The applied-for mark "ROBINSONS Fruit Shoot, Figure" under the Intl’ Application no.1244020 of Robinsons Soft Drinks Limited to be registered for goods in Class 32 has been provisionally rejected by Notice no.2015/16 NTH26 dated 19/4/2016 of the NOIP on the ground of similarity with cited marks: "ROBINSON", Reg.no.49227; "ROBINSONS", Reg. no.194398 and “R ROBINSONS, Figure”, Reg. no.154605.
Representing the applicant, Pham & Associates appealed against the NOIP’s Notice of refusal. The arguments on appeal are:
(i) List of goods in Class 32 of the applied-for mark "ROBINSONS Fruit Shoot, Pictures" is "Non-alcoholic beverages and preparations for making beverages; waters; flavored waters; vegetable juices (beverages); fruit beverages (non-alcoholic); fruit drinks and fruit juices; fruit flavored drinks; fruit and/or herbal based beverages; fruit nectars; energy drinks; aperitifs, non-alcoholic; non-alcoholic cocktails; cordials(non-alcoholic beverages); squashes (non-alcoholic beverages); dilutable preparations for beverages”. Meanwhile, the list of goods in Class 33 of the cited mark "ROBINSON", Reg.no.49227 is "Spirits of all kinds". Non-alcoholic beverages and spirits differ in their nature (i.e., non-alcoholic vs. alcoholic); differ in purpose of use (drinking non-alcoholic beverages for refreshing vs. drinking spirits for relieving stress, creating excitement, bring joy ... as drinkers often explain); differ in regard to customers (non-alcoholic beverages can be served for all people but spirits, as prescribed by law, can be served only for people over 18) and their distribution channels/business conditions are not the same (non-alcoholic beverages can be sold everywhere but selling spirits must have a license with strict requirements etc..)
(ii) The applicant, Robinsons Soft Drinks Limited, has acquired a Letter of Consent from the owners of the cited marks "ROBINSONS", Reg. no.194398 and “R ROBINSONS, Figure”, Reg. no.154605 for registration of the trademark “ROBINSON Fruit Shoot, Figure” for goods in Class 32 in Vietnam.
After reviewing relevant documents/evidence, found that the appeal is grounded, the NOIP issued Decision no.3372/QD-SHTT of July 12, 2019 to cancel the previous Notice of provisional refusal and proceed with procedure for registration of trademark “ROBINSONS Fruit Shoot, Figure” according Intl. application no.1244020.