Successful Appeal: International Registration of the mark “BOE ADS Pro, device” granted protection

International Registration of Mark No. 1719445 – “BOE ADS Pro, device” (registered on  December 5, 2022) under the name of BOE TECHNO LOGY GROUP CO., LTD (“BOE”) designating Vietnam for goods in Class 09, was is sued a Notice of Provisional Refusal by the Intellectual Property Office of Vietnam (IPVN). The refusal is grounded on the lack of distinctiveness due to being confusingly similar to a prior registered trademark, specifically “a/d/s, device” (Trademark Registration No. 80951, issued April 11, 2007), which is currently in force in Vietnam.

The legal basis for this refusal is Article 74.2(e) of the IP Law, which stipulates:
“A mark shall be deemed indistinctive if it consists of signs falling into one of the following categories: Signs that are not associated marks and are identical or confusingly similar to a mark registered for identical or similar goods or services on the basis of an application with an earlier filing date or priority date, as applicable, including trademark applications filed under international treaties to which Vietnam is a member.”

The applicant's representative has filed an appeal against the aforementioned Notice, based on the following arguments:

(i) The marks are visually and structurally dissimilar:

• The Applied-for Mark: is a composite mark consisting of a black rounded-corner square. In the upper left corner is the word “BOE” in white – the Applicant’s trade name and a well-known technology corporation, serving as a strong source identifier. In the upper right corner, there is a circular graphic composed of miniature white and black circles and squares. At the bottom are the words “ADS Pro” in white, presented in a standard uppercase font.
• The Cited Mark: Consists of three small black squares arranged horizontally, followed by three lowercase characters “a”, “d”, and “s” in black, separated by three forward slashes. The mark is protected as a whole, with no exclusive rights granted to the individual characters “a”, “d”, or “s”.

(ii) The marks are phonetically dissimilar: The applied-for mark is pronounced as [bi ou i: ædz prō], whereas the cited mark is pronounced as [ei di: 'esiz].

(iii) The goods, while belonging to Class 09, differ in nature, intended purpose, and channels of trade: Specifically, the goods of the applied-for mark include “mobile phone screens; digital signage display panels; electronic digital displays; liquid crystal displays [LCDs]; liquid crystal display [LCD] panels...” .While, the goods of the prior cited mark are “audio system products for motor vehicles, sound recorders, radio tuners, power amplifiers, speakers, cassette players, record players, etc.”

The aforementioned arguments demonstrate that the likelihood of confusion between the two marks among the relevant public is very low. Therefore, the refusal to protect the pending trademark is unjustified and warrants reconsideration.