Applied-for mark "PERFORMA INSIGHT" of Roche Diagnostics GmbH under the Intl. Application no.1056581 registered for Class 10 is temporarily refused for protection by Notice no.2010/45 TDH12 dated November 15, 2011 of the National Office of Intellectual Property (NOIP) on the ground of being confusingly similar to the cited marks: (1) "PERFORMA" of LRC Products Limited under application no.4-2009-25206 registered for goods "Condoms, contraceptive devices, medical hygiene equipment or disease prevention equipment ” in Class 10, and (2) “INSIGHT” of Kodak Group SA under Intl. Registration no.578031 for products “X-rays equipment and accompanying parts” in Class 10.
Representing the applicant, Pham & Associates appealed against the NOIP’s Notice, based on the following grounds:
(i) the applicant has accomplished procedure at the WIPO’s International Bureau to limit the list of goods in Class 10, as a result the list of goods now is "blood glucose meters including accessories; lancet devices and lancets for medical purposes; insulin pumps and infusion sets including accessories, included in this class” used for metering blood glucose, medical operation and insulin pumping. This list of goods is different from those of the two cited trademark (1) and (2) above;
(ii) the goods/products bearing the above marks are specialized ones relating to human health, are sold exclusively in pharmacies and being introduced, prescribed and instructed by physicians and/or medical experts; customers, majority are patients, often seeks professional assistance or advice when choosing these goods/products with high degree of attention to the type, quality, origin of the goods/product so it is very unlikely to be confused; and
(iii) the trademark "PERFORMA INSIGHT" has been registered and co-existed with the cited trademark "PERFORMA" and/or "INSIGHT" in nearly 30 countries, including the European Community, French, Austria, Bulgary, Germany, Hungary, Italy, Finland, Spain ...
On the footing that the appeal is grounded, the NOIP issued Decision no.3375/QD-SHTT dated July 12, 2019 on canceling its previous decision of refusal and proceeding with the protection of the mark “PERFORMA INSIGHT”./.