The Ministry of Science and Technology (MOST) revoked the decision of the National Office of Intellectual Property (NOIP) rejecting to protect in Vietnam the mark "SEASONAL TASTES" of Westin Hotel Management LP (Westin) for Group 43.
International Application No.4-2009-16533 of mark "SEASONAL TASTES" designated Vietnam for the services under Class 43 "temporary accommodation services, food and beverage services, restaurant services, bar services" was rejected by the NOIP on the ground that the applied-for mark is not distinguishable.
Representing Westin, Pham & Associates filed an appeal against this decision of the NOIP. In settlement of the appeal, the NOIP, by its Decision No 3526 /QĐ-SHTT dated 19/10/2017, again decided to maintain its previous rejection with the following arguments:
(i) "SEASONAL TASTES" in Vietnamese is understood/translated as tastes restricted according to the season or time of year; this describes the nature of the services that bear the trademark; the mark has been recently registered and used in some countries;
(ii) The applicant (Westin) has had various forms of advertising, introducing the above-mentioned service to the consumer. However, the total sales of US$ 2.5 million from 2007 to 2010 is not enough to prove the mark has been used continuously, extensively and widely by the applicant.
Disagreeing, Pham & Associates lodged a further appeal to the Minister of MOST requesting the Minister to cancel Decision No 3526/QĐ-SHTT dated 19/10/2017 of the NOIP, counter-arguing that:
(iii) The applied-for mark is not purely a description of the registration service (such as food and beverages services, restaurant services, bar services, etc.), but only to suggest customers about the nature of tastes restricted according/relevant to the season of the related services. The meaning of "seasonal tastes" of the applied-for mark is, depending on the season, usually understood as there are the tastes and food suitable for food connoisseurs;
(iv) Trademark “SEASONAL TASTES” has been registered and used in many countries around the world and are accepted for protection for Class 43 in the English-speaking countries; is widely used (through advertisement and commercialization) in many countries including Vietnam;
(v) The mark "SEASONAL TASTES" is applied for protection as a whole, not separately protection of the word element "TASTES".
The MOST held with Pham and Associates’ arguments as according to Article 74.2 (c) of the IP Law, a mark shall be considered indistinguishable only when it directly refers to the nature, composition, use, value of the service. In this particular case, "SEASONAL TASTES", to a certain extent, only suggests the quality of the services that bear the mark, so it should be considered distinguishable. In addition, in order to confine the scope of protection of the mark applied for, the applicant requests the mark to be protected as a whole, not separately the word element "TASTES".
Consequently, the MOST Minister has issued Decision No.3428/QĐ-BKHCN dated 09/11/2018 to instruct NOIP to cancel its Decision No. 3526 / QĐ-SHTT dated 19/10/2017 and to protect as a whole the mark "SEASONAL TASTES”.