Appeal against refusal to register the mark “MAZDA”

Mazda Motor Corporation, the owner of applied-for mark application No. 4-2018-08071“MAZDA” sought for registration of products in Class 03 has petitioned with the IP Vietnam to appeal against the latter’s decision to refuse to register the mark on the grounds that the applied-for trademark does not meet the registration requirements as specified at Article 74.2(e),  namely causing confusion with the earlier trademarks “MAZDA” under  the Intl. Registration No.147181A  and the trademark “MAZDA 7” under the Intl.Registration No.242474A.  

The appellant appeals against the IP Vietnam’s refusal decision, arguing that;

(i) In order to avoid confusion for consumers, before 25/11/ 2021 - the date the NOIP issued its decision to refuse application No. 4-2018-08071 “MAZDA” mentioned above, the owner of the cited marks “MAZDA” of Intl. Reg.No.147181A and “MAZDA 7” of Intl. Reg. No.242474A had narrowed the list of products of Class 09 so that no more goods/products  to be used with or in the automobiles and this limitation was recorded by WIPO in the WIPO Register on 12/05/2021 and 1/10/2021. After having narrowed, these Intl. Registrations’ product lists are quite different from those in Group 09 of the applied-for mark “MAZDA”;

(ii) The cited trademarks’ owner has also issued a Letter of Consent to Mazda Motor Corporation to use the trademark “MAZDA” in Vietnam in parallel with their trademark. and

(iii) The mark “MAZDA” of Mazda Motor Corporation is a well-known mark in the field of automobile manufacturing, confusion with earlier trademarks registered for different products is unlikely.

The case is being reviewed by the IP Vietnam./.