Applied-for mark “PANDA EXPRESS” of international application No. 1153885 for services in Class 43 Restaurant services, namely fast food restaurant services under the name of Panda Restaurant Group, Inc. was provisionally rejected for registration by the NOIP on the ground that the sign is confusingly similar to the cited trademarks “PANDA” of international registrations no. 552959 and no.611089 and the trademark “PANDA, device” of application no.4-2013-18703. Representing the applicant, Pham & Associates law office appealed against this decision, arguing that:
(i) The reality of registration of composite trademark marks containing the word element "PANDA" in Vietnam: Some companies had applied for registration of a composite trademark which contains the word element "PANDA" combined with other word elements/or designs, for example "JUICY PANDA, design" of application No. 4-2012-09168, filed on May 8, 2012, or "HUNGRYPANDA" of application No. 4-2012-12192 filed on June 7, 2012, applied for services in Class 43. In these cases, the mark examination of NOIP concluded that they are not confusingly similar to the prior trademark "PANDA" of WWF - World Wide Fund for Nature. Afterward, both the "JUICY PANDA, design" and "HUNGRYPANDA" applications were deemed withdrawn. The reason for this was their failure to pay the prescribed fee, not the confusing similarity of the marks. Concerning the "PANDA EXPRESS" mark, the applicant wishes the NOIP to have a consistent view in examining the similarity of the trademark and the applications must be treated equally;
(ii) "PANDA EXPRESS" sign in comparison with the cited trademarks "PANDA" and "PANDA GOLF VILLAS": they differ both in terms of visual impression, pronunciation and meaning.
(iii) WWF - World Wide Fund for Nature – the owner of cited trademarks of International Registration No.552959 and No.611089 has issued a Letter of Consent to the registration and use of the "PANDA EXPRESS" trademark in Vietnam; and
(iv) The cited application "PANDA, design" No. 4-2013-18703 was rejected by the NOIP’s Decision No. 83307/ QD-SHTT on May 31, 2015. However, the applicant did not implement the appeal procedure. Therefore, the application was considered to have been abandoned and is no longer considered as a bar to the registration of the "PANDA EXPRESS" trademark.
After having reviewed the case and found the above arguments grounded, the NOIP canceled its previous decision of provisional refusal and proceed with the procedure to protection of the "PANDA EXPRESS" trademark as a whole, no protection for the word element "EXPRESS" when standing alone.