Global premium chocolate manufacturer, Chocoladefabriken Lindt & Sprüngli AG (“Lindt”) recently succeeded in opposing two third party trademark applications in Vietnam that included Lindt’s mark CAFFAREL. The successful oppositions allowed Lindt to register two CAFFAREL international trademarks, designating Vietnam.
In the two opposition proceedings, the National Office of Intellectual Property (“NOIP”) issued Decisions refusing trademark applications filed by NANO Pharmaceutical Co. Ltd. and NANO Pharmaceutical JSC (“NANO”) for a CAFFAREL word mark and for a CAFFAREL & Device mark for “confectionary” in Class 30. The refusals highlighted that the respective NANO marks were identical and confusingly similar to Lindt’s CAFFAREL word mark and CAFFAREL & Device mark widely used and recognized for “chocolate” in Class 30.
At the time NANO filed its two trademark applications, Lindt’s two International Registrations (“IRs”) for the CAFFAREL word mark and for the CAFFAREL & Device mark had not been designated in Vietnam. Lindt subsequently made designations of these two IRs in Vietnam and simultaneously filed two oppositions against the NANO applications.
The two Lindt IRs were refused by the NOIP because of the prior NANO applications. Lindt filed appeals against the NOIP’s Refusals, referring to the two oppositions filed against the NANO applications.
The oppositions were based on the following grounds:
1) The NANO marks are confusingly similar to Lindt’s marks which have been widely used and recognized and become well-known to consumers in Vietnam before the priority date (Articles 74.2(g) and 74.2(i) of the Intellectual Property Law); and
2) Bad faith by NANO, in particular:
- NANO should have been aware of the Lindt marks because the Lindt marks have been widely used and recognized;
- The CAFFAREL word mark and also the device mark applied by NANO were almost identical to Lindt’s device mark. Such resemblance could not be a coincidence. The respective marks are pictured below:
The oppositions were successful. The NOIP issued Decisions of refusal for NANO’s applications and withdrew the refusals regarding Lindt’s international registrations.
The NOIP accepted the grounds of Article 74.2(g) (i.e., the marks have been widely used and recognized) and the bad faith by NANO, while not recognizing that Lindt’s marks are well-known. It is not uncommon for the NOIP to accept the grounds of widely used and recognized marks rather than recognizing marks as well-known marks.
In addition to accepting the grounds of Article 74.2(g), the NOIP cited Article 87.2 of the Intellectual Property Law to refuse NANO’s application for the CAFFAREL word mark because NANO was not entitled to apply for the mark bearing the goods produced by Lindt.
Article 87.2 provides that organizations and individuals that conduct lawful commercial activities may register marks for products brought to the market by them but produced by others, provided that the producers neither use such marks for their products nor object to such registration.
The two successful opposition cases brought by Lindt are unusual, as the NOIP will usually only make findings of bad faith where there is evidence that the applicant had actual knowledge of the opposer’s earlier recognition and use. In these cases, the NOIP relied solely on Lindt’s arguments without requiring evidence of actual knowledge.
The favourable opposition decisions and the registrations of the two IRs were a significant success for Lindt and have allowed Lindt to continue with its successful commercial activity under the CAFFAREL trademark in Vietnam.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.
Principal / Trade Mark Attorney Trade Marks Team Bangkok, Thailand