Pham & Associates – the representative of The Saul Zaentz Company – appealed against the NOIP’s Decision No. 3312/QD-SHTT dated January 19, 2015 regarding the issuance of the trademark registration no.238960 dated 19/01/2015 for the trademark "THE HOBBIT: THERE AND BACK AGAIN", with no claim made to the exclusive right to use "THERE AND BACK AGAIN" apart from the trademark as shown, for products/ services in Classes 03, 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 28 and 41 due to non-distinctiveness and descriptiveness pursuant to Article 74.2.c) of the IP Law.
The arguments of the appeal are:
(i) The verbal portion "THERE AND BACK AGAIN" may only be considered descriptive for services in Class 39, namely "Tourism services and providing information on tourism; providing website address to arrange excursions and sightseeing tours; providing information about other websites related to tourism; providing information, news and commentary in the travel sector ”. However, the applicant has amended the application (no.4-2014-00544, filed on June 3, 2014) requesting the removal of Class 39 from the list of goods/services sought to be registered and this request has accepted by the NOIP;
(ii) "THERE AND BACK AGAIN" is not a common term, not indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods/ in Classes 03, 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 28 and 41 bearing the trademark "THE HOBBIT: THERE AND BACK AGAIN" applied for registration under the application No. 4-2011-21183; and
(iii) In fact, the trademark "THE HOBBIT: THERE AND BACK AGAIN" has been protected without disclaimer of the "THERE AND BACK AGAIN" portion appearing in the mark in nearly 30 countries over the world including the UK, Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Netherlands, Poland, Spain, Sweden, Italy, Singapore, Hong Kong etc ...
Therefore, a disclaimer of the verbal portion "THERE AND BACK AGAIN" apart from the trademark as shown in the trademark registration issued by the NOIP’s decision no 3312/QD-SHTT mentioned above deemed to be unappropriate and inconsistent with Article 74.2 b) and c) of the IP Law.
On the footing that the arguments of the appeal are grounded, the NOIP issued Decision no.3215/QD-SHTT dated July 5, 2019 on canceling its previous decision no.3312/QD-SHTT dated January 19, 2015 and proceeding with the protection of the trademark "THE HOBBIT: THERE AND BACK AGAIN" ./.