Is “EV CARGO” descriptive or misleading to consumers?

Grounds: Article 74.2(c) and 73.5, IP Law.

International Registration of Mark (IR) No.1612984 EV CARGO of EVCH UK Ltd, headquartered  at Mollei 133B-2930 Brasschaat, Belgium, for products/services of Class 09, 35, 36, 38, 39 and 42 was provisionally refused by the IP Vietnam on the grounds of violating Article 74.2(c) and 73.5 of the IP Law. Specifically, it  said that the applied-for mark "EV CARGO" describes EV-related products/services, which stands for the English word "electric vehicle", it means a vehicle operated by electric power, and if the product/service is not related to “electric vehicle” , it misleads consumers about the nature of the product/service.

In response to the IP Vietnam’s Notice of Provisional Refusal to registration,  the applicant defended as follows:

(i) It cannot be assumed implicitly  that consumers will interpret the word element “EV” in the applied-for trademark “EV CARGO” as “electric vehicle”, moreover, if  it is, it does not describe products/services such as “computer hardware related to transportation, tracking, storage, packaging…” in Class 09; “business management and business administration services; data processing services…” in Class 35; “financial services; financial services in particular the payment of fees, tariffs, duties and taxes related to the carriage of goods through customs.." in Class 36; "telecommunication services related to transportation, distribution.. .” in Class 38; “transportation, specifically freight transport by cars, trucks, railway containers…” in Class 39 and “consulting on product development in the field of freight transport” in Class 42;

It should be noted that, according to the Dictionary of English Abbreviations, EV is an acronym for nearly 50 technical terms in different fields, not just “electric vehicle”. What EV means depends on the context in which it is used;

(ii) The applicant (EVCH UK Ltd.) and its applied-for mark “EV CARGO” are known as one of the leading international service providers with four main areas of express transport, global forwarding, logistics and technology, operating in over 150 countries, including Vietnam, with an annual turnover of about US$ 60 billions. This shows that the mark "EV CARGO" has been widely used in the world, is considered to have the ability to distinguish and is not a sign to falsify or deceive consumers about the nature of its  products/services.

The applicant requested the IP Vietnam to withdraw the provisional refusal for registration and  accept to register the trademark "EV CARGO" in its enterity, no claim is made to the exclusive right to use “CARGO” apart from the mark as shown.

The case is being handled by the IP Vietnam./.

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