The lawsuit brought by Nippon Paint Vietnam Company against the National Office for Intellectual Property (NOIP) will resume in one month as the company has appealed to a higher court.
On August 27, 2004, the Hanoi court rejected Nippon Paint Vietnam’s motion to revoke the decision made by NOIP, in which they refused parts of the SUPER MAXILITEX N trademark that Nippon Vietnam had applied for.
D&N Intellectual Property Law Firm, legal representative of Nippon Paint Vietnam, appealed to the People’s Supreme Court yesterday, September 6.
The appeal to the People’s Supreme Court was filed eight days after the court’s initial decision, two days before the deadline for appeal, as defined in current procedural regulations.
Nippon, the complainant, holds dozens of trademarks, including that for “LITEX”. Represented by D&N, the company filed a trademark application to NOIP requesting full trademark certification for “NIPPON PAINT SUPER MAXILITEX with stylised N and shape”.
After substantive examination, NOIP refused full protection of the mark, reasoning that in composition, “MAXILITEX” is ‘confusingly similar’ to the citation mark of MAXILITE, a product of chemical firm ICI. In Decision 3152/DK dated December 1, 2003, NOIP pointed out that had not refused protection the overall trademark, but only certain aspects of the logo.
Vu Thai Ha, Lawyer at D&N Intellectual Property Law Firm, legal counsel of Nippon Paint Vietnam, said the court’s verdict was ‘inappropriate’, leading Nippon Paint to appeal to the higher court.
“The court failed to take in to account issues such as Article 785 of Civil Code, Article 6.1.a.b and Article 25 of Decree No 63/CP before coming to their decision,” Mr Ha said.
Mr. Ha said NOIP was improperly applying trademark laws only recently applicable in Vietnam, ignoring the international principle of “overall trademark consideration” in determining confusing similarities between the mark of Nippon and citation mark “MAXILITEX”.
The “NIPPON PAINT SUPER MAXILITEX with stylised N and shape” in the Nippon trademark application are a combination of words and images regulated under Article 785 Definition of Trademark of the Civil Code, and Article 6.1.a. Parts of the trademarks cannot be separated from others, then partially refused if the current trademark laws and the trademark rights of NIPPON on mark LITEX are taken into account, said Mr. Ha.
Mr. Ha believes in the legitimacy of the rules, saying that the regulations on intellectual property must be considered in a comprehensive way or the Appeal Court will revert to the initial verdict.