The applied-for mark “DIVERSEY” of JohnsonDiversey, Inc. sought to be registered for goods in the Classes 01, 03, 05, 07 and 21 was rejected by the NOIP’s Decision no. 55905/QĐ-SHTT dated 30/12/2011 with regards to Class 03 on the ground of being confusingly similar with the cited mark “DIVERSE” registered for goods in Classes 03, under Intl’ Reg. no.194398 of ETOS S.A.
Representing the applicant, Pham & Associates appealed against the NOIP’s Decision of rejection. The arguments on appeal are:
- The applicant has removed "hand soaps and hand lotions; shampoos " from the list of goods in Class 03. After limitation, remain only the chemicals, preparations and tools which are not used for the beauty or personal hygiene purposes of human being but are used for cleaning, disinfecting, sanitizing purposes; polish furniture and maintaining vehicles ... that is different in nature, purpose, target audience and distribution channel compared with those of “cosmetics for body and hair care and embellishment, perfume products, ethereal oils, toilet articles for washing and shaving” in Class 03 of the cited mark " DIVERSE”; as a results not causing confusion to consumers; and
- "DIVERSEY", is also the trade name of JohnsonDiversey, Inc. This is a created word, has no meaning, includes 3 syllables and its pronunciation is different from "DIVERSE", an English word in the dictionary.
Found that the appeal is grounded, the NOIP issued Decision no.4659/QD-SHTT of September 23, 2019 to cancel its previous refusal decision and proceed with procedure for registration of trademark “DIVERSEY”.