P&A successfully appealed to NOIP on the mark “Ice+ -18oC ICY FRUIT, Fig.”

April 22, 2014

Application:       

Application no.: 4-2011-05091      

Classes: 32:     Bottled fruit juice 

Background

In March 2011, KlRIN Vietnam filed a trademark application “Ice+ -18oC ICY FRUIT, Fig.” for the goods of bottled fruit juice in class 32 and the National Office of Intellectual Property (‘NOIP’) refused to grant certificate due to being considered as a simple/descriptive sign and a common name of the goods.  

On August 09, 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, details of which were as follows:

- The sign of "ICE+" was a compound word by an abnormal arrangement to create a meaningless new word.

- The sign of "ICE+" was invented by the applicant and being used continuously on its soft drink products from April 2011 as well as being widely distributed in all provinces of Vietnam.

- The turn over and the cost of advertising of the products bearing the applied mark were quite great and the advertisement activities were done on outdoor advertising boards, buses, mass media such as newspapers, magazines, internet ect.

- In the practice, the NOIP has protected many cases in respect of combined signs from two descriptive signs for the reason of such combination would create an originality and an overall impression. Thus, the sign in overall appearance, did not consider as to be descriptive its nature of goods or services and that was capable of distinguishing the goods. For example, trademark “SLIM*FAST” was registered in overall form, disclaimers of "SLIM",  "FAST" for the nutrition and diet products in class 05.

- The application for registration in overall form, disclaimers “ICE”, “+” and “-18oC ICY FRUIT”. 

Given the P&A’s argument were reasonable, on March 17, 2014 the NOIP issued Decision no. 675/QD-SHTT which accepted “Ice+ -18oC ICY FRUIT, Fig.” registration in Vietnam.

Pham & Associates, HCMC Office