On 19/11/2018 the MOST Minister issued a decision requiring the NOIP to revoke the refusal decision and proceed with necessary procedures to protect the mark “BIO-CERT” as a whole.
International application No.946362 of Mark BIO-CERT under the name of BRAND GMBH + CO KG (Limited Partnership), Germany, for Class 9.” Scientific, electrical, electronic, optical, weighing, measuring, signaling, control apparatus and instruments...” was denied for protection in Vietnam by Decision No.2013/17-MQD23 dated 28/4/2014 of the National Office of Intellectual Property (NOIP) on the grounds that "BIO-CERT" is considered to be the abbreviation of "bio certified" which means "biological certification" and indicates that the products bearing the mark are biocompatible, meeting specific environmental standards, thus the applied-for mark is descriptive and not indistinguishable.
Representing the applicant, Pham and Associates has appealed against the NOIP’s rejection. However, by issuance of following Decision No. 4273/QD-SHTT dated December 12, 2017, the NOIP still upheld the decision refusing to protect the trademark.
Further appeal was filed to the Minister of Science and Technology (MOST) arguing that the applied-for mark "BIO-CERT" meets the requirements for protection in Vietnam because:
(i) "BIO-CERT" does not imply "biological certification"; this word combination/set does not exist in the English dictionary. Each word in this combination is the acronym that has a meaning, in which: "BIO" stands for "biography" or "belongs to life, biology", "CERT" stands for "certificate, diploma" . However, in dictionaries and everyday life the above word combinations is not used;
(ii) In Vietnam and in the world does not exist the concept of "biological certification". Therefore, it is not possible to explain that the products bearing the applied-for mark are considered as "biological certification, meeting specific environmental standards" as the reason that the NOIP has cited in its Decision to refuse to protect the mark;
(iii) Because "BIO-CERT" does not mean the description of product, a number of countries, such as the United States, Canada, Australia, European Union, Japan, Switzerland, Russia and Israel have accepted to protect the mark;
(iv) Products bearing the mark "BIO-CERT" have been imported and distributed widely by Do Viet Joint Stock Company in Vietnam;
(v) In addition, during the settlement of the second appeal at MOST, in order to determine the exact protection scope of the mark and to avoid any potential conflict of interest may occur, the complainant's representative has required the NOIP to protect the applied-for mark as a whole, not protect the word components "BIO" and "CERT" separately.
Having considered the above arguments are grounded on the basis of Article 74.2(c) of the IP Law, on 19/11/2018 the MOST Minister issued a decision requiring the NOIP to revoke the refusal decision and proceed with necessary procedures to protect the mark “BIO-CERT” as a whole.