Applied-for mark “SET WET style TM, figure” of application no. 4-2010-17805 under the name of Halite Personal Care India Private Limited (India) for perfumed preparations and cosmetics, including deodorants for personal use in Class 03 was rejected by the national Office of Intellectual property (NOIP) accrding its Decision no. 5158/QĐ-SHTT dated 26/01/2015 on the ground that the applied-for mark describes goods in respect of which the registration is sought and misleading consumers as to the origin, functional parameters of goods as regulated in Article 73.5 and Article 74.2.c of the IP Law.
Representing client, Pham & Associates appealed the NOIP’s decision. The appeal’s arguments are as follows:
i) The English word "SET", according to the English-Vietnamese Dictionary, has many meanings when being used as a noun or a verb, such as "group of things, put someone or something in a position or in a particular state, etc.; the word "WET" means "wet, not yet dry or solid, raining etc"; and the word "style" means "the individual way that someone behaves and does things, the way something is made or done etc."
"WET" may describe [a good], but the word combination "SET WET", where "SET" is placed above "WET" as this is shown in the mark, is a fancy, created word combination, has no meanings, therefore, this is unrelated to and cannot describe “perfumed preparations and cosmetics, including deodorants for personal use ”; and cannot mislead consumers as to the origin, functional parameters of goods bearing the mark which is sought for registration.
ii) Because of such a judgment, the trademark "SET WET style TM" has been accepted for registration in a number of countries such as the Russian Federation, Ukraine, New Zealand, Singapore, Turkey, South Africa, United Arab Emirates, Thailand, Panama etc., in some of these country the English is widely spoken.
Holding that the applicant’s argument is grounded, the NOIP issued Decision No.1791/ QD-SHTT dated May 21, 2020 revoking its previous decision on refusal and proceeding to registration for the mark “SET WET style TM, figure " in its entirety as shown, no protection for “SET", "WET", "style" and "TM" when standing alone.