Applied-for mark  "O FRODO, figure" is being opposed

Pham & Associates, authorized by and on behalf of the applicant - The Saul Zaentz Company (USA) - has petitioned with the IP Vietnam to oppose the National Trademark Application No. 4-2021-1750 “O FRODO, figure” for protection of products/services in Class 19 and Class 35 on the grounds that the intended mark mentioned above indentical with the name of the main character "FRODO" of the world-wide famous work "The Lord of the Rings" of writer J.R.R. Tolkien (UK), of which copyright valid in Vietnam until 2023.. This work has been translated and widely published in many countries around the world, including Vietnam, and the registration and use of that sign makes consumers mistakenly believe that goods/services bearing the mark is produced and performed by the owner of the work - The Saul Zaentz Company.

It’s worth noting that The Saul Zaentz Compay has been assigned the rights to the trademarks, cinematographic works, theatrical works and related rights to literary works including "The Lord of the Kings"... by writer J.R.R. Tolkien in 1976.

Specifically, the legal grounds for this objection are:

- Article 27.2(b,c), IP Law stipulates that the copyright of a work is for the life of the author and for 50 years following the year of the author's death. In this case, the author died in 1973, the copyright will be valid until 24h on December 31, 2023;

- Article 73.5 of the IP Law stipulates signs that are not protected as trademarks, which include "...signs that mislead, confuse or deceive consumers about the origin of goods, functional features, uses, quality, value or other characteristics of goods or services";

- Point 39.12.a(iv) of Circular 01/2007/TT-BKHCN stipulates that a sign is considered to cause confusion about the origin of goods or services in the following cases: “(iv) ) ... identical or similar to real names, nicknames, pseudonyms, images of Vietnamese and foreign leaders, national heroes and celebrities; signs identical with or similar to names or images of characters and typical images of widely known works, if the use of such signs is likely to mislead consumers into thinking that the goods/services bearing the sign are being produced and performed by the owner of such work”.

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