Pham & Associates successfully appealed to NOIP on the mark "OLYMPIA, High Security"
Application: "OLYMPIA, High
Security" Application no.: 4-2010-04824 Classes: 06 Background In 2010, Bao Viet Trading Co., LTD
filed a trademark application “OLYMPIA, High Security”
for the goods of door bolt, metal keys for vehicle… in class 06. Upon
substantive examination, the National Office of Intellectual Property (the ‘NOIP’)
refused to grant certificate as considered that the element OLYMPIA was the
name of a Greek famous place, hence the mark applied-for caused confusion of
the origin of products. On October 03, 2012, for and on behalf of the
client, Pham & Associates (‘P&A’) appealed successfully against the
NOIP’s decision of refusal and then the NOIP had allowed registration in
Vietnam. Comment In principle, the
sign was a geographical name or containing a geographical name, which was not
eligible to protect as a trademark if i) such geographical area that specialized
in producing or providing products or services bearing the mark: ii) such
geographical area that had a reputation for the products or services bearing
the mark. In other words, if the products or services bearing the mark derived
from the geographical area then would not be protected except the sign had been
widely used and being considered as a trademark or registered in the form of a
collective mark or a certification mark. If you are interested in the matters
of refusal/opposition of trademark registration, please contact with Pham &
Associates via email: hanoi@pham.com.vn Pham & Associates
In particular case, OLYMPIA was a Greek place name relating to the ancient
architectures. There was not evidence to prove that the place name of OLYMPIA had
a reputation with its products of "door bolt, metal keys for vehicle…".
Therefore, the use of sign OLYMPIA did not lead to confusion of the origin of
products or services.
Given the P&A’s arguments were
reasonable, on May 8, 2014 the NOIP issued Decision no. 1351/QD-SHTT which
accepted protection the mark "OLYMPIA, High Security" in
Vietnam.