Appealed successfully, San Ace accepted for registration

SANYO DENKI Co., Ltd., located at 33-1, Minamiotsuka 3-chome, Toshima-ku Tokyo 170-8451 (JP), represented by Pham & Associates Law Firm (Appellant) has petitioned with the IP Vietnam to appeal against Notification no.2016/32 TDH07 dated 21/6/2017 on privisionally refusing registration of mark San Ace under International Registration of Trademark (IRN) 946362 for products in Class 09 and 11. The reason given by the IP Vietnam for refusing protection is that the applied-for trademark is not distinctive from the trademark “SAN-EI” already registered (the earlier mark), under TM Registration No.164676 in terms of visual appearance, pronunciation and overall impression.

The Appellant disagreed with the above conclusion, arguing as follows:

(i) Regarding the mark: the applied-for trademark “San Ace” is a combination of two components, “San” and “Ace”, presented in a common font, in which the letter S and the letter A in uppercase, the remaining characters in lowercase; “San Ace” is a self-created word, has no meaning in common languages; is pronounced as “sæn eis”. The earlier trademark “SAN-EI” is also a self-created word, presented in uppercase. Each trademark consists of two syllables, namely “San”, “Ace” and “SAN”,“EI”. The first thing that can be noticed is that these word trademarks are visually different. Next, although the word/syllable “san” appears in both trademarks, we must take into account the second constituent element, namely “Ace” in the applied-for trademark and “EI” in the existing trademark,which are completely different. It is this difference that makes “San Ace” and “SAN-EI”, as a whole, besides the difference in appearance, also different in structure and pronunciation, or in other words, they are distinctive, not causing confusingly similarity to consumers; 
(ii) Regarding products: the products in Groups 09 and 11 bearing the above-said are different in nature, intended use and consumption channels.

The IP Vietnam held that the argument (i) above is well-founded while argument (ii) is acceptable to a certain extent; the two trademarks are distinctive in term of structure, appearance and pronunciation, so not causing confusion for consumers.

On that basis, the IP Vietnam issued Decision No.81984/QD-SHTT dated May 21, 2025 to cancel the previous Notice and to accept the registration of the trademark "San Ace" in Vietnam./.