Pham & Associates successfully appealed to NOIP on the mark "OLYMPIA, High Security"

Application:       "OLYMPIA, High Security"

Application no.: 4-2010-04824

Classes: 06

Background

In 2010, Bao Viet Trading Co., LTD filed a trademark application “OLYMPIA, High Security” for the goods of door bolt, metal keys for vehicle… in class 06. Upon substantive examination, the National Office of Intellectual Property (the ‘NOIP’) refused to grant certificate as considered that the element OLYMPIA was the name of a Greek famous place, hence the mark applied-for caused confusion of the origin of products.  On October 03, 2012, for and on behalf of the client, Pham & Associates (‘P&A’) appealed successfully against the NOIP’s decision of refusal and then the NOIP had allowed registration in Vietnam.

Comment

In principle, the sign was a geographical name or containing a geographical name, which was not eligible to protect as a trademark if i) such geographical area that specialized in producing or providing products or services bearing the mark: ii) such geographical area that had a reputation for the products or services bearing the mark. In other words, if the products or services bearing the mark derived from the geographical area then would not be protected except the sign had been widely used and being considered as a trademark or registered in the form of a collective mark or a certification mark.

In particular case, OLYMPIA was a Greek place name relating to the ancient architectures. There was not evidence to prove that the place name of OLYMPIA had a reputation with its products of "door bolt, metal keys for vehicle…". Therefore, the use of sign OLYMPIA did not lead to confusion of the origin of products or services.

Given the P&A’s arguments were reasonable, on May 8, 2014 the NOIP issued Decision no. 1351/QD-SHTT which accepted protection the mark "OLYMPIA, High Security" in Vietnam.

If you are interested in the matters of refusal/opposition of trademark registration, please contact with Pham & Associates via email: hanoi@pham.com.vn

Pham & Associates