A request for cancellation was filed to the National Office of Intellectual Property (NOIP) agaisnt Registration no.147365 of trademark "Fantiny, figure" granted on June 11, 2010 for goods of Class 11 "Sanitary apparatus (baths, showers, wash basins) made of mica and composite materials" under the name of Công ty TNHH Thương mại và sản xuất quốc tế MICA (MICA International Trading and Production Co., Ltd. – MICA Co., Ltd) on the ground that it fails to meet the registrability criteria due to confusing similarity with the trademark "FANTINI" registered for the same Class 11 and also being the trade name of Italian Fratelli Fantiny S.p.A.
Representative of Fratelli Fantiny S.p.A, in the cancellation request, while stating that the "FANTINI" trademark has been used for "shower and bathroom apparatus " since 1947, was registered for the first time in Italy in 1951 and has been protected in many countries, and is recognized a well-known mark, but failed to provide any evidence to prove that the "FANTINI" trademark was widely used in Vietnam before October 31, 2005, the day MICA Co., Ltd. filed an application for registration of "Fantiny, design" trademark in Vietnam. In fact, in Vietnam Fratelli Fantiny S.p.A had no agents/shops to sell or distribute sanitary apparatus bearing the mark "FANTINI"; these apparatus were not displayed at any sanitary apparatus fair, exhibition or advertised/marketed on media channels.
Under the provisions of Vietnam IP law, "a widely- recognized and widely-used trademark" must be understood as the trademark that has been widely used for long time in Vietnam, making relevant consumers know about the trademark. A trademark that has been registered and widely used in other countries should not be considered as an evidence for recognising the widely-used status in Vietnam.
Based on the above argument, the NOIP issued Decision No.56 / QD-SHTT dated January 4, 2019 on refusing the request for cancellation of Registration no. 147635 for the "Fantini, figure" trademark.