Requests for invalidation of marks “ - - wax on - -, picture ' were rejected

KVP Company (“KVP”) - owner of Certificate of Trademark Registration (“VN Reg.”) No. 190569 “WAXONE 1” for products “polishing oils, creams and waxes” in Class 03  has petitioned with the IP Vietnam to invalidate 05 VN Reg. of Mr. CK, namely VN Reg.No.185079 “triton wax one, figure” for products “Liquid varnishes” in Class 02; VN Reg.No.185080 “triton wax one, hinh” for products “Polishing cream, cleaners for wheels, seats of automobiles …” in Class 03; VN Reg. No. 190568 “President's Wax one, figure” for products “Liquid varnishes” in Class 02; VN Reg.190569 “President's Wax one, figure” for products " Polishing cream, cleaners for wheels, seats of automobiles …" in Class 03 and VN Reg.No.211723 “1 wax on PRESIDENT'S , figure " for products " Polishing cream, cleaners for wheels, seats of automobiles; cleaners for glass..." in Class 03 on the grounds that the foregoing protection titles were granted due to the dishonesty of the applicant, namely that (a) the word elements "Wax" and "one" in the contested (a) the word elements “Wax” and “one” in the contested trademarks are presented in a manner that is intentionally confusing to KVP’s “WAXONE 1”; this act is an unfair competition, intends to usurp the trademark of KVP, and (b) the products bearing KVP's "WAXONE 1" trademark were already on the market, known and trusted by Vietnamese consumers before Mr.CK filed for registration of his marks.

After reviewing the documents and evidence provided by the Parties, the IP Vietnam rejected  KVP's invalidation request, based on the following grounds:

(i) Mr. CK has provided documents/evidence to prove that the marks “triton wax one, figure”, “President's Wax one, figure” and “1 wax on PRESIDENT'S , figure” have been registered for protection in a number of countries and used in Vietnam before December 8, 2003 which is the date KVP filed an application for registration of the mark "WAXONE 1";

(ii) with regard to the presentation and meaning of the marks: the word elements in the contested marks  “triton wax one, figure”, “President's Wax one, figure” and “1 wax on PRESIDENT'S , figure” and the “WAXONE 1” of the cited mark are different their appearance, meaning, and pronunciation, so the contested marks are not confusingly similar to the mark “WAXONE 1” even though they sought for registration of the same or related products;

(iii) the invalidation requests were filed by KVP on November 16, 2020 while the trademarks in question were granted Trademark Registration in 2012 and  2013, thus the 05-year statute of limitations to file a request to invalidate a mark has expired, unless KVP is capable of proving that such marks were granted due to the applicant's dishonesty as provided for in Clause 3, Article 96 of the IP Law. However, KVP failed to meet this requirement./.