The request for invalidation of the trademark “MUMMUM” has been rejected

I Lan Foods IND, Co. Ltd (“I.L.F”) - owner of Certificate of Trademark Registration (“VN Reg.”) No. 228927 “Mum-Mum”, granted on August 26, 2011, for products “Cookies  made from rice; coffee; beverages made from coffee containing milk (coffee is the main ingredient); +…” in Class 30 - has petitioned with the IP Vietnam to invalidate  the VN Reg. 228927 “MUMMUM”, granted on August 27, 2014 under the name of Chau A  Company (“C.T.A”) for protection of products “Milk, dairy products” in Class 29 and “Noodles; vermicelli; pho; congee" in Class 30 on the grounds that the contested mark does not meet the requirements for protection at the time the protection title is granted as it’s confusingly similar to the cited prior "Mum-Mum". , namely (i) "milk; dairy products" in Class 29 bearing the mark "MUMMUM" are among the ingredients that make up the products "beverages made from coffee containing milk" in Class 30 bearing the mark "Mum-Mum", and (ii) products "Noodles; vermicelli; pho; congee " in Class 30 bearing the mark "MUMMUM" and products "“Cookies  made from rice..." in Class 30 bearing the mark "Mum-Mum" are all instant foods made from rice/cereals; they have the same composition, intended use, commercial channels and target customers.

The defendant objected to the plaintiff's claim, counter-arguing as follows:

(a) C.T.A is the owner of the prior right to the word element “MUMMUM” for the products in Class 29 and 30 above, which had been granted VN Reg. No. 52214 “Mum Mum” in stylized letters on January 28, 2004, valid until November 15, 2012 for “milk; products; dairy products” in Class 29 and “Instant noodles” in Class 30. Later, C.T.A filed a further trademark application and was granted VN Reg.228927 “MUMMUM” on July 28, 2014;

(b) Trademark “Mum-Mum” of I.L.F in the application No. 4-2009-24236, filed on November 9, 2009, granted VN Reg. No. 228927 on August 26, 2011 for products in Class 30. In fact, when the I.L.F's application was examined as substantive , the IP Vietnam issued a notice to refuse a part of its product list, namely to remove the “instant noodles, rice, cereal flour and preparations made from cereal flour”, so as not to cause confusion with the product list of the prior  VN Reg.52214 “Mum-Mum ” in the stylized letters of C.T.A and I.L.F accepted this. This means that the NOIP determined that the remaining product list of the I.L.F.'s application after narowing is ““Cookies made from rice; coffee; beverages made from coffee containing milk (coffee is the main ingredient); +…” in Class 30  of the mark  "Mum-Mum"  is distinctive of "Milk; dairy products” in Class 29 and “instant noodles” in Class 30 of the prior mark “Mum-Mum” in the stylized letters of C.T.A;

(c) from a) and b) can conclude that the request for invalidation of VN Reg.228927 is groundless, intended to disrupt and obstruct the legitimate business of C.T.A.

Having reviewed the documents provided by the Parties, the IP Vietnam held that  C.T.A's objection is well-founded and I.L.F.'s request to invalidate the trademark is unfounded. The IP Vietnam further clarified that, according to point 39.9.b of Circular No. 01/2007/BKHCN on assessment of similarity of goods/services, "Milk, dairy products" in Class 29 and "Noodles; vermicelli; pho; congee " in Class 30 are considered not similar to “Cookies made from rice; coffee; beverages made from coffee containing milk (coffee is the main ingredient); +…” in Class 30 because they are different in respect of functions and purposes of use.

From the above points, the IP Vietnam rejected the invalidation request against VN Reg.228927 “MUMMUM”./.