The applied-for mark “CAMBRIDGE CORE” under the Intl’ Application no.1272293 of The Chancellor, Masters and Scholars of the University of Cambridge to be registered for goods/services in Classes 09, 16, 35, 38 and 41 was rejected by the NOIP’s Notice no.2015/43 NDT10 dated 27/10/2016 on the following grounds: (i) the word element “CORE” has no distinctiveness and is descriptive of the goods/services (pursuant to Art.74.2.c of IP Law), and (ii) the word element “CAMBRIDGE” is confusingly similar with the cited mark “THE CAMBRIDGE INSTITUTE BRITISH & AMERICAN ENGLISH FOR PLEASURE & BUSINESS, Figure”, Intl’ Registration no.691407 of August 17, 2016 (pursuant to Art.74.2.c,e of IP Law).
Representing the applicant, Pham & Associates appealed against the NOIP’s Notice of refusal. The arguments on appeal are:
(a) The applicant agrees that the word element "CORE" may be deemed to be descriptive of the goods/services bearing the mark (the NOIP’s rejection (i) above) if used for goods relating to chips of computer, cellphones etc. To avoid this, the applicant has removed these goods/services from the list of goods/services bearing the sign sought to be registered. As such, "CORE" is no longer descriptive of the goods/services on the list, which contains "compact discs, DVDs, computer software for the provision of training, education, publication, data management, online-retail and retail, or service for the provision of rights to access to data, organize and control meetings, conferences, seminars etc.”. The “CAMBRIDGE CORE” is an anomalous word combination and does not describe the characteristics of the goods bearing this sign; and
(b) The results of trademark search in this case indicated that the cited mark – Intl’ Registration no.691407 of "THE CAMBRIDGE INSTITUTE BRITISH & AMERICAN ENGLISH FOR PLEASURE & BUSINESS, Figure” for the goods/services in Classes 09, 16, 41 and 42 has been terminated (by the NOIP’s Decision No.2583/QD-SHTT dated August 3, 2018) due to non-use for 5 consecutive years (pursuant to Article 95.1.d. of the IP Law). Since then, this cited mark is no longer a barrier to and cannot be the reason for refusing protection of the sign "CAMBRIDGE CORE".
Having found the appeal grounded, the NOIP issued Decision no.4789/QD-SHTT of September 30, 2019 to cancel its previous Notice of refusal and to proceed with the registration for “CAMBRIDGE CORE” of Intl’ application no.1272293./.