufacturing, commercial and transport hub. No information has been found indicating that the "Kingston" land has a reputation for the products/services to be registered, namely buying and selling houses, leasing apartments, leasing offices, investing capital in the construction of residential and industrial infrastructure, making capital investment projects. Thus, using the word "KINGSTON" as trademark will not confuse consumers about the origin of the products/services to be registered, or in other words consumers will not think that the products/services in question have the source from Kingston region;
(ii) Some trademarks containing the word "KINGSTON" were accepeted registration by NOIP under the names of different entities for products/services not related to this name-place. For instance, the "KINGSTON" trademark for Class 09 "Adaptation table for computer memory, modules and adaptive chips for computer memory, processor upgrade table, CD-drive ROM ..", Registration No.43017 granted to Kingston Technology Corporation (USA); the "KINGSTON" trademark for Class 03 "Cosmetics; perfume; oil; hair conditioner; soap ... ", Registration No. 238852 granted to Saigon Cosmetics JSc. (Vietnam).
Holding that the above arguments of the applicant is grounded, the NOIP issued Decision No. 2499/QD-SHTT of May 22, 2019 to cancel its previous decision of refusal. The “KINGSTON RESIDENCE” trademark is accepted for registration in its entirely; no protection for the word element “RESIDENCE” when standing alone.