"ELIO" vs. “ELLIO” and “stylized ELIOS, figure”

The mark "ELIO" of International application no.1229748 under the name of  Hexagon Ragasco AS (NO), designating Vietnam, registered for the services of Classes 06, 20 and 35 was denied protection under Notice No. 2014/51 VTB dated December 28. 2015 of the NOIP on the ground that it was confusingly similar to the following cited marks:

(i) “ELLIO”  protected under Trademark Registration no.193945 for the products “Color-coated steel plate; styled steel plate; steel plate; steel belt;  metal sheet for construction; reinforced metal materials for construction; metal building materials” in Class 06 of NIPPON STEEL CORPORATION;

(ii) The trademark “stylizedELIOS, figure” protected under Trademark Registration no.109696 for porcelain sanitary ware products such as: toilets, wash basins, washbasin faucets, bath showers and shower accessories. baths such as: shower lines, nozzles of Class 11; ceramic and decorative bricks of Class 19; coat hangers and coat racks (not of metal), mirrors and mirror shelves for bathrooms of Class 20 and the sale and purchase of porcelain sanitary ware such as toilets, wash basins, washbasin faucets, showers and shower accessories such as shower cords, nozzles, coat hangers, coat racks, mirrors, mirror shelves, ceramic tiles, decorative tiles in Class 35 of Mr. VVA.

Representing the applicant, Pham & Associates appealed against the above NOIP’s denial of protection, arguing that: (i) the applicant has eliminated Class 35 and confined the applied-for product list in Classes 06 and 20 at the WIPO International Bureau, according to which the remaining list of products of the mark is only “containers, cylinders and tanks of common metal for storage and ore purposes” which has the nature, purpose of use and distribution channels  different from those of protected products list, namely are sheet metal, sanitary ware, construction materials of the cited trademarks.

Held that the above-said argument grounded and convincing, NOIP canceled the previous refusal of protection and issued Decision No.2763/QD-SHTT dated July 15, 2021 to register the mark./.