NOT MERELY DESCRIPTIVE TERMS

The issue of whether an applied-for mark is descriptive or not is always hot and controversial in the practice of prosecution of trademarks not only in Vietnam but throughout the world.

Article 74.1.c of Vietnam intellectual property law stipulates that signs indicating time, place and method of production, category, quantity, quality, properties, ingredients, intended utility, value or other characteristics being descriptive of goods or services are descriptive signs of goods or services, and such signs are inherently indistinctive and unregistrable as a trademark without proof of acquired distinctiveness before the date of application.

Descriptive signs are necessary for manufacturers and traders to describe their goods and services for commercial purposes, and thus they need to be freely available for use by all manufacturers and traders and should not become the proprietary domain of anybody.

As to consumers, if a descriptive sign is used as a trademark, consumers are likely to regard such a sign as a reference to the features or characteristics of the goods or services rather than a reference to the origin or source of the goods or services, and in this case, the trademark cannot perform the function of distinguishing the goods or services of one organization or individual from those of other organizations or individuals. 

There is no definition of whether a sign is descriptive or not in the intellectual property law and its guidelines, and in practice, the citation of Article 74.1.c of Vietnam intellectual property law for the purpose of objection of registration of a mark for being descriptive issued in a Notice of Result of Substantive Examination of Trademark Application without any proof is not always reasonable, and it is usually more or less subjective judgment.

The Trademark Division of Pham & Associates (P&A) many times has faced and successfully appealed the objections of registration of marks based on the ground of being descriptive of goods/services. Recently, the National Office of Intellectual Property (NOIP) has refused registration of the mark “Let’s note” in the name of Panasonic Corporation in respect of the goods “computers, laptop computers; parts and fittings for all the aforesaid goods” in Class 09 on the ground of Article 74.1.c of Vietnam intellectual property law. P&A appealed to the NOIP, claiming that the wording “Let’s note” is in fact not a common term that is used in the field of IT in general or for describing computers, laptop computers and their parts and fittings or their characteristics and features in particular, and in English, “laptops” are also sometimes called notebook computers or notebooks, or other terms, such as ultrabooks or netbooks, and certainly not “Let’s note”. The evidences to support the said arguments are the results of a Google search showing that with regard to laptops and computers, “Let’s note” is used only to identify Panasonic’s laptops, and the registrations of the mark in Japan, Korea, Singapore and Taiwan where trademarks are examined as to substance prior to grant of registration. The NOIP has agreed with the arguments and accordingly has granted registration for the mark “Let’s note”.

Duraflex Hong Kong Limited has filed an application for the mark SIDE SQUEEZE for the goods “plastic buckles, fasteners and clasps for use in connection with luggage, sporting goods, camera bags, backpacks, sleeping bags, tarpaulins, tents, clothing, raincoats, helmets, shoes, boots and similar articles” in Class 26. The NOIP has refused registration of the mark on the ground of Article 74.1.c of Vietnam intellectual property law.

P&A appealed to the NOIP, arguing that the term “SIDE SQUEEZE”, is unusual juxtaposition of words that is not a familiar expression in the English language, either for designating the items in the specification of goods for which the mark is applied, or for describing their characteristics. The proof of this is the fact that the mark has been registered for the same goods in the United States of America where English is an official language. The NOIP in consideration of P&A’s arguments has reversed its previous view and accordingly has granted registration for the mark “SIDE SQUEEZE”.

The Trademark Division - Pham & Associates