ROLEX opposes trademark application for crown-image and trademark examiner's controversial judgment

A domestic company filed application No. 4-2017-13527 to register a figurative mark of crown image (the “contested mark”) for products in Class 17. Montres Rolex S.A. (“ROLEX”) opposed this application, arguing that the applied-for mark is confusingly similar to its prior trademarks, namely (i) Trademark Registration No.13699 “Crown image” and (ii) No.13685 “ROLEX, crown image” (the “earlier marks”) . These marks are shown below:

The trademark examiner rejected ROLEX's objection , held that (i) the applied-for mark is not confusingly similar to the prior marks because its “crown” applied-for and the crown appeared in the ROLEX's prior mark are designed in different ratio and size, (ii) the goods covered by the applied-for mark are “plastic films (not used for packaging) in Class 17, which are different from the goods “precious metals and their alloys, goods made of these metals or coated with these metals not classified in other classes; jewellery; precious stones; watches and chronometers” in Class 14 of the earlier marks, and (iii) the ROLEX’s crown mark is “widely recognized and well known only for products such as “watches, precious metals”. Based on the examiner's conclusion, the IP Vietnam has issued a Notice of granting a protection certificate for the applied-for mark.

The above judgments have caused much controversy. Because, (i) regarding overall impression, the similarity in appearance and the design features of the crowns appeared in the prior marks and in the applied-for mark is very clear and cannot be denied; (ii) the difference in size and proportion of the crown-details does not create a difference between the two marks, furthermore, (iii) the argument of the trademark examiner that the “ROLEX crown image mark” is only widely recognized and well-known for its products such as “watches, precious metals” to rely on to reject the objection to the granting protection title is not in accordance with the provisions of Article 74.2.(i). Distinctiveness of the mark (the amended IP Law 2023, effective from January 1, 2023, written as follows:

Signs considered to be non-distinctive:

i) A sign that is identical or confusingly similar to another person's trademark that is considered as well-known before the date of filing an application for registration of goods or services that are identical or similar to the goods or services bearing the well-known trademark, or for registration of dissimilar goods or services, if the use of such sign may affect the distinctiveness of the well-known trademark or the trademark registration is intended to take advantage of the reputation of the well-knwn trademark;”

Thus, even though the contested trademark applied for registration for products in Class 17 still affects the distinctiveness of the ROLEX’s well-known crown image trademark, and should have been refused to register./.