Applied-for mark “ON-YASAI, figure” of application 4-2012-25241 under the name of REINS International Inc. (JP) for services of Japanese food restaurant; food and beverage service provided by the restaurant in Class 43 was rejected by the NOIP’s Decision no.37667/QĐ-SHTT of 29/6/2015 on the grounds that (i) is indistinctive, and (ii) the mark contains the “ON-YASAI” word transliteration element which means “steamed vegetable” describing goods/services of Class 43 in respect of which the registration is sought as prescribed in Article 74.2.c) of the IP Law.
On behalf of REINS International Inc., Pham & Associates has appealed (the first time) against the NOIP’s decision on refusal of protection. However, at its Decision No.1312/QD-SHTTdated May 15, 2018 on resolving the afore-said appeal, the NOIP still reserved its previous decision.
Pham & Associates continued to appeal (the second time) to the Minister of Science and Technology. The argument of the complaint in two times is summarized as follows:
(i) The applied-for mark "ON-YASAI, figure" is a combined mark consisting of word and figure elements. The word element "ON-YASAI" is the Latin symbols that can be pronounced in Vietnamese. The figure element is a set of some red-and-black decorative motifs and some characters of the Japanese pictographic language. This combination shows:
a) In whole, the applied-for mark is capable of distinguishing, not being "simple shapes and geometry, numerals, letters ..." is regarded as indistinctive as prescribed in Article 74.2.a , c IP Law;
b) The applied-for mark does not describe the service of which registration is sought: Although the mark contains some Japanese characters [ON-YASAI], it is understood as steamed vegetable. However, for Vietnamese consumers - where Japanese is not considered a common language - "ON-YASAI" by itself neither means steamed vegetable nor conjures up this dish. Moreover, these characters are presented graphically and should be identified as pictograms. For the same reason, the trademark has been protected in Japan and many other countries such as China, Singapore, Malaysia, USA, Hong Kong, Philippines and Taiwan;
c) The applied-for mark has been used in many countries: REINS International Inc. has had more than 30 years of culinary business with 1248 stores in Japan and 143 stores in 11 other countries. The applicant's trademark has been widely known by consumers around the world;
d) The applied-for mark has been actually used in Vietnam: The trademark owner has used this trademark for the services in Class 43 at the system of Japanese hotpot "ON YASAI SHABU SHABU" restaurants, which is advertised and introduced widely at websites about food in Vietnam such as foody.vn; pasgo.vn, vinid.net, adayroi.com.vn.
(ii) the applicant has requested the NOIP to protect the trademark in its entirely, no protection for the Japanese characters when standing alone.
Having reviewed the case, the MOST found that the complaint of REINS International Inc. is grounded. The MOST also organized a dialogue between the complainant and the respondent (i.e. NOIP) in order to further clarify their arguments and listen to their opinions. At this dialogue both the parties agreed to resolve the case towards accepting the appeal of REINS International Inc.
As a results, the MOST issued Decision No. 394/QD-BKHCN on February 25, 2020 to revoke the decisions of NOIP and to request the NOIP to proceed to registration for the trademark "ON-YASAI, figure" in its entirely as shown, no protection for the Japanese characters when standing alone.