''PRESIDENT’S wax on'' vs. ''WAXONE 1''

Kim Vinh Phat Trading and Service Business  ("Kim Vinh Phat") filed an application at the National Office of Intellectual Property (NOIP) for invalidation of the Trademark Registration Certificate  No. 163435 for the mark "PRESIDENT'S wax one" [which is protected in its entirety, "wax" is disclaimed] granted to Mr. Chanapan Kittikasemsak (Thailand) on the ground that the aforesaid  trademark is confusingly similar to the trademark "WAXONE 1" which is being protected under Trademark Registration Certificate  No. 63228 granted to Kim Vinh Phat for similar products “oils, creams and waxes…” in Class 03.

In summary, Kim Vinh Phat's arguments are as follows:

a) the trademark "WAX ONE PRESIDENT'S" (?!) is confusingly similar to the trademark WAXONE 1 because: (i) the main word element WAX ONE in large font, arranged separately in up-below lines, positioned in the centre of the mark creates a special impression for consumers when approaching the product and it coincides with the word WAXONE of the trademark "WAXONE 1" of Kim Vinh Phat, and (ii) "PRESIDENT" means the person who has the highest position in an organization or institution, ...,so in the context of above-mentioned mark it implies that the product's class is at the top, thus  it’s  descriptive of the product bearing the mark;

b) Kim Vinh Phat's trademark "WAXONE 1" has an earlier filing date and has been widely used by the trademark owner since 2003 and

c) The trademark “WAXONE 1” protects the “Oil, cream and wax” products of Class 03. The trademark “WAX ONE PRESIDENT’S” protects the  “Liquid varnish” products of Class 02  and “Cream for polishing; wheel cleaner; car cleaner; car seat cleaner; glass cleaner” products of Class 03. The products of these two marks  are identical/similar, both of which have the same nature [washing and cleaning/detergent chemicals], the same functions and uses [ used for cleaning and polishing] and thus they have the same commercial channel.

Therefore, the trademark "WAX ONE PRESIDENT'S" of Mr. Chanapan Kittikasemsak is indistinguishable from the trademark "WAXONE 1" of Kim Vinh Phat.

Representing the defendant, Pham & Associates, counter-arguing as follows:

- Mr. Chanapan Kittikasemsak's trademark is "PRESIDENT'S wax one" instead of  "WAX ONE PRESIDENT'S" as Kim Vinh Phat cited for evaluation;

- In the mark of Chanapan Kittikasemsak "wax" and "one" are separate words, they have meaning, are presented in the upper and below lines. Kim Vinh Phat changed them to a meaningless word "WAXONE'  for conducting analysis and comparision and based on this concluded that they are identical with the trademark "WAXONE 1" under Trademark Registration Cerificate No.63228. Notably, the word "wax" means “cream, wax [for polishing], is the common name of the product, is indistinctive element  so it’s disclained in the Trademark Registration Certificate No. 163435 of Mr. Chanapan Kittikasemsak;

- Kim Vinh Phat's argument that "PRESIDENT'S" means the person who has the highest position in an organization or institution, ...,so in the context of above-mentioned mark it implies that the product's class is at the top, thus it’s descriptive of the product bearing the mark. This argument is inadequate because the word “PRESIDENT” is a distinctive element that is protected under the Trademark Registration Certificate No.163435. The word “PRESIDENT” may perform functions of a mark if it does not directly describe and indicate a specific feature or nature of the product or service for which registration is sought. Mr. Chanapan Kittikasemsak has attached a list of 40 registered trademarks containing the word “PRESIDENT” for various products and services;

- the words “ president’s_ wax _ one” and “waxone 1” are pronounced completely differently in both English and Vietnamese’; and

- There is no evidence that the trademark "WAXONE 1" has been widely used for products registered since 2003 as argued by Kim Vinh Phat.

The NOIP has reviewed the both parties’ arguments and presented evidence and found that there is no basis to invalidate the Trademark Registration Certificate No. 163435 "PRESIDENT'S wax one" issued on 12/05/2011 for Mr. Chanapan Kittikasemsak (Thailand).

On May 4, 2021 the NOIP issued Decision No.1288/QD-SHTT to reject Kim Vinh Phat’s invalidation request. The appellant can appeal against this Decision of the NOIP or sue it in court./.