On December 29, 2015, N.T.K.Anh filed with the National Office of Intellectual Property (NOIP) an application for registering a trademark "KimSushi, figure" for products/services in Class 30: all types of sushi (Japanese dish of specially prepared vinegared rice combined with a variety of ingredients); Class 35: Trading, importing and exporting all types of sushi and beverages; Class 39: Foods catering services and Class 43: Restaurant services; hotel services, pubs, food service and beverages made by the restaurant; cafe; self-service restaurant services; fast food stalls.
On January 13, 2018 NOIP notified the applicant it would refuse to protect a part of the applied-for trademark, namely refusing to protect the word component "KimSushi" for goods/services under Class 39 and Class 43 on the ground that they are confusingly similar to prior trademarks “Kim TOURS, figure”, registration No. 107983 and “Kim TOURS, figure”, registration No. 107984, which have been registered for identical/similar goods/services of Điểm Hẹn Tourist Real Estate JSC., located at 74 Hang Bac street, Hoan Kiem District, Hanoi (pursuant to Art.74.2.e of the IP Law), namely Class 35: e-commerce services, business management of hotels and management of trade centers "; Class 39: Arrangement of tourist tours, passenger and cargo transport services, domestic and international travel and tour services; and Class 43: restaurant services, tourist home services, hotel bookings.
Representing the applicant, lawyers of Pham & Associates have asked the NOIP to review its refusal of protection with the following arguments:
(i) The word component "KimSushi" is not likely to cause direct confusion with the cited prior marks because it is a word with the letters "K", "i", "m", "S", "u "," S "," h ", and" i "in lowercase, are written in succession. Whereas the word element of the cited prior trademarks “Kim TOURS, figure” and “Kim TOURS, figure” is made up of two separate words, "Kim" in stylized form and "TOURS" in capital letters. Although they contain the word "Kim", they are completely different in appearance/visual impression; different pronunciation/phonetic impression, so there is no likelihood of direct confusion to consumers.
(ii) The word "KimSushi" in the applied-for mark is not likely to cause an association of some sort in the public's mind between it and the prior marks because in reality the nature of the applicant's business is food processing with the main menu is "sushi", and advertising the foods processed by themselves through website, leaflets or at their own restaurant, followed by sales service, food delivery on demand of customers or serve food to customers directly going to the restaurant. From this, we can come to conclusion that the Class 39: Foods catering services and Class 43: Restaurant services; hotel services, pubs, food service and beverages made by the restaurant; cafe; self-service restaurant services; fast food stalls that NOIP intends to refuse to protect are directly related to the goods/services of Class 30: all types of sushi (Japanese dish of specially prepared vinegared rice combined with a variety of ingredients) and Class 35: Trading, importing and exporting all types of sushi and beverages that NOIP intends to protect under the applied-for trademark “KimSushi, figure ". Whereas, the specific content of the goods or services in Class 39 and Class 43 of the prior marks “Kim TOURS” relates to travel other than the transport of food or sale of food of the applied-for mark "KimSushi, figure".
It should be added that the letter "s" in the word "KimSushi" is capitalized [S] is the intention of the mark applicant to direct consumers to the service they provide is selling food with "sushi" is the main dish. Meanwhile, "Kim TOURS" is a brand used for travel related services by travel companies for their customers.
In fact, "KimSushi" is widely known by the public through the famous food websites such as www.foody.vn and lozi.vn so it is difficult to say that consumers would likely confuse that the services bearing the mark "KimSushi" and the services of the prior trademarks shares the same origin. In other words, it is difficult for consumers to associate "KimSushi" with the "Kim TOURS" brand of the same owner.
NOIP accepted the arguments of Pham & Associates and on June 20, 2018 issued a notice of acceptance for registration of "KimSushi, figure" for goods/services in Class 30, 35, 39 and 43.