Complaining that PARMA does not misrepresent the origin of the product, “ORO DI PARMA” accepted for registration in Vietnam

Hengstenberg GmbH & Co. KG., located at Mettinger Strasse 109, 73728 Esslingen (DE), represented by Pham & Associates Law Firm (Appellant) has filed a complaint with the IP Vietnam against Notice No. 2013/47 NTK 09 dated November 27, 2014 on provisionally refusing registration of mark “ORO DI PARMA” under International Registration of Trademark no.526305 for products in Class 29 on the grounds that the word “PARMA” in the applied-for trademark is the place name of a city in Italy, while the applicant/owner of the trademark is in Germany, thus the trademark will “…mislead, confuse or deceive consumers about the origin of the product” and shall therefore be rejected as stipulated in Article 73.5 of the IP Law.

Considering that the above conclusion of IP Vietnam is unsatisfactory, the Appellant  filed a complaint, arguing as follows:

(i) In fact, all the products of “tomato concentrate” bearing the above-mentioned trademark originate from Parma (Italy), so it cannot be said that consumers are deceived. The Applicant has submitted a notarized Declaration of Origin of the products, and at the same time narrowed down the list of products bearing the trademark, which is clearly stated in the Intl’ Registration of Trademark IRN 526305- ORO DI PARMA  as “Tomato concentrate from the city of Parma”. The fact that the Applicant has an address in Germany is purely for the purpose of trademark management;

(ii) Because of the clarification of and honest commitment to the origin of the product, the trademark is protected in Italy, where the city of Parma is located, and many other countries such as the US, Australia, Czech Republic, Spain, Morocco, Mexico, New Zealand, France, Germany, etc.

(iii) The applicant applies for protection of the trademark in its entirety, not for the word “PARMA” alone.

Finding that the above arguments of the Appellant) are well-founded and after having examined the relevant evidence, the IP Vietnam issued Decision No. 109389/QD-SHTT dated June 16, 2025 to revoke the previous Notice of refusal and accept the registration of IRN 526305-ORO DI PARMA./.