The request for reconsideration of the provisional refusal of IRN1653024-TAIHO

Grounds: Article 74.2( e), IP Law

The IP Vietnam has sent the Notification of Provisional Refusal of Protection No.2022/11 NLT38 dated March 28, 2023 to WIPO which notified that the International Trademark Registration (IRN) 1653024-TAIHO for products in Class 03 and 30 under the name of Taiho Pharmaceutical  Co., Ltd (“Taiho”) headquartered at 1-27 Kandanishiki-cho, Chiyoda-ku Tokyo 101-8444 (JP) was provisionally refused on the grounds of confusing similarity to another organization/individual's earlier trademark(s) registered for identical or similar goods/services, namely IRN1513935-TAISHO and IRN 1322168-TAI SHO and National Trademark Registration No. 83802-TAISHO (“the cited trademarks") registered for products in Class 03 and 05. These cited trademarks are being inforce in Vietnam and  belong to the same holder of the registration, that is Taisho Pharmaceutical Co., Ltd. (“Taisho”).

On behalf of and authorized by Taiho, Pham & Associates has contacted Taiso to  exchange opinions on the IP Vietnam’s reason for the refusal and both sides agreed that the IP Vietnam's conclusion is not satisfactory. In fact, the word mark TAIHO and TAISHO are different in terms of visual impression and pronunciation (“tay-how” versus “tay-sho”). This distinctiveness is obvious to the Japanese, and for Vietnamese consumers, they are no longer surprised or confused by Japanese brands that differ only by one syllable. The registration and use of the mark TAIHO will not confuse consumers about the trademark as well as the origin of the products. As a result, Taisho has issued a Letter of Consent for Taiho to register and use the trademark "TAIHO" under the IRN1653024-TAIHO in Vietnam.

Pham & Associates has submitted to the IP Vietnam the Letter of Consent from Taisho and requested the latter to reconsider the Notification of provisional refusal of protecion of the IRN1653024-TAIHO./

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