Applied-for mark “WORLD GOLD COUNCIL, figure” of Intl’ application No.10100573 for gold and jewelry products made of gold in Class 14 and publicity and promotion of the use of gold in Class 35, under the name of World Gold Council headquartered at 10 Old Bailey London EC4M 7NG (GB) has been temporarily rejected by the NOIP’s Notice No.2011/37 NDT23 dated September 14, 2012 on the ground of being confusingly similar to the cited marks “WORLD GOLD COUNCIL " of Intl’ Registration No.939717; "Speak gold, picture" of Intl’ Registration No.814654 and “Gold, picture” of Intl’ Registration No.766626 under the name of World Gold Council with the address c/o PricewaterhouseCoopers, Department Fiscal, 50, avenue Giuseppe-Motta CH-1211 Genève 2 (CH).
Represrenting the applicant, Pham & Associates Law Ltd. appealed the above decision. The arguments of the appeal are:
(i) The owners of the cited marks of Intl’ Registration No.939717 and No.766626 have assigned these marks to the applicant;
(ii) The validity of the cited mark of Intl’ Registration No.814654 has expired from November 12, 2013 without renewal by its owner; over 05 years passed, so it no longer is an barrier to registration of the applied-for mark “WORLD GOLD COUNCIL, figure ”.
Having reviewed the case and checked the authenticity of the evidence, the NOIP found the complaint grounded. As a results, the NOIP has issued Decision No.1092/QD-SHTT dated March 24, 2020 revoking the previous decision on temporary refusal and accepting the registration of trademark "WORLD GOLD COUNCIL, pictures" of Intl’ application No. 10100573./.