Successful Appeal: "PETRONAS Urania" Trademark Granted Protection

The word mark "PETRONAS Urania" under Application No. 4-2012-27023, filed on November 30, 2012, was initially refused registration by the Intellectual Property Office of Vietnam (IP Vietnam) under Decision No. 6422/QĐ-SHTT dated January 28, 2015. The ground for refusal was a lack of distinctiveness as provided in Article 74.2 (e, h) of the IP Law. Specifically, "PETRONAS Urania" was deemed confusingly similar to the following earlier trademarks ("cited marks"): (i) the device mark "SPIESS URANIA, device" under International Registration (IR) No. 623691 and (ii) the device mark "URANIA, device" under IR No. 948969, both owned by Spiess-Urania Chemicals GmbH.

Duly authorized to represent the applicant, Pham & Associates Law Firm filed an appeal against IP Vietnam's refusal decision, arguing that the applied-for mark is not confusingly similar to the two cited marks based on the following grounds:

(i) With respect to the cited mark "SPIESS URANIA, device": Although both marks contain the word element "Urania", this is a secondary/non-dominant element and does not dictate the distinctiveness of the marks. Conversely, the dominant elements that determine the distinctiveness of each mark, namely "PETRONAS" and "SPIESS", are completely dissimilar in pronunciation and visual structure/appearance:

• In terms of pronunciation: "PETRONAS" is pronounced with three syllables as "/PE/TRO/NAS/", whereas "SPIESS" is pronounced as a single syllable "/S PAI/";
• In terms of visual appearance: "PETRONAS Urania" is a word mark presented in in uppercase and lowercase letters, whereas "SPIESS URANIA" is a composite word-and-device mark featuring a device  between the words "SPIESS" and "URANIA". This device consists of three concentric circles in black and white with a white curved streak at the center. Due to these distinct visual configurations, the marks are capable of co-existing without causing confusion.

(ii) With respect to the cited mark "URANIA, device": This trademark registration expired in 2014 and therefore cannot constitute a prior right to bar the registration of the "PETRONAS Urania" mark.

Upon re-examination of the case, IP Vietnam found the applicant's appeal well-founded and subsequently issued Decision No. 9335/QĐ-SHTT dated June 2, 2025, to revoke the previous refusal and grant protection to the "PETRONAS Urania" trademark./.