NOIP invalidated Trademark Registration No.197505 “Zottarella, design”

Zott SE & Co. KG, located at Dr. Steichele-Strabe 4, 86690 Mertingen Germany was temporarily denied by the National Office of Intellectual Property (NOIP) to r

Zott SE & Co. KG, located at Dr. Steichele-Strabe 4, 86690 Mertingen Germany was temporarily denied by the National Office of Intellectual Property (NOIP) to register world mark No.1211874 "Zottarella, design” designated to Vietnam for Class 29. Milk, milk products, namely drinking milk, sour milk, buttermilk, yoghurt, fruit yoghurt ... and Class 30. Puddings, edible ices, powders for ice cream ...on the grounds of confusing similarity to the prior trademark "Zottarella, design ", Registration No.197505 granted by the NOIP on 14/12/ 2012 for the same Class 29 under the name of co-owners Nguyen Duy Dung in My Duc District and Vu Thi Bich Hang in Hoang Mai District, Hanoi.

Through its representation, on 21/01/2014 Zott SE filed an invalidation request against the trademark registration No.197505 on the grounds that the registered co-owners did not have the right to file the application for trademark registration because they neither had production nor trading of products as it was registered (Article 87.1 and 87.3, IP Law). It’s worth mentioning here that in reality the two co-owners of the earlier mark have actually traded in milk materials and produced for sale of drinking milk, yoghurt and fruit yoghurt etc, but they had not registered their business as required by law and failed to present to the competent authority the official address where they do their business as well as legitimate documents, i.e., trade contract, vouchers/invoices etc. as evidence to prove their business.

When processing a validation request the NOIP shall set a period of two months for the trademark holder to counter-argue the cancellation request. This time may be extended for the parties concerned to add evidence, explanation, and so there was a case that lasted 1-2 years before a final decision of NOIP is made.