Pham & Associates Successful Appealed SEVES - SEVEL

In 2004, SEVES S.p.A (Italia) applied for the mark “SEVES” under International Registration no. 835914 in Vietnam. The application covered various goods in Classes 11, 17, 19 and 21, namely:

- Glasses for lamps and for lighting in Class 11;

- Glass for electric insulation, electrical insulators made of composite material in Class 17;

- Glass blocks, picture windows, glazing for building, insulating glass (building) in Class 19; and

- Coloured glass in Class 21 of the Nice Classification.

In October 2015, the National Office of Intellectual Property of Vietnam (“NOIP”) provisionally refused protection the applied-for mark since it was confusingly similar to the prior mark “SEVEL”.

SEVES S.p.A appealed before the NOIP, claiming that there was no likelihood of confusion.

With regard to the sign, the marks at issue were short marks with two syllables and different in pronunciation. In Vietnamese, the applied-for mark was pronounced as “sê-vét”, where the cited mark was “sê-ven”;

With regard to the goods, the applicant limited the goods “electrical insulators made of composite material” in Class 17 from the list of claimed goods. The remaining goods in the applied-for mark, i.e. glasses for lamps, glass blocks, picture windows, glazing for building, and the goods of the cited mark “SEVEL” related to the car industry were entirely different.

After 11 years pursuing the case, in April 2017, the NOIP upheld our claims in the appeal, and accepted for protection of the mark “SEVES” in Vietnam.     

It is noteworthy that, apart from the backlog of unexamined IP applications, in practice, the NOIP routinely prolongs the time to settle “complicated” cases, whereas the statute of limitations is only 45 days from the date of finishing its formality check.

Pham & Associates is a largest local intellectual property law firm in Vietnam. We provide counsel and representation in every area of patents, trademarks, copyrights, enforcement of intellectual property rights as well as their representation in arbitration and litigation proceedings etc. For further information about our organization and services, please visit our website: www.pham.com.vn