Twice appealing against rejection of protection

On April 24, 2017, the National Office of Intellectual Property of Cambodia (DIPR)1 refused to register both of the above marks nationally applied-for in Cambodia because they are the name or abbreviation or initials of the name of a nation or state (ie. Vietnam) and it is also not distinguishing goods or services of this enterprise from another enterprise under Article 4(a) & (d) of the Cambodia Law concerning Marks, Trade Names and Acts of Unfair Competition2.

On June 21, 2017, in collaboration with a local law firm in Cambodia, Bross & Partners assisted the applicant to submit a complaint arguing:

(a) Vietfoods is a coined word that cannot be translated and does not signify any significance in relevant industry, it should be thus considered to be trademark-able;

(b) even though the word "Viet" is separated from VietFoods, it does not exist in a particular official language to be perceived by the Cambodian average consumers, the word Viet alone cannot immediately mean Vietnam or Vietnamese;

(c) the list of goods bearing the rejected trademark VietFoods are basically the same as that of its home country's registration no. 281120 (granted by the NOIP of Vietnam); and

(d) the practice of grant by the DIPR has shown that it has granted a variety of trademarks made of a part indicating the name of a country and the other part of being merely descriptiveness but as a whole they were concluded as trademarked function, eg. ThaiMee/Reg KH16253/01, Indocafe/Reg KH/6759/96 or Vinamart/Reg KH/27189/07, etc.

On August 11, 2017, the DIPR issued its second office action no. 13859/R/DIP dismissing the complaint and confirming its refusal. Encouraged to persevere a second complaint by Bross & Partners, the applicant agreed to submit a second appeal wherein focusing on three key points:

The DIPR concluded that VIET means VIETNAM is an inadequate inference, contrary to the widely accepted basic principle that the assessment shall be made in an objective manner in the eyes of the average consumers in Cambodia to view whether the public may think that VietFoods is considered as as trademark or not

Excerpt from dictionaries referenced by the DIPR as an informal and uncertain source of information because this is an online dictionary solely developed by a private company of the US, which is completely absent in the list of the reliable online dictionaries voted by many prestigious magazines such as the Guardian....During that time, according to the renowned dictionaries, namely the Oxford, Cambridge, the term VIET has no meaning at all, particularly according ot the Marriam Webster dictionary, VIET is interpreted as Vietminh.

The DIPR's rejection is a self-contradiction because other similar trademarks that contain the element VIET have been approved by the DIPR, namely "VIETCOMBANK" / Reg. 49914/14 in class 36; "VietCare" / Reg 24967 for class 03 (these registrations remarked that no claim is made to the exclusive right to use "VIET" apart from the mark as shown)

Finally, the perseverance has been paid off, and on June 29, 2018 the DIPR released notice of allowance no. 11752/R/DIP stating that it accepts the appeal, agrees to proceed to regisation and requires grant payment to be made within 60 days. Subsequently, both the applied-for marks were granted registration nos. T-2018-69225 and T-2018-69226.

Lessons Learned

There are 3 lessions that may be drawn from the practical case above:

(1) When your brand is denied, you should be calm down, try to thoroughly understand the reasons underlying it and especially should seek qualified and experienced lawyers who are able to help you debate or argue against rejection of protection by the trademark registrar (in this case as the DIPR ). Where you failed, try it a second time with better evidences along with analysis based on more reliable source of information to increase the persuadability because the result of that persistence would be duly the one you ever expect.

(2) Brands or trademarks with weak distinguishing functions (such as a set of abbreviated signs or misspellings of terms describing characteristics of a product) or trademarks formed by combining a part of the name of a country (like Viet) and a part of descriptive signs (ie. Food), you should register them immediately to avoid their genericness to be likely perceived by a trademark attorney at the trademark registrar, or the best it is to express it in a continuous word (eg., the letter V and F under VietFoods should have not been capitalised).

(3) Although registering a brand name is only the dawn of a difficult and arduous journey so that you enter the market, after successful registration, you may still have to face a possible challenge to validity of such registered trademark by other rivals for the purpose of keeping your goodwill and market share. For instance, with the support of Bross & Partners Vinamilk defeated Hero AG's cancellation action against its registered trademark Dielac Pedia in Cambodia at the Cambodian Ministry of Commerce3.





1 DIPR has its full name as the Department of Intellectual Property Rights, an affiliate of the Cambodian Ministry of Commerce: http://www.cambodiaip.gov.kh/default.aspx?lang=en

2 The English version of this Law can be found at: https://wipolex.wipo.int/en/text/180008

3 The details of this case is readable at the link: http://bross.vn/newsletter/ip-news-update/Cambodia:-Hero-AG-defeated-by-Vinamilk-in-a-trademark-cancellation-1307

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