A request to invalidate trademark “GW, figure” was rejected

Weihai Guangwei Group Co., Ltd. (“Weihai”), the owner of the Intl’ Trademark Registration No. 970879 “GW” in stylized form - (“cited mark”) – has petitioned with the IP Vietnam  to request the invalidation  of the national Trademark Registration No. 392802 “GW, figure” - (“opposed mark”) - on the grounds that this mark does not meet the conditions of protection at the time of grant of the title as provided for in Article 74.2(e) and Article 96.1(b) ) of IP Law. In particular, (i) the opposed  mark is confusingly similar to the earlier cited mark and (ii) both trademarks are registered for the same product “rods for fishing; reels for fishing, fishing tackles…” in Class 28 and have the same commercial channels in the market.

On behalf of and authorized by the defendant, Pham & Associates objected to the defendant's invalidation request, arguing as follows:

 (i) Article 74.2.a of the IP Law and Point 39.3.b of Circular 01/2007/TT-BKHCN stipulates that a sign which is a combination of two letters, even though they are of Latin origin, but cannot readable as a word is considered to be indistinctive  and shall not be protected, unless the sign is presented in a graphic or other special form. Thus, the letters “GW” in stylized form as shown in the cited mark are not protected as letters in  ordinary form;

(ii) The opposed mark “GW, figure” is a combination of letters and pictures, where the letters G and W in ordinary form are presented in the center of a red circle with a blue border, surrounded by 11 white stars, increasing in size and the largest star at the top. This combined mark is protected in its entirety, no claim is made to the exclusive right to use the letters GW apart from the mark as shown. 

(iii) from point  (i) and (ii) the following conclusion is made:

- the word element GW of the opposed mark does not violate the protection scope of the cited mark “GW” in stylized form;

- the cited mark and the opposed mark are completely different  as to visual and overall impression, hence their co-existence should not mislead consumers as to the origin of the products bearing the respective mark.

Considering the produced evidences, the IP Vietnam held that the combined mark "GW, figure" is completely different from the trademark "GW" in stylized form and does not violate the IP Law, Article 74.2.e, namely ". ..not identical and confusingly similar to a trademark already registered for identical or similar goods/services on the basis of an application with an earlier filing date or priority date…”.

Based on the foregoing, the IP Vietnam issued Decision No. 2405/QD-SHTT dated May 26, 2022 rejecting Weihai's request to invalidate the trademark "GW, figure".