P&A successfully appealed to NOIP on the mark “DATSUN”

Application:       DATSUN

Application no.: 4-2011-10294      

Classes: 12, 37

Background

In May 2011, NISSAN MOTOR CO., LTD filed a trademark application “DATSUN” for the goods of ships; boats; automobiles... in class 12); and for the services of repair or maintenance for automobiles, forklift trucks, trailers... in class 37. Upon substantive examination, the National Office of Intellectual Property (‘NOIP’) refused to grant certificate due to being considered confusingly similarity to the earlier mark ('DAISUN & Fig.').  On November 20, 2012, for and on behalf of the client, Pham & Associates (‘P&A’) appealed successfully against the NOIP’s decision of refusal and the ‘NOIP had allowed registration in Vietnam.

Comments

The NOIP upheld the P&A’s argument as follows:

- The sign "Datsun" was a brand for the small automotive product lines created from 1931 by DAT Motorcar Co.,. and after that, the company was merged by Nissan in 1934.

- “Datsun” entered into American market in 1958 and continued to export into other markets around the world since 1960.

- The vehicles bearing “Datsun” into Vietnam was officially imported from Japan Nissan since 1975 after the Vietnam war. In fact, the relevant public and automobile trading company in Vietnam knew thoroughly the mark "Datsun" as well as the mark “Nissan” prior to the existence of the cited mark “DAISUN & Fig.". The applicant held that the mark "Datsun" had been existed in parallel on the cited mark that devoid of likelihood of confusion to the consumer. Furthermore, automotive products are not only means of transportation but also are considered as a valuable asset for the most part of Vietnamese people. Therefore, the relevant public would have a particularly high degree of attention and would scrupulously examine the characteristics and the standard of the product and the identity of its producer before deciding whether to purchase.

- The applicant agreed to curtail some goods and services related to automobile parts from application no. 4-2011-10294.

Given the P&A’s argument were reasonable, on March 24, 2014 the NOIP issued Decision no. 846/QD-SHTT which accepted the mark “DATSUN” registration in Vietnam.

If you are interested in overcoming the obstacle relating to refusal/opposition of trademark registration, please contact with Pham & Associates via email: hanoi@pham.com.vn

Pham & Associates