Pham & Associates Represented Premier Inn Hotels Limited in the Successful Appeal before the Trademark Office Obtaining Trademark Protection for PREMIER INN

In 2011, Premier Inn Hotels Limited filed a Vietnamese trademark application for PREMIER INN, claiming protection for services in Class 43. The application was refused by the National Office of Intellectual Property (“NOIP”) based on the following grounds:

• The applied-for mark is descriptive and devoid of any distinctive character under Article 74.2c; and

• The applied-for mark is confusingly similar to the earlier mark “W Best Western Premier & Figure” under Article 74.2e of the Intellectual Property Law.

Following the appeal brought by Pham & Associates on September 21, 2013, the NOIP upheld Premier Inn Hotels Limited’s arguments and came to the conclusion that.

1. Although the applied-for mark is not inherently distinctive, however, the Applicant establishes, to the satisfaction of the NOIP, that the matter in question has acquired distinctiveness as a mark in relation to the named services, then the mark is registrable.

2. There is not a likelihood of confusion as a whole. The NOIP compared the signs in question. In particular, it found that.

With respect to the visual similarity: the NOIP held that the marks were visually different because of the different number of syllables and letters.

With respect to the conceptual similarity: the NOIP concluded that there was not conceptual similarity for those Vietnamese consumers who know the meaning of the words “PREMIER INN” and “PREMIER”. In view of the identity of the term “PREMIER”, the NOIP agreed with the Applicant that the term was in light of the largely laudatory nature of the registered mark.

The NOIP then turned to the global assessment of the likelihood of confusion and found that there was not a likelihood of confusion between 'PREMIER INN' and 'PREMIER' in view of the identity and similarity of the services, and the visual, phonetic and conceptual similarity between the signs in their entirety.