Trademark “Matière” found not to be descriptive its goods and services

Application:      

Int’l Reg. no. :    1070926      

Classes:

06: Building materials of metal, reinforcing materials of metal for concrete, reinforcing materials of metal for building, beams and joists of metal, transportable buildings of metal, bridges of metal, pipes and tubes of metal, elements and groups of structures of metal for public and private works, support elements for the above-mentioned structures; monuments of metal, composite bridges of metal and other materials. 

19: Building materials, not of metal; buildings, transportable, not of metal; elements and groups of structures for public and private works comprising ducts made from juxtaposed prefabricated elements; structures comprising underground passages and tunnels; prefabricated elements not of metal for construction of the above-mentioned structures, support elements for the above-mentioned structures. 

37: Public and private construction works; installation and construction of structures of metal or not of metal; clearing and backfilling works for the above-mentioned structures, paving of tunnels, maintenance work and repairs therefor. 

42: Engineers' services; construction drafting; industrial design; surveying; material testing; architecture. 

Background

In August 2012, Matiere (FR) challenged a provisional refusal of protection for international trademark N° 1070926 MATIERE under Article no. 74.2c of Vietnam Intellectual Property Law (the applied mark was considered to be descriptive its goods and services).

For and on behalf of the client, Pham & Associates (‘P&A’) appealed successfully and therefore the National Office of Intellectual Property (‘NOIP’) had allowed registration in Vietnam.

Trademark “Matière” found not to be descriptive its goods and services

The NOIP upheld the P&A’s argument that “Matière” appeared in French-language dictionaries as a French word, it thus needed to weigh within the French-speaking portion of the relevant public when considering whether the mark applied for to be descriptive its goods and services. The mark applied for could obviously be perceived by the end-consumers who could not speak French.

The NOIP also agreed with the P&A’s finding that the word of “Matière” was polysemous in Vietnamese language such as “materials”, “substances”, “subjects, matters”, “school subjects, exam subjects” and from the fact that the mark applied for was not entirely have a meaning as to be descriptive its nature of goods/services in the classes 06, 19, 37 and 42. Furthermore, the mark applied for had pertained to the history of corporate and registered in a number of countries e.g. Morocco, Algeria, Spain, Portugal, Italy, Denmark, US etc.

Given the P&A’s arguments were reasonable, on December 13, 2013 the NOIP issued Decision no. 3345/QD-SHTT which accepted “Matière, Fig.” registration in Vietnam.

Pham & Associates