Appealed successfully at a higher level BIO-CERT accepted for registration

BRAND GMBH + CO KG, located at Otto-Schott-Strasse 25, 97877 WERTHEIM (DE), represented by Pham & Associates Law Firm (Appellant) has petitioned with the Ministry of Science and Technology (MOST - the governing body of the IP Vietnam) to appeal against Decision No. 4273/QD-SHTT dated December 12, 2017 of the IP Vietnam on refusing registration of mark BIO-CERT under International Registration of Trademark (IRN) 946362 for products in Class 09. This is the second appeal, filed with the MOST, as the first appeal which was filed with the IP Vietnam was failed. The grounds on which the IP Vietnam based to refuse the registration is  the sign BIO-CERT means “biological certification for meeting specific environmental standards” and therefore describes the products that do not meet the protection requirements as stipulated in Article 74.2.c of the IP Law.

In his subsequent appeal, the Appellant maintained the original argument as follows:

(i) BIO-CERT is a set of self-created word which does not exist in the English dictionary, although BIO and CERT are meaningful acronyms. Specifically, BIO is an abbreviation for “biography” or means “of life, biology”. For example, “bio-diversity”; CERT is an abbreviation for “certificate”.  However, in dictionaries as well as in reality, we do not see this set of words used with the meaning of “biological certification”, so it cannot be inferred that products bearing the BIO-CERT mark are [considered/confirmed to be] biologically certified for meeting specific environmental standards;

(ii) The BIO-CERT trademark has been protected in the United States (Registration No.3491734), in Canada (Registration No. MA740855), in 28 countries in the European Community (CTM No. 00354977) and more than 20 other countries (such as Australia, Japan, Korea, China, ...) under IRN 946362. This proves that the mark BIO-CERT does not describe the product;

(iii) In Vietnam, the product bearing BIO-CERT has been imported and distributed by Do Viet JSC., marketed at www.dovi.vn/bio-cert-product.

Held the Complainant's argument well-founded, the MOST issued Decision No. 3434/QD-BKHCN in favor of the Appellant. Accordingly, the IP Vietnam revoked the previous Decision of Refusal and issued Decision No. 58711/QD-SHTT dated April 25, 2025 accepting the registration of BIO-CERT in Vietnam./.