Expert opinion on international registration no. 780110 “e essence & Fig.” designated in Vietnam

The facts

On April 12, 2002, Bora Creations S.L. (Spain) applied int’l registration no. 780110 and designated into Vietnam on May 21, 2010 for the mark of


(‘the applied mark’) in the classes 03: Cosmetics, hair-care products; 14: Costume jewelry and 21: Combs and hairbrushes (except make-up brushes), puffs.

Having examined the applied mark, on July 20, 2011 the National Office of Intellectual Property (‘NOIP’) issued a Notification no. 2010/28 NTH33 (‘the Notification’) on Partial provisional refusal of protection for the goods in the class 03 as devoid of the distinctiveness (Art. 74.2a,c of Vietnam IP Law); and the goods in the class 14 as confusingly similarity to the earlier mark “ESSENCE & Fig.” no. 27397 which was registered on June 26, 1998 and covered the goods in class 14: watch in various types, watch face, watchband (Art. 74.2e of Vietnam IP Law).

Although the applicant, on October 3, 2011, filed an appeal to the NOIP against the Notification,  however, the NOIP, on August 1, 2012, issued Decision no. 1817/QD-SHTT in which rejected the applicant’s appeal and defended his opinions in the Notification by the following reasons: 

- The applied mark was not distinctive as containing a letter “e” in the center of a simple circle; The wording element of “essence” had the meanings of “essence, perfume, scent", which was devoid of the distinctiveness in respect of the goods in class 3 as being a descriptive element. Both of these elements were though prominently presented, however, they were independently posited on two separate lines and had no the link of meaning. Therefore, the sign was not distinctive for the goods in the class concerned (Art. 74.2a,c of the Vietnam IP Law).

- The wording element “essence” of the applied mark was confusingly similarity to the earlier mark  “ESSENCE & Fig.” no. 27397. Furthermore, the goods of the applied mark covered in class 14 “costume jewelry” were similar to the goods of the cited mark in class 14 “watch in various types, watch face, watchband” since almost the same of marketing channels such as in the watch shops and jewelry shops. Therefore, the applied mark was confusingly similarity to the cited mark (Art. 74.2e of the Vietnam IP Law).

The comments

On the basic of the IP Law, the Degrees, the Circulars and the Regulations guiding for trademark registration as well as the examination practice of the NOIP, we would like to share the following analyses:

Distinctiveness of the applied mark for the goods in class 03:

In respect of structure, the applied mark was an overall appearance which contained a letter “e” right in the center of circles, the word “essence” in the above was presented by a font that was different to the other common fonts. The circles surrounding the letter “e” were not a simple figure that consisted of the integrated circles in black and white colors. Thus, the letter “e” combining with the circles created an overall impressive/identified and rememberable signs. 

When assessing the applied mark, it would not divide the close-link elements into separate parts for the reason that they were independent due to not in the same line but also taken into account of the overall appearance. Therefore, even though “e” was a letter and “essence” was slightly descriptive for the goods in class 3, however the close-link elements, which should have pronounced as “e-essence” - a linking word would be able to read. In view of the above, it would be concluded that the applied mark created an overall impressive/identified and rememberable signs so that met the criteria of likelihood of distinctiveness as provided Art. 74.1 of Vietnam IP Law and Item 39.b of Circular 01. Therefore, in overall appearance, it could not consider the applied mark did not meet requirements for protection under Art. 74.2a,c of the Vietnam IP Law for the goods in class 3. 

Distinctiveness of the applied mark for the goods in class 14:

Comparing between the applied mark and the cited mark “ESSENCE & Fig.” no. 27397, we found that:

- The marks contained a word “essence”, the other elements were different, so there was only existence of  likelihood of similarity.

- The goods of the applied mark “costume jewelry” and the goods of the cited mark “watch in various types, watch face, watchband” were in the same class 14, however it could not conclude that the goods were identical or likelihood of similarity (The Nice Classification).

So whether there was a likelihood of similarity between the marks because of having the same marketing channels in the watch shops and jewelry shops as mentioned on the Decision no. 1817/QĐ-SHTT?

In respect of the nature, the characteristic and the purpose for use between the marks, it was obvious to find that “costume jewelry” was quite different to “watch in various types, watch face, watchband”. So in fact whether they could put for sale in the same location such as watch shop or jewelry shop?. Upon reservation of the shops selling such goods in both domestic and foreign market together with the specialized nature of the goods, almost the watch shops did not sell jewelry and vice versa. The goods could sell in department stores or supermarkets, however, in different positions or counters. This was easy to find the facts in Hanoi, Ho Chi Minh city and the other big cities in the whole country and even in overseas market. Therefore, it could not affirm that the goods were in the same marketing channels and  it thus could not conclude that the goods were likelihood of similarity according to Item 39.9 of Circular 01.

In case the cited mark was a well-known trademark, the scope of protection of the mark is not only the goods “watch” but also can extend to other products or an area where a similar trademark is being used as provided Art. 6bis of Paris Convention for the Protection of Industrial Property. In this case, the cited mark “ESSENCE & Fig.” was not a well-known trademark and it was rare to see it in Vietnam actually.

Since the applied mark was not identical but likelihood of similarity to the cited mark and both of which were being used for dissimilar goods, it could not refuse the applied mark covered class 14 under Art. 74(2,e) of Vietnam IP Law.

In light of the above, the applied mark should have re-examined to accept its protection for the classes 3 and 14 to protect the legitimate right of the applicant that still not to harm the right of customers as well as the right of the holder of cited mark.

For more information about this topic, please contact with Pham & Associates via email: hanoi@pham.com.vn

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