Pham & Associates Represented Nissan Motor Co., Ltd. in the Successful Appeal for SHIFT Mark

In September 2013, the National Office of Intellectual Property (NOIP) refused the trademark application “SHIFT_” in the name of Nissan Motor Co., Ltd., claiming for the goods and services in Classes 12 and 37 on the grounds that the trademark application consists of a word “SHIFT” with several meanings but one of them is “to change (gear) in a motor vehicle” which is descriptive of goods in Class 12 and services in Class 37 in relation to the goods “motor vehicle”.

On behalf of the client, Pham & Associates filed an appeal against the refusal because, the descriptive elements shall be the signs or indications which serve to designate time, place, method of production, kind, quantity, quality, nature, composition, intended purpose, value or other characteristics that are descriptive of the goods or services for which registration is sought. In the present case, the word “SHIFT” even in its meaning “to change (gear) in a motor vehicle” is far removed from the descriptive meaning and should not have been considered as any signs or indications of descriptive of the goods and services related to “vehicle”, thus the trademark application “SHIFT_” is inherently distinctive and eligible to registration.

During the appeal, the appellant submitted the list all the registrations of SHIFT mark in the world in support of the appeal. Although remaining its views that the sign “SHIFT” is a descriptive element, however, the NOIP accepts the registration with a finding that the applicant’s evidence of secondary meaning is sufficient to overcome the stated refusal.

Therefore, a lesson from the case is that, the more evidences showing the registrations of the applied-for mark in the world the applicant obtains, the more weight the applied-for mark is given in the NOIP’s examiner’s assessment on its registrability.

Pham & Associates is a largest local intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc. For further information about our organization and services, please visit our website: www.pham.com.vn