PERPETUAL held to be descriptive and indistinctive

Grounds: Article 74.2(c), IP Law

ROLEX SA, headquartered at 3-5-7 rue François-Dussaud, CH-1211 Genève 26 (CH) is the owner of the Intl’ Registration of Trademarks No.1657606-PERPETUAL for the protection of products/services under Class16, 35, 36, 38, 41, 42 and 45, designating Vietnam, have been provisionally refused by the IP Vietnam on the grounds that the applied-for  word mark PERPETUAL is descriptive and indistinctive pursuant to Article 74.2(c

Disagreeing with the IP Vietnam’s decision, the representative of ROLEX SA held that the provisional refusal of protection is unfounded, explained as follows:

​Article 74.2(c) of the IPLaw provides that “A mark is considered to be indistinctive if it is a sign falling into one of the following cases: ...c) A sign indicating time, place, method of production, type, quantity, quality, nature, composition, use, value or other characteristics that are descriptive of goods or services, unless such sign has acquired distinctiveness through use prior to the filing of the trademark application”

Considering in both situations below, PERPETUAL does not violate Article 74.2(c) of the IP Law, namely:

(i) to non-English-speaking consumers, “PERPETUAL” will simply be a strange word, identifiable and spelled but meaningless, so it cannot be said that it describes the product/service bearing the mark;

(ii) for consumers who know English, the word PERPETUAL, depending on the context of use, also does not describe the product/service as defined in Article 74.2(c) of the IP Law for those  in Class 16 (newspapers, publications, brochures...); Class 35 (product promotion services; creation, production and dissemination of advertising materials...); Class 36 (sponsorship and financial sponsorship...); Class 38 (service of broadcasting sound recordings...'...which the PERPETUAL applied for.

In fact, in 1993 ROLEX SA had filed an application with the NOIP to register the trademark PERPETUAL for products “precious metals and their alloys, products made from these metals or covered with these metals not classified in other classes; jewelry, precious stones; clocks and time-measuring devices”  in Class 14. When examining the application, the IP Vietnam did not consider PERPETUAL descriptive and indistinctive, so it granted the Trademark Registration Certificate No.13704 dated 10/10/1994, of which the validity has been extended twice, to December 21, 2023.

Around the world, the trademark PERPETUAL is also not refused protection in some English-speaking countries or in countries where English is recognized as a common language.

The case is being reviewed by the NOIP./.

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