Applied-for mark “PEAK PILATES” of application 4-2012-06133 under the name of Mad Dogg Athletics, Inc. (USA) for products/services in Classes, 09, 28 and 41 was rejected for registration by the NOIP’s Decision no.45493/QĐ-SHTT on the ground of describing features of the goods/services in respect of which the registration is sought as regulated in Article 74.2.c), IP Law.
On behalf of the client, Pham & Associates appealed the decision. The reason for making a complaint, according to Pham & Associates, is that the "PEAK PLATES" sign does not indicate or refer directly to the characteristics, properties and functions of the product/service under the application, specifically as follows:
(i) "PILATES" is a physical fitness system developed in the early 20th century by Joseph Pilates, after whom it was named. This physical fitness system has been being practiced and popular worldwide . Pilates is a proper noun, a part of the name Joseph Pilates, is not descriptive of the accompanying product or service;
(ii) "PEAK PILATES" is not an indication of the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the products of “sound recording, images pre-recorded, in particular CDs and DVDs containing guidances for health and physical fitness exercises” in Class 09; "Exercise apparatus and equipment” in Class 28 and the services of "Providing guidances on health and physical fitness excercises" in Class 41, in respect of which registration is sought under Application No. 4-2012-06133. Therefore, the application of Article 74.2.c) of the IP Law in this case is inappropriate;
(iii) The mark "PEAK PILATES" has been protected for products / services in Class 09, 28 and 41 in many countries around the world since the early 2000s, including the English-spoken countries such as USA, UK, Canada, Singapore, Australia, New Zealand and 27 countries in the European community.
Holding that the argument is grounded, the NOIP issued Decision no. 6258/QD-SHTT on December 27, 2019 revoking its previous decision and accepting the registration of trademark "PEAK PILATES" in its entirely; no protection for the word element “PEAK” when standing alone.