HONG NGOC/ NGOC HONG: A New Views on Transposition of Terms

On June 17, 2015, Vietnamese Ngoc Hong General Hospital Company Limited (“NGOC HONG Co.,”) filed an application for registration of the device mark “NGOC HONG, HOSPITAL & Device”, for, among other things, “hospital, medical care, medical services relating to the treatment of persons etc.” (Class 44), depicted below.

Upon searching the database of the National Office of Intellectual Property (“NOIP”), NGOC HONG Co., found two earlier figurative registrations for the same services in Class 44, which contain distinctive element “HONG NGOC” and the Vietnamese word “BENH VIEN” means “Hospital”.

In order to be safe in the course of its business, as well as to be sure that the act of using the sign “NGOC HONG, HOSPITAL & Device” is not a trademark infringement, NGOC HONG Co., sought an assessment on whether there was a likelihood of confusion between its mark and the above-mentioned earlier marks from the Vietnam Intellectual Property Research Institute (“VIPRI”), the unique agency has the function in the filed of assessment on intellectual property rights in Vietnam.

The VIPRI observed that as a general rule, marks must be compared in their entirety. Though the mark applied-for and the earlier registrations contained the devices and the transposition of word elements “i.e. HONG NGOC/ NGOC HONG”, however, there was dissimilarity of the marks in their entireties as to appearance, sound, connotation and overall impression. Customers are not likely to be confused as to source upon encountering the marks “HONG NGOC” and “NGOC HONG”.

Lastly, the VIPRI concluded that there was not a likelihood of confusion between the marks at issue.

Comment

This case may be not a major changes to the substantive examination of a trademark application before the NOIP. In practice, the NOIP routinely refuses trademark applications containing transposition of terms. However, the VIPRI’s assessment is a good example of the examination of likelihood of confusion. It means that if the transposed mark creates a distinctly different commercial impression, then confusion is not likely.

Pham & Associates is a largest local intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc. For further information about our organization and services, please visit our website: www.pham.com.vn