A request to invalidate the marks “Plus TPBANK, figure”, “FreeGo, figure” was rejected.

EMVCo, LLC, (“EMVCo”)’ the owner of Trademark Registration (TR) number 123083 “radio signal icon” (“the cited mark”) for services “credit card, debit card service, payment card service.. .” in Class 36 has petitioned  with the IP Vietnam to request the invalidation of the below TRs on the grounds that (i) the figurative element “radio signal icon” of the opposed trademarks is identical with the earlier cited mark, and (ii) the products/services for which the opposed trademarks registered are similar/or functionally related to those of the cited mark. Specifically, these are markss:

- TR No.380866 “Plus TPBANK, figure” for products “ATM card (encrypted or magnetic); debit card (encrypted or magnetic); credit card (encrypted or magnetic); debit card software; credit card software” in Class 09;

- TR No.380867 “Plus TPBANK, figure” for products “gold, silver; precious stones; jewelry; watch; art-works made of precious stones and precious metals” in Class 14;

- TR No.381249 “Plus TPBANK, figure” for services “… banking; real estate brokerage; insurance brokerage; loan brokerage; brokerage of securities and promissory notes; capital investment and other investments; credit services including credit cards; margin securities; money change; financial business transactions…” in Class 36, and

- TR No.382331 “FreeGo, figure” for products “gold; silver; precious stones, jewelry, wristwatches; arrt-works made of precious stones and precious metals” in Class 14.

Considering the case, the NOIP held that:

(i)  “radio signal icon ” is an image simulating electromagnetic, sound waves, etc., which has been widely used for a long time in the electronics and telecommunication industries. Currently, there are a number of marks which contain the "radio signal icon" in combination with other distinctive elements have been accepted for registration  Vietnam. In fact, the radio signal icon is often appears on magnetic, ATM cards etc. of many different organizations, therefore, in a mark this figurative element is considered as low distinctive factor;

(ii) the word elements such as “Plus TPBank”, “FreeGo” of the opposed trademarks are the dominant factors which create the distinctive features for these marks;

(iii) there is no evidence to prove that the “radio signal icon”  is a widely known copyrighted work of EMVCo, LLC.

Based on the foregoing, the IP Vietnam held that the registration of the trademarks "Plus TPBANK, figure" and  "FreeGo, figure" is lawful. As a result, the invalidation request of EMVCo, LLC was rejected. The involved parties have the right to appeal further at the higher competent authority or bring the case to court./.