The NOIP does not recognise the German embassy Hanoi ’s powers to grant the consent for applying trademark registration within its competence

Association of German Companies in Vietnam (“AGCV”) filed a Vietnamese application for the registration of the word mark OKTOBERFEST (Application No. 4-2011-19845) in Class 32, 41.

Verein Munchener Braunerenien e.V (“VMB”), Association of Beverage Companies in Munich,

Germany opposed the application in respect of all the goods claimed. The ground in support of the opposition were those set out in Article 73.5 of the Inllectual Property Law.       

In opposition proceedings , AGCV submitted letters of consent from the German Embassy in Hanoi and the German Consul General in Ho Chi Minh City. The applicant held that:

i) The support and consent of the Embassy of German and the Consuls General are valid and within their competence;

(ii) The applicant’s application has earlier priority date, and

(iii) The applicant wishes to become the owner of the mark OKTOBERFEST in order to organize the German beer festival and propagate German culture in Vietnam.  

On behalf of VMB, Pham & Associates agured that the mark "Oktoberfest - BIER " is an asset, which is not owned by the German State. Thus, the German Embassy and the German Consuls General in Vietnam have not power to permit the third parties to use, apply for registration "Oktoberfest" in association with beer. Civil Code of Vietnam and other countries provide that only true owner has the rights to dispose of the assets which are in the legal ownership.

In view of the above, the NOIP on April 27, 2016 upheld the opposition and concluded that Oktoberfest is the most well-known beer festival in Munich, Germany. Therefore, the applied-for mark “OKTOBERFEST” in the name of Association of German Companies in Vietnam would result in misreading the public as to the source.