TRADEMARKSLEGAL SYSTEMS AND CASE STUDIES IN 16 COUNTRIESIP COLLEGIUM

Table of Contents
Supervisor of Case Studies: Reiko Toyosaki
TOYOSAKI & ASSOCIATES*Preface-------------- 1
Insan Budi Maulana
Maulana and Partners Law Firm

1

Brazil-------------- 3
Roberto Carapeto
Partner,Licks ATTORNEYS+Basic Information of Legal System+Case Study 1 (Registrability issue (Relative Ground))+Case Study 2 (Registrability issue (Absolute Ground))+Case Study 3 (Registrability issue (Relative Ground))+Case Study 4 (Infringement against registered mark, Sanction and remedies)
2

Cambodia-------------- 19
Phin SovathPartner/Attorney-at-law,
Bun & Associates+Basic Information of Legal System+Case Study (Registrability issue (Relative Ground))
3

China

-------------- 24
Isshin Shirasu (Japanese Patent Attorney)
Founder of Shirasu IPR Firm（Japan）
Partner of SHlRASU • P.C. & Associates（Beijing, China）+Basic Information of Legal System+Case Study 1 (Registrability issue (Absolute Ground))+Case Study 2 (Infringement against registered mark)

ii
ⅰ

4

Colombia-------------- 31
María Alejandra Pava, Trademark Director,
Carlos A. Parra, Partner and Head of Asia Desk (Tokyo, Japan),
OLARTEMOURE & ASOCIADOS SAS.

+Basic Information of Legal System+Case Study1 (Registrability issue (Relative Ground))+Case Study2 (Registrability issue (Absolute Ground))
5

Egypt

-------------- 38
Noha Afifi
Manager, Central of Innovative Technology (CINTECH),
Egypt- Japan University of Science and Technology (E-JUST)+Basic Information of Legal System+Case Study (Bad faith application, Sanction and remedies)
6

India

-------------- 42
Samrat Mehta
Advocate & Trademark Attorney,
Solicitor (England & Wales),
MEHTA LEGAL+Basic Information of Legal System+Case Study 1 (Infringement against registered mark)+Case Study 2 (Bad faith application)
7

Indonesia-------------- 51
Insan Budi Maulana, Managing Partner
Ananda Ramadhan Maulana, Associate,
Aulia Iqbal Maulana, Associate,Ariq Irsyad Maulana, Associate,
Maulana and Partners Law Firm

+Basic Information of Legal System+Case Study 1 (Cancelation trials based on non-use)+Case Study 2 (Bad faith application)

iii
ⅱ

8

Japan

-------------- 62
Japan Institute for Promoting Invention and Innovation (JIPII)+Basic Information of Legal System
Reiko Toyosaki
Patent Attorney,
TOYOSAKI & ASSOCIATES+Case Study 1 (Registrability issue (Relative Ground))+Case Study 2 (Internet and trademark)
9

Kenya

-------------- 68
Rahab Mureithi
Partnership and Resource Mobilization Officer,
Konza Technopolis+Basic Information of Legal System+Case Study 1 (Registrability issue (Relative Ground), Sanction and remedies)+Case Study 2 (Registrability issue (Relative Ground), Sanction and remedies)
10 Korea-------------- 76
Hoonsik Shin
Administrative Patent Judge,Intellectual Property Trial & Appeal Board+Basic Information of Legal System+Case Study (Bad faith application)
11 Malaysia-------------- 81
Sherry Binti Sokmum
Lead, Intellectual Property & Technology Transfer,
Legal Officer,
Universiti Kebangsaan Malaysia+Basic Information of Legal System+Case Study (Infringement against registered mark)iv
ⅲ

12 Myanmar-------------- 86
Khine Khine U
Advocate, Shipping & Trade Mark+Basic Information of Legal System+Case Study (Infringement against registered mark)13 Philippines-------------- 90
Maria Gladys C. Vilchez
Partner,
HECHANOVA BUGAY VILCHEZ & ANDAYA-RACADIO+Basic Information of Legal System+Case Study 1 (Infringement against registered mark, Bad faith application)+Case Study 2 (Registrability issue (Relative Ground))
14 Singapore-------------- 101
Editha R. Hechanova
President/Managing Partner,
HECHANOVA GROUP (HECHANOVA & CO., INC./HECHANOVA BUGAY VILCHEZ & ANDAYA-RACADIO)+Basic Information of Legal System+Case Study 1 (Cancelation trials based on non-use)+Case Study 2 (Registrability issue (Relative Ground))
15 Thailand-------------- 111
Somchai Ratanachueskul
Dean, Pridi Banomyong Faculty of Law,
DhurakijPandit University+Basic Information of Legal System+Case Study 1 (Infringement against registered mark)+Case Study 2 (Bad faith application)v
ⅳ

16 Vietnam-------------- 118
Phan Quoc Nguyen,
Vietnam National University, Hanoi+Basic Information of Legal System+Case Study 1 (Internet and trademark)+Case Study 2 (Infringement against registered mark)*Quick Reference Matrix-------------- 124viⅴ

Preface

Preface
Trademark is one of the objects of intellectual property that has economic value. Therefore,a product of goods or services will be more valuable and will have higher economic value if
the goods or services have a trademark embedded in them. And the trademark will always be
attached to a product of goods and services that are needed by entrepreneurs as the identityof their products and distinguish them from other companies' products.
On the other hand, people will also prioritize choosing a product of goods or services thathave a trademark. For the community, the trademark is not only a distinctive feature,
identity for a product, but also pride, achievement if people can get or enjoy the product.
As objects that have economic value, of course, trademarks must obtain the proper legal
protection not only by the registrants, but also to the public from the actions of othercompetitors that may harm the actual trademark owner, and/or the public as users.
With the above considerations, the efforts of IP Collegium, which mainly consists of alumni
attending intellectual property rights training and/or trainers that have been conducted by
APIC-JIPII, compiling trademark regulations originating from their respective countries isan effort to be appreciated and shall be disseminated to many entrepreneurs andprofessionals.
The authors of the trademark regulations come from 16 countries from Asia, Latin America,and Africa, namely: Brazil, Cambodia, China, Colombia, Egypt, India, Indonesia, Japan,
Kenya, Korea, Malaysia, Myanmar, Philippines, Singapore, Thailand, and Vietnam torepresent more than 2 billion population of the world community whose growth in trade andindustry is unquestionable.
By disseminating knowledge of trademark regulations, registration processes, and trademark
protection from 16 countries, it is hoped that it will make it easier for entrepreneurs to
immediately register and protect their trademarks in these countries, and may create fairbusiness competition, and build business growth.

１Preface

Of course, information on trademark regulations from 16 countries is not only useful for
those countries, but also useful for entrepreneurs from other regions who will use, andprotect their trademarks when they expand their products marketed in these countries.
Finally, we hope that the trademark regulations of these 16 countries can improveunderstanding of the trademark system not only for the friendship of the 16 countries but
also increase the closer relations among IP Collegiums, including to its community.
Greetings from all of us. Stay healthy!
January 2022
Insan Budi Maulana, Maulana and Partners Law Firm
IP Collegium２1 Brazil

1

Brazil+Basic Information of Legal System
As of October, 2021

No.

Item

1

Administrative

Brazilian Nationalorganization for

Institute of Industrial

Trademark

Property (INPI)

TrademarkLaw No. 9,279 of May

Law/Act

14th, 1996 (The Brazilian

2

Details Examples

Details in your country (If any)

Industrial Property Law)
3

Registable

The law establishes that

Trademarkany distinctive, visuallyperceptible sign may beregistered as a trademark,provided that it fulfils thelegal requirements.

4

MadridAcceded2019/10/2

Required

For foreign applicants, it is necessary toProtocol5

Local Agentappoint an agent, a registered Brazilian
trademark attorney.
6

Required

Prescribed application* A request for the registration of A

documents forform

trademark in Brazil

filing* Information about the applicant* List of goods or services* A representation of the trademark* A digital copy of A signed PoA form isenough for filing the application

7

Language for

Portuguese

filing
8

Classification

NICE Classification

9

Multiple

No

Multiple-class trademark applications

Classes(Yes, only for the

are not possible in Brazil. A separate

application throughapplication must be filed for each class.

Madrid)At this moment, only cases coming

31 Brazil

through Madrid have Multiple-class.
10

Fee Reduction

N/A

11

Publication of

Yes

Once the application has been filled,

Unexamined

upon completion of the formal

Applications

examination the application is published
for opposition. The period for filing
oppositions against Brazilian trademark
applications is 60 days from publicationof the application. After expiration ofthis period the application is conductedto substantive examination.

12

Request for

N/A

All application is examined.

Examination
13

Substantive

Yes

Examination
14

Accelerated

N/A

Examination
15

Opposition

Yes

The period for filing oppositions is 60
days from publication of the application.

16

Trial forYes

Any third party with legitimate interest.

Invalidation
17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

Term for10 years

19

It can be renewed for successive periods

Renewalof ten years within 12 months before theexpiration of the current trademark
registration. It is possible to file renewal
within a grace period of six months after
the expiration date.

20

Proof of Use

N/A

In Brazil, no proof of use is required
either for the filing of an application nor
even for the granting or renewal of thecorresponding registration.

21

Cancellation forYes

If the Brazilian trademark has not been4

1 Brazil

Non-useused within five years after grant, it may
be subject to cancellation.

22

E-filingYes

https://www.gov.br/inpi/ptbr/servicos/marcas/e-marcas

51 Brazil+Case Study 1 (Registrability issue (Relative Ground))Case Name: São Lourenço da Serra Case
Case No. 0005685-45.2013.4.03.6100
Parties: Radesco Mineração, Nestlé Waters Brasil – Bebidas e Alimentaos LTDA & INPI and
Judgment Date: July 2, 2020
Original Decision: 0005685-45.2013.4.03.6100
Referred Articles: Industrial Property Law No.9279/69 Article 124, IV, IX and XVKeywords: confusion, distinctiveness, combined trademark
Summary:
In this case, there was a claim and a counterclaim, so we had a decision on issues ofregistrability and of infringement at the same time. Plaintiff/Counterrespondent is Radesco
Mineração (herein below "Radesco") who obtained a trademark registration for the composite
trademark"São

LourençodaSerra"(No.

823194272)

formineralwater.

Defendant/Counterclaimant is Nestlé Waters Brasil (herein below "Nestlé"), who owns three
trademark registrations for composite trademarks containing the expression "São Lourenço"(Nos. 817404350, 817404368 and 819113085) for mineral water. "Nestlé" filed anadministrative nullity procedure against "Radesco" registration due to the conflict of the useof the expression "São Lourenço". The Brazilian Patent and Trademark Office (INPI)
accepted "Nestlé" request and invalidated "Radesco" trademark registration. In the main
lawsuit, "Radesco" requested the cancellation of the decision that invalidated its trademark on
the basis that the expression that is conflicting between the trademarks, namely "SãoLourenço", is the name of a region and cannot be under monopoly of "Nestlé". In the
counterclaim, "Nestlé" demanded that "Radesco" be enjoined from using the trademark
including the expression "São Lourenço". At first instance, the court confirmed Brazilian
Patent and Trademark Office (INPI)’s decision of invalidating “Radesco” trademark andordered "Radesco” to cease using the trademark "São Lourenço da Serra" and imposed a fine
if it did not comply with the decision.
Fact:
The Federal Court of Appeals for the 3rd Circuit (TRF-3) allowed the trademarks to coexist,
because "São Lourenço" and "São Lourenço da Serra" are municipalities in the state of Minas
Gerais, and neither of them should have the exclusive right to use them as trademarks. In
addition, the court held that these trademarks had sufficient distinctiveness due to thefigurative elements and could avoid confusion by consumers.
6

1 Brazil

Issues:In the administrative procedure for the examination of trademarks, the Brazilian Patent andTrademark Office (INPI) invalidated the registration of another composite trademark "SãoLourenço da Serra" based on the citation of the combined trademark "São Lourenço", which
designates the same service of bottling mineral water. The courts in the first instance alsodecided that a counterclaim seeking an injunction is possible in a case that was initially dealing
with a registration issue (in this case, the cancellation of a decision that invalidated “Radesco”
composite trademark "São Lourenço da Serra")
Ruling:The Federal Court of Appeals (TRF-3) ordered the Brazilian Patent and Trademark Office(INPI) to grant a trademark registration for "São Lourenço da Serra” but ruled that it would
not grant exclusive rights to the letter elements.

7

1 Brazil+Case Study 2 (Registrability issue (Absolute Ground))Case Name: “País do Futebol” Case
Case No. 0132360-36.2014.4.02.5101
Parties: Canal Kids Show Entretenimentos LTDA vs PBC Comunicacao LTDA
Judgment Date: October 16, 2018
Original Decision: July 9, 2016
Referred Articles: Industrial Property Law No.9.279/96 (LPI) Article 124 VI and XVII.
The present trademark

Class and goods

NCL (9) 35: rental of advertising space; updating ofadvertisingmaterial;organizationofclipping

exhibitions(services

for

of

-);

commercialoradvertising purposes; advertising; publication ofadvertising texts; advertising agencies; distribution ofadvertising material; model agency advice, consulting
and information for advertising or sales promotion;organization

of

trade

fairs

for

commercialoradvertising purposes; advertising agencies; on-line
advertising on a computer network; advertising by sales
catalogs; advertising (rental of material -); promotional
advice, consulting and information on advertising;television commercials; television advertising; layout
services for advertising purposes; radio commercials;
direct mail (advertising by -); advertising; radio
advertising.
HolderCanal Kids

Summary:
The Superior Court of Justice (STJ) has upheld the decision of the Federal Court of Appeals
81 Brazil

for the 2nd Circuit (TRF-2) that the expression referring to Brazil, "País do Futebol" (Landof Football), is not allowed to be registered as a trademark at the Brazilian Patent Office,based on the interpretation that it belongs to the public domain and is a generic expression as
per the Article 124 (VI) of the Brazilian Industrial Property Law (LPI).
Fact:
In the invalidation proceedings, the first trial court dismissed the case on the grounds that"there is no violation of the statutory provision (on which the action is based)." However, inthe subsequent appeal in TRF-2, the court held that the words themselves, as well as theirsymbolic meaning, form an indication of a sign that is weak and lacking in distinctiveness, andtherefore a declaration of invalidity is granted.
Issues:The phrase "País do Futebol" (Land of Football) was initially registered as a trademark withtoy retailer Canal Kids. When the advertising agency “PBC Comunicação” tried to use thephrase in promotional materials for the sporting goods store Centauro, Canal Kids filed for
trademark infringement. PBC claimed that the expression was a part of the title of the song
"Aqui é o país do Futebol (This is the Land of Soccer)" by singers Milton Nascimento andFernando Brando and was already known since the 1970s. Article 124 (XVII) of the Industrial
Property Law (LPI) prohibits the registration as a mark of a sign that reproduces the title ofa pre-existing literary or artistic work. Furthermore, due to the continuous use the expression
by the common public, the expression lost any distinctiveness and should not be granted on
the basis of the Article 124 (VI).
Ruling:Challenging the TRF-2 decision, Canal Kids appealed to the STJ, which upheld the TRF-2
decision, stating that in light of Article 124 of the current law, a sign that is visually
recognizable and distinctive may be registered as a mark, while a sign that is generic, common
or merely descriptive in character is not registrable, hence, invalidating the Canal Kids
trademark registration.

9

1 Brazil+Case Study 3 (Registrability issue (Relative Ground))Case Name: "Terra Imóveis" Case
Case No. 5049269-21.2018.4.02.5101/RJ
Parties: Dagoberto Pecanha Pinheiro vs Telefonica S / A & INPI
Judgment Date: June 17, 2020
Original Decision: 5049269-21.2018.4.02.5101/RJ
Keywords: Similarity, identical, likelihood, real estate, insurance
The refused markCited mark 1

Cited mark 2

Class,NCL (9) 36: real

NCL (7) 36: broker,

National Class

Goods/Services

estate (brokers -);advisory or

40/10.15.31: real

real estate appraisal;

consultant inestate; export,

real estate

insurance in theimport, andcommerce; store

fields of:representations;rental [real estate];

automobile, life,

retail trade services;

real estate [purchasehealth, private

business operationand sale of -];pension, business,or management

apartments (rental

home.

support services.

of -); rental of realestate; real estate(appraisal -); realestate (agencies - );real estatedevelopment; realestateadministration; realestate agencies;
apartment rental;
office rental [real10

1 Brazil

estate]; real estate
brokers; real estate(administration of- ); apartment rental(real estate agencies
of -)
Party

DAGOBERTOTERRATELEFONICA S/APEÇANHACORRETORAPINHEIRO

SEGUROS LTDADE

Summary:DAGOBERTO PEÇANHA PINHEIRO filed a lawsuit seeking to cancel the decision that
refused the trademark "Terra Imóveis" (application number 903.827.417). The trademark
application was refused by the Brazilian Patent and Trademark Office (INPI) based on thecited trademark based on the registration number 822.052.415 for TERRA, owned by TERRACORRETORA DE SEGUROS LTDA, however on the level of an Administrative Appeal
against the rejection, Brazilian Patent and Trademark Office (INPI) cited anotherregistration, also for TERRA, owned by TELEFONICA S/A (registration number
821.850.318).
Fact:
At the administrative hearing, the Brazilian Patent and Trademark Office (INPI) found thatthe designated services between the trademark application and the cited trademark 1 were
not related (real estate x insurance), but maintained the decision of refusal by pointing out a
new cited trademark 2, registration number 821.850.318, for a composite trademark"TERRA" owned by the defendant TELEFONICA S/A. The plaintiff is seeking to revoke
the decision of refusal on the grounds that several right holders have trademarks that include
the word element "TERRA" and that the sign "TERRA" is widely diluted so that the signs cancoexist in the market (known in Brazil as the "distance theory").
Issues:Judge MARCIA MARIA NUNES DE BARROS, in deciding the case, analyzed therequirements to be considered when making analogous judgments, as follows.
a) Identity and similarity between the goods or services to be designatedIn other words, in determining the application of the principle of specialty, the following
factors are to be considered11

1 Brazil- Whether or not the designated goods or services are identical.
- If not identical, is there a certain degree of relevance in terms of the industry involved,
purpose and use, as well as new technology?
- If none of the aforementioned factors apply and the trademark is well-known.
b) Reproduction or imitation, in whole or in part, of another person's registered trademark.
In other words, to determine whether there is visual, graphic, phonetic, conceptual, or
ideological identity between the signs in question, the following factors are to be considered- The impression given to the human senses (sight and hearing) when the signs are compared.
- Whether the trademark under examination is conceptually identical to the preceding
trademark and reproduces the style, method, flavor, or idea.
- Is it composed of heads, terms, expressions, or figures that are commonly used in the partial
element or that suggest the product or service to be identified?
- The trademark under examination in the partial element does not differ in distinctivenessfrom an existing trademark in the relevant market, i.e., the application of the "distance theory".
- Whether the trademark under examination is a partial reproduction of a previous trademark,but is different in context.
c) likelihood of confusion or association between trademarks.
To verify the likelihood of confusion (inability to recognize differences or distinctions) or
association (correspondence) between trademarks, i.e., by examining similarities rather thandifferences between trademarks, and by examining overall impressions rather thanimpressions of details, the following factors are considered- Characteristics of the goods or services (technology used, specificity of the service, market
behavior).
- Characteristics of the target consumers (general consumers x specialized consumers).
- Importance of the trademark in the goods or services.
The importance of the trademark in the goods or services (trademark as the main
distinguishing factor x trademark and technical data as distinguishing factors).
- Other specific factors of particular importance in the case.
Ruling:This case is known in Brazil for setting up modern standards for the analysis of conflicts
between the two trademarks. In the main issue of the case, the court granted the plaintiff's
request and ordered the cancellation of the refusal of the combined trademark "Terra Imóveis"
because TELEFONICA S/A trademark was cancelled due to non-use for the related services.
12

1 Brazil

Therefore, the court ordered the Brazilian Patent and Trademark Office (INPI) to issue a
grant of the trademark.

13

1 Brazil+Case Study 4 (Infringement against registered mark, Sanction and remedies)
Case Name: Natura vs Jequiti Case
Case No. REsp No. 1.527.232-SP (2015/0053558-7)
Parties: Natura vs Jequiti
Judgment Date: December 13, 2017
Original Decision: TJ-SP APL 0191861-57.2009.8.26.0100
Referred Articles: Industrial Property Law No. 9729/96 Article 129, 175, 195, 209;
Code of Civil Procedure (CPC) Article 265,462, 535
Keywords: Confusion, trade dress, unfair competition, similarity
Summary:
Natura (the plaintiff), a Brazilian cosmetics manufacturer, filed a lawsuit against Jequiti (thedefendant), another Brazilian cosmetics manufacturer, for infringement of the defendant's
trademark and trade dress.
The contested markThe cited markREVELAR DE NATURA(WORD MARK)HÓRUS (WORD MARK)

14

1 Brazil

JEQUITI ERVA DOCE +(WORD MARK)NATURA

ERVA

DOCE(WORD MARK)Class: goods

03: cosmetics; lotions for

03: Adhesives (Substances

cosmetic use; make-up-) for cosmetic use;

(products for -); perfumes;

Astringents for cosmetic

feet (antiperspirant soaps

use; Cologne water;for -); non-medicated skinHydrogen peroxide forcleansers and moisturizers;

cosmetic use; Cotton for

antiperspirant [deodorant];

cosmetic use; Mouthwash,

wipes impregnated withother than for medical use;

cosmetic lotions; hair

Antiperspirants [toilet(preparations for -); soaps;

products]; Baths (cosmetic

oils for cosmetic use;

preparations for -); Shaving

conditioner [cosmetic];(products for -); Lipsticks;

toilet water; cosmetics for

Beauty (masks for -);15

1 Brazil

eyelashes; bleaches

Bronzing (preparations for(products -); deodorant-) [cosmetics]; Eyelashes;(soap -); nail polish;

Cosmetics; Cosmetics

astringents for cosmetic(cases of); Cosmetic

use; antiperspirants [toilet

creams; Creams for

products]; beauty (masks

whitening skin; Smoking-); suntan lotions(Products for -)(preparations -)[perfumery]; Toothpaste;[cosmetics]; nails (nail care

Bleaches (Products for -)products -); shampoos;for cosmetic use;

make-up (products for

Deodorants [perfumery];removing -); cosmetic case ;Nail Polish; Sunscreens;bubble baths (preparations

Fats for cosmetic use;for - ) except for medicinal

Incense; Hair lotion;use; cosmetic creams; sun

Tissues impregnated withfilters; pencils for cosmetic

cosmetic lotions; Hairuse; toilet cleansing milks;

lotions; Lotions fortoilet waters; essential oils;

cosmetic use; Make-up

skin (cosmetic products for(Products for -); Make-up

care of -); cosmetic lotions(Products for removing -);(wipes impregnated with -);Essential oils; Perfume andflower perfumes (bases foressence oils; Oils for toilet-); skin lightening (creams

use; Oils for cosmetic use;for -); eyebrow pencils;

Hair Waving (Preparations

after-shave lotions; organic,for -); Skin (Cosmetic

inorganic and synthetic

Products for the care of -);rejuvenating, protective andPerfumery (Products for -);skin-cleansing creams,

Perfumes; Perfumes ofpastes and liquids;

Flowers (Bases for -);depilatories (products for

Permanents in the hair-); eyebrows (cosmetics for(Neutralizing Products for-); cosmetic removers;-); Polishes for cosmetic

cosmetics (cases for); skin-use; Cosmetic preparations

lightening creams;

for slimming; Depilatory

deodorants for personal use;

Products; Dental Prostheses

antiperspirants (soap for -);(Products for polishing -);16

1 Brazil

lipsticks; toiletries

Soaps; Sachets for(products for -); perfumery

perfuming clothes;(products for -)Cosmetic Dyes; Dyes forthe hair; Nails (Products forthe care of -); Impression
nails; Incense sticks;
Shampoos; Acetone (nailpolish remover); Toilet
water; Bath for personal use(Preparations for - ), except
for medicinal use;
Conditioner [cosmetic];
Organic, inorganic andsynthetic rejuvenating,protective and skincleansing cream, paste andliquid; Bath herb; Smoking
and incense herb; Cosmetic
case; Toy cosmetic case(with real cosmetics);
Cosmetic remover;

Party

Defendant: Freedom

Plaintiff: Natura

Cosméticos (Grupo Jequiti)

Cosméticos S/AFact:
The plaintiff requested injunction and damages claiming that the defendant was using a
trademark similar to the plaintiff's trademark on cosmetics and that the overall appearance ofthe products were similar, which could cause confusion among customers (see example below).
In this case, the trademarks targeted by the plaintiff are "Natura Erva Doce" and "Horus,"
while the trademarks used by the defendant are "Jequiti Erva Doce" and "Jequiti Oro. While"Natura" and "Jequiti" are company names, "Erva Doce" is a Portuguese word thatcomprehensively refers to plants such as anise, fennel, and dill.

17

1 Brazil

Issue:The District Court dismissed the Plaintiff’s claim of injunction due to lack of likelihood ofconfusion.
The High Court ordered injunction against the Defendant’s products, however, dismissed
the claim for damage. Both parties appealed to the supreme court.
The plaintiff insisted the damage existed. The defendant argued that the contested marks
were registered trademarks with the Brazilian Patent Office (INPI) and that the granting of
the injunction would result in the invalidation of the trademark registrations because theregistered trademarks could not be used. In summary, the points of disputes are:(1) Whether or not the state courts may decide on the injunction against the use of a
trademark registered in the Brazilian Patent Office.
(2) Whether a state court can determine an injunction against the use of trade dress notregistered at the Brazilian Patent Office for allegations based on unfair competition.
Ruling:
The supreme partially upheld the high court decision, accepting the claims for damages anddeciding the issue of injunctions on the grounds explained below.
The supreme court dismissed the Defendant’s assertion, because Judicial invalidation
proceedings against a registration shall be brought before the Federal Court according to
Article 175 of the Brazilian Industrial Property Law. The Federal Court judge may, during
judicial invalidation proceedings, issue an injunction and preliminary injunction against thevalidity of the trademark registration and the use of the trademark, provided that theappropriate procedural requirements are met. Also, the Supreme Court of Justice of Brazil
ruled that if the trademark that is the subject of the request for injunction is registered at theBrazilian Patent Office, the Federal Court of Justice can have jurisdiction over the
infringement of such trademarks and over the trade dress regarding the use of suchtrademarks.
18

2 Cambodia

2

Cambodia+Basic Information of Legal System
As of November, 2021

No

Item

Details Examples

Details in your country (If any)

Administrative

Department oforganization

Intellectual Property,

for Trademark

Ministry of Commerce

Trademark

Law Concerning Marks,

Law/Act

Trade Names and Acts.
1

2

of Unfair Competitionof 2002
3

Registable

Any visible sign capable

Trademarkof distinguishing thegoods (trademark) or
services (service mark)of an enterprise4

MadridAcceded2015/6/5

RequiredIf you do not have either a permanent

Protocol5

Local Agentaddress or residence in Cambodia, you arerequired to appoint a Legal Mark Attorney(Trademark Agent) in Cambodia.
6

Required

Prescribed application*Application form includes a mark for

documents forform

registration.

filing*A power of attorney duly notarized orauthenticated is required at the time offiling.
*A priority document has to be filed within
3 months from the filing date withpossibility of extension for additional 3months.

7

Language for

Khmer or English

filing
8

Classification

NICE Classification19

2 Cambodia

9Multiple

Yes

Multiple-class trademark application isClassespossible but subject to payment of fee foreach class10

Fee Reduction

N/A

11

Publication ofYes

All applications are published online

N/A

All applications are examined

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

No

Examination
15

Opposition

Yes

Any interested person may file an
opposition within ninety (90) days after theregistration of a mark has been published in
the Official Gazette

16

Trial forYes

Any interested person may request theInvalidation

Ministry of Commerce (Registrar) toinvalidate the registration of a mark17

AppealYes

Any interested party is entitled to request
the Ministry of Commerce (Registrar) forinvalidation of the registration of a markeven the ninety (90) days grace period has
been lapsed and even after the publicationin the Official Gazette and if any party does
not satisfy with the decision of theRegistrar, that party may appeal to the
Appeal Board of the Ministry of Commerceor competent court within three (03)months starting from the date of thedecision. If it is appealed to the Appeal
Board, any interested party is entitled toappeal the decision of the Appeal Board tocompetent court within three (03) months
starting from the date of the decision.

20

2 Cambodia

18

19

Initial Term of

10 years from the filinga Registration

date.

Term for10 years

The request for renewal can be filed within

Renewal

6 months prior to the expiration date. The
grace period after the expiration date is 6
months.

20

Proof of Use

Yes

In order to maintain or renew aregistration, the registered owner of a markshall be required to file Affidavit of Use or
Non-Use of mark within one (01) year
following the fifth anniversary of the date ofregistration of the mark.

21

Cancellation

Yes

Any interested person may request thefor Non-use

Ministry of Commerce to remove a markfrom the Register, in respect of any of thegoods or services in respect of which it isregistered, on the ground that up to one
month prior to filing the request the markhad, after its registration, not been used by
the registered owner or a licensee during acontinuous period of five years, provided
that a mark shall not be removed if it isshown that special circumstances prevented
the use of the mark and that there was nointention not to use or to abandon the samein respect of those goods or services.

22

E-filing

Yes

URL:
https://efiling.cambodiaip.gov.kh/efiling/21

2 Cambodia+Case Study (Registrability issue (Relative Ground))Case Name: trademark cancellation due to relative ground
Case No. 798
Parties: Company X vs. Company Y
Judgment Date: 24 July 2014
Original Decision: N/A
Referred Articles: Art. 10 (c), 14 (f) of Trademark Law
Keywords: Cancellation, confusingly similar, well-known
Summary:
Company X filed a complaint to the Court of First Instance against the Department ofIntellectual Property claiming that a mark which had already been registered could not becancelled.
Fact:
A trademark “x” was registered on 15 November 2011 in Cambodia by Company X(Plaintiff) in spite of the existence of a prior well-known trademark “y” owned by company
Y. Both trademark rights designate energy drinks. After the opposition was filed by Y,
Department of Intellectual Property Rights (D/IPR) of the Ministry of Commerce (MOC)
decided to cancel the registration of “x.” Dissatisfied with this decision, Plaintiff filed a civil
complaint against the decision to the court of First instance.
Issue:
1) Legality of procedure: After the registration, D/IPR cannot revoke the registration.
2) Likelihood of confusion: Trademark “x” should be keep registered, because Trademark“x” does not cause likelihood of confusion with Trademark “y.”Ruling:1) Legality of procedurePursuant to article 10 “c” of the Trademark Law, any interested person may notify theRegistrar of the opposition to a trademark registration within 90 days after its publication in
the Official Gazette. Opposition shall comply with prescribed formality and base on the
ground that a registered mark does not fulfil any requirements under articles 2, 4 and 5 andof other regulations pertaining thereto. As the opposition complaint from Company Y wasfiled within one month following publication of registration of the trademark X, the D/IPR
22

2 Cambodia(MOC) is competent to decide whether to cancel or maintain the registration of the
trademark “x.” The claim of Plaintiff that a registered mark shall not be subject tocancellation on the ground of article 13 is not correct because such claim is contrary toarticle 10 “c” of the Trademark Law.
2) similarity issue
The well-known mark “y” was registered prior to the mark “x.”Furthermore, Plaintiff has used the trademark X in a form different from its registered form
by adding decorative element to the registered logo on the product packaging. Such form of
use in commerce cause public to confuse the source with the well-known mark “y.”Article 24.3 of the Sub-decree No. 64 implementing the Trademark Law mentioned asa mark shall be removed from the Register when the registered mark owner or person
receiving the right has used that mark differently from the original form which has beenregistered and infringed the rights of other person’s registered mark.”
For these reasons, the D/IPR’s decision to remove registration of the trademark X from theRegister is conforming to article 14 “f” of the Trademark Law. The claims of Plaintiff and its
evidence do not have any reasonable legal ground for the Court to cancel the D/IPR’s
decision
Ruling:
1. Reject claims of the plaintiff, Company X.
2. The Court fee shall be borne by the plaintiff.

23

3 China

3

China+Basic Information of Legal System
As of August, 2021

No

Item

Details Examples

Details in your country (If any)

Administrative

National Intellectualorganization

Property Administration,

for Trademark

PRC (CNIPA)

Trademark

PRC Trademark Law

Law/Act(2019 Amendment)

Registable

Characters, devices,

Trademarkletters, figures, three-

.
1

2

3

dimensional symbols,
color combination,
sounds and any
combination of the above
elements.
4

MadridAcceded

1995/12/1

Required

If an enterprise/individual do not have

Protocol5

Local Agentbusiness office/residence in mainland
China, they are required to entrust a
local agent.
6

Required

Prescribed application* Application form includes a mark for

documents forform

registration

filing* A scanned copy of Power of Attorney* A photocopy of Certificate ofIncorporation of the applicant*The original priority document has tobe filed within 3 months from the filing
date.

7

Language for

Chinesefiling
8

Classification

NICE Classification

9

MultipleYes

24

3 China

Classes10

Fee Reduction

N/A

11

Publication ofYes

All applications are published.

N/A

All applications are examined.

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

N/A

Examination
15

OppositionYes

Any person/party can file an opposition
within three months from the date of
publication of the registration based on
absolute grounds. Interested
person/party can file an opposition
within three months from the date of
publication of the registration based onrelative grounds

16

Trial forYes

Any person/party can file an

Invalidation

invalidation within five years from thedate of registration based on absolute
grounds.

Interested person/party canfile an invalidation within five years
from the date of registration based onrelative grounds.
17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

Term for10 years

19

The request for renewal can be filed

Renewalwithin 1 year prior to the expiration
date. The grace period after the
expiration date is 6 months.

20

Proof of Use

N/A

21

CancellationYes

For any three consecutives years afterfor Non-use

the date of registration.

25

3 China

22

E-filing

Yes

http://wssq.sbj.cnipa.gov.cn:9080/tmsv
e/26(Support page; Chinese only)3 China+Case Study 1 (Registrability issue (Absolute Ground))Case Name: Great Wall Forest Festival case
Case No. (2016) Jing Xing Zhong 5599
Parties: Beijing Tango Wood Tourism Development Co., Ltd.
vs former Trademark Review and Adjudication Board (TRAB)
Judgment Date: December 27, 2016
Original Decision: TRAB (2016) No. 23200
Referred Articles: PRC Trademark Law Article 10-1(7)Keywords: fraudulence; easy to cause misidentification
Summary:
The appellee’s trademark application for “Great Wall Forest Festival” in respect of the goods“paper; cardboard articles; printed matter; posters; periodicals; printed publications;lithographic works of art; picture poster; photographs [printed]; office requisites, except
furniture” in class 16 was refused for registration by the CTMO based on the ground thatthe mark per se is of fraudulence, and is easy to cause misidentification among the public as
to such characteristics as the quality, etc. of the goods and the place of origin. The appellee
filed a review request with the TRAB and the TRAB still maintained the refusal.
Fact:
Dissatisfied with the refusal, the appellee filed an appeal with the Beijing Intellectual
Property Court. After hearing, the Beijing Intellectual Property Court held that the words"Great Wall" and "Forest" in the applied-for trademark did not point to specific places, andthe "Great Wall Forest Festival" was approved by the Cultural Committee of Yanqing
County, Beijing, and held in the Tango Wood Music Valley for commercial culturalactivities. Since 2010, it had held several shows a year. As one of the organizers of the "Great
Wall Forest Festival", the appellee applied for the trademark to be used on the designatedgoods, which was not fraudulent. Thus, Beijing Intellectual Property Court decided to
revoke the TRAB’s decision and ordered the TRAB to make the decision de novo. The
TRAB appealed to Beijing High People’s Court.
Issues:Whether the application for “Great Wall Forest Festival” falls into the circumstances that thetrademark shall not be used as a trademark as stipulated in Article 10-1(7) of the PRC
Trademark Law?
27

3 China

Ruling:
The Beijing High People’s Court held that in accordance with the relevant public’s general
cognitive level and ability, the meaning of the "Great Wall Forest Festival" itself did notconflict with any characteristics such as the function, purpose, etc. of the designated goods.
Although the relevant public might think the designated goods were related to "Great Wall
Forest Festival", as the appellee was one of the organizers of the "Great Wall Forest Festival"
held in Yanqing District, Beijing, the registration and use of the applied-for trademark on
the designated goods was not deceptive and will not cause the relevant public to have awrong understanding of the characteristics of the goods.
Therefore, Beijing High People's Court upheld the judgment of Beijing Intellectual
Property Court.

28

3 China+Case Study 2 (Infringement against registered mark)Case Name: FALEOR case
Case No. (2017) Hu 73 Min Zhong No.39
Parties: Valeo vs Ningbo Faleor
Judgment Date: April 26, 2017
Original Decision: (2015) Pu Min San (Zhi) Chu Zi No.129
Referred Articles: Articles 57, 58 and 63 of the PRC Trademark Law;
Articles 2 and 5 of the PRC Anti-unfair Competition Law;
Articles 2 and 15 of the PRC Tort Liability Law
Keywords: Registered Trademark; Trademark Infringement; Confusingly Similar;
Trade Name; Unfair Competition
Summary:
The appellee Valeo is the true owner of the trademark and trade name “法雷奥” and“Valeo”, which have obtained high reputation in the industry of automobile parts. The
appellant, Ningbo Faleor registered Valeo’s prior trademark “法雷奥” as its trade name,applied for registration of the trademark “FALEOR” in class 7, registered the domain namefaleor.com, and promoted the generator bearing “法雷奥” in the forms of watermark andcharacters on the website www.faleor.com, and also actually sold the infringing products.
Fact:
The acts of Ningbo Faleor were judged as trademark infringement and unfair competitionby the Court of first instance, and the damages of RMB500,000 were awarded. Dissatisfied
with the judgement of first instance, Ningbo Faleor appealed to Shanghai Intellectual
Property Court.
The cited markThe contested marks, etc.

“法雷奥” and “Valeo”

Domain name: faleor.com
trade name: 法雷奥Trademark: FALEOR

The appellee Valeo

The appellant: Ningbo Faleor

Issues:Whether “FALEOR” constitute a similar mark with “Valeo”, thus the trademark
infringement could be supported? Whether the use of “法雷奥” and “FALEOR” as the trade29

3 China

name by Ningbo Faleor constituted unfair competition?
Ruling:After the court hearing, Shanghai Intellectual Property Court held that, although“FALEOR” was quite different from “Valeo” in respect of shape, appellation and source, for
the Chinese public, neither of the two marks has any substantial meaning, and the twomarks had little difference in the composing letters, moreover the appellation of the said twomarks were quite similar and would easily mislead the relevant public. Therefore, ShanghaiIntellectual Property Court upheld the finding of the first instance judgment in regard to
trademark infringement. Shanghai Intellectual Property Court also held that Valeo’s
trademark “法雷奥” was approved for registration in the year of 1996, much earlier than thedate of establishment of Ningbo Faleor; among the years from 1994 to 2009, Valeoestablished many companies by using “法雷奥” as the trade name in China; also, Valeo
promoted its products via website and brochures, which would definitely make theconsumers to well know “法雷奥”, and it should be recognized that Valeo had obtained
certain influence before the year of 2010. Therefore, Shanghai Intellectual Property Court
sustained the finding that the use of “法雷奥” and “FALEOR” as the trade name by Ningbo
Faleor constituted unfair competition. In addition, Shanghai Intellectual Property Court
held that in the circumstance that the profits gained by the infringer from the infringement
and the actual loss suffered by the right holder as a result of the infringement was
unavailable, it was correct for the first instance court to determine the amount of thedamages of RMB500,000 based on the reputation and use condition of the involved
trademarks, the subjective fault of the infringer, the actual operation situation of the parties,
the nature of the infringing acts of the infringer, etc..
Shanghai Intellectual Property Court rejected the appeal filed by Ningbo Faleor andsustained the finding of the first instance judgement in regard to the trademark
infringement and unfair competition as well as the damages of RMB500,000.

30

4 Colombia

4

Colombia+Basic Information of Legal System
As of September, 2021

No.

Item

Details Examples

1

Administrative

Superintendence oforganization for

Industry and Commerce

Trademark(SIC)

TrademarkDecision 486 of 2000 of

Law/Act

the Andean Community

Registable

Word, word & design,

Trademarkdesigns or figures, sounds,

2

3

Details in your country (If any)smells, colors within an
outline, three-dimensional
shapes, motion or
movement, positions andgestures.
4

MadridAcceded2012/8/29

Not required, but

It is not mandatory to appoint a local

recommended

agent to file a trademark application,

Protocol5

Local Agentbut if a third party wishes to file an
opposition, an applicant wishes to
respond to an opposition, or opposers orapplicant desire to file an appeal, they
are required to act by means of a local
attorney in Colombia.
6

Required

Prescribed application*Application form that includes all the

documents forform and signed power ofapplicant information and thefilingattorneytrademark specifications.
*A simply signed power of attorney (nolegalization or notarization is required).
A scanned copy will
suffice.

7

Language for

Spanish.

filing31

4 Colombia

8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee ReductionYes

For online applications, multiple classes
applications, and specific groups of
population (such as artisans, post-civil
war programs beneficiaries,
entrepreneurs, and government
entities).

11

12

Publication ofYes

All applications that overcome theUnexamined

formal examination are published in the

Applications

Official Gazette.

Request for

N/A

All trademark applications are examined

Examination
13

Substantive

Yes

Examination
14

Accelerated

Yes

If meeting the requirements, accelerated

Examination

examination is applicable free of charge.
Nevertheless, applicant must take into
consideration that there is thepossibility CTO decides to re-examine
the application if, upon revision of thefile, the CTO finds there are reasonsthat may need to be reconsidered.

15

OppositionYes

Any person may file an opposition
within 30 business days from the date of
publication of the application.

16

Trial forYes

Any interested party may request trial.

Invalidation
17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

Term for10 years

19

The request for renewal can be filed

Renewalwithin 6 months prior to the expiration
date. The grace period after the
expiration date is 6 months.

32

4 Colombia

20

Proof of Use

N/A

21

Cancellation forYes

For 3 years after the date of registration

Non-useand any consecutive three-year period
thereafter.

22

E-filing

Yes

URL:
https://sipi.sic.gov.co/sipi/Extra/Defau
lt.aspx?sid=637540944697062458(Support page; Spanish and English
only)

33

4 Colombia+Case Study1 (Registrability issue (Relative Ground))Case Name: “TAMESIS LYCHEE” (word & device) vs. Pink color registered trademark
Case No. 15231495
Parties: Zentido Investment Group S.A.S. vs Postobon S.A.
Judgment Date: 2016/11/30
Original Decision: Resolution N° 82747
Referred Articles: Decision 486 of 2000 article 136 a) and h)
Keywords: similarity with color trademark, defense of color trademarks,
dilution of well-known trademarks.
Summary:
As color trademarks’ distinctiveness falls on the color itself, any trademark application thathave as one of its main elements a color like a color trademark protected within a similar
shape, is going to affect the granted color trademark’s rights. The Colombia Trademark
Office (CTO) stated that word & device trademarks can be confusingly similar to a granted
color trademark even though is not exactly the same color as the one protected by the
granted color trademark.
Fact:
The applicant filed the word & device trademark application for “TAMESIS LYCHEE” inClass 32 claiming protection of the colors, on September 30, 2015. POSTOBON S.A. filed
an opposition against this application on December 23, 2015, based on likelihood ofconfusion and well-known condition of their marks “MANZANA POSTOBON” and color
marks (Pantone 183C) registered. The CTO declared well-founded the opposition filed anddecided that the filed trademark is similar to the previously registered color marks in Class32, which are also well-known trademarks in Colombia. The applicant did not file an appeal
against this decision of the CTO.

34

4 Colombia

Issues:
Does the registered color trademark support the rejection of a pink color trademark
application claiming a different PANTONE based on the similarity with a registered color
trademark and the likelihood of dilution of said well-known color trademark?
The CTO stated the color pink is shared (although there is a slightly varying in the shades ofcolor in the vindication of each trademark as shown by the different PANTONE that each
one claimed) by both the registered trademark and the trademark in the filed application.
Said similarity may be appreciated both in the pink colored content of the bottle and on thelabel that are subject to the trademark application. Reason why, the reproduction of the pinkcolor in the content of the bottle generates a high likelihood of confusion, of great relevanceand impact even if taking into consideration all the dissimilar elements. Therefore, since the
PANTONE 183 C pink color is registered as a trademark, the CTO considered that theapplicant's trademark would affect the protection of the already granted color trademark.
The CTO also considered that the registration of the TAMESIS LYCHEE trademark with aclaim to the colors PANTONE RHODAMINE RED C and 231C, would likely cause thedilution of the distinctive feature of the well-known pink registered trademark in different
PANTONE because its distinctiveness is precisely the pink color, which seen in any tonality
in other signs it will directly affect its strength, since the consumer recognizes it for thatspecific characteristic.
Ruling:The CTO declared well-founded the opposition filed and denied the registration of the
trademark “TAMESIS LYCHEE” (word & device). The applicant did not file an appeal
against this decision.

35

4 Colombia+Case Study2 (Registrability issue (Absolute Ground))Case Name: Olfatory trademark
Case No. 10039538
Parties: Empresas Públicas de Medellín S.A. ESP vs Colombia Trademark Office (CTO)
Judgment Date: 2016/12/29
Original Decision: Resolution N° 90525
Referred Articles: Decision 486 of 2000 article 135 b)
Keywords: olfactory marks; lack of distinctiveness; graphic representation
Summary:
Olfactory trademarks may be registered according to article 134 (c) of Decision 486 of 2000
(common industrial property law shared by all the countries of the Andean Community:
Bolivia, Colombia, Ecuador, and Peru). Applicant is required to provide a graphic
representation of this type of trademarks in order to obtain registration (article 134). Thisdecision is the current precedent applicable to all olfactory trademark applications filed
before the Colombia Trademark Office (CTO).
Fact:
The applicant filed an olfactory mark to identify services in Class 35 on April 7, 2010, using
the following description: “odor composed of (a) a predominantly citric background,integrated with (b) an outstanding touch of jasmine aroma, and (c) in a complementaryway, light notes consisting of mixtures of: jasmine with lemon, eucalyptus with mint andlemongrass, evokes a country atmosphere related to places near natural water sources;
likewise, it provides a reminder of elements of a pure and living nature, generating feelingsof vitality, comfort, tranquility and freshness”. After publication of the application, no
oppositions were filed by third parties. The CTO decided to deny the registration of themark based on lack of distinctiveness because it not complies with the graphic
representation.
Issues:What are the criteria for applicants of an olfactory trademark application in order to comply
with the graphic representation and obtain its registration?
For olfactory marks, graphic representation must comply with the following criteria: a) must
be precise to define the mark and determine the scope of protection, b) must be clear to theauthorities and the public, c) must be complete, easily accessible, and intelligible in the36

4 Colombia

registry, d) must be lasting through de registration period, and e) must be objective to avoid
any doubts on the identification of the sign.
In its decision, the CTO states that even though the filed application provides with a graphic
representation of the olfactory trademark, said description is not objective, clear, intelligible,
and precise enough to allow the identification and distinctiveness of the trademark that is
intended to be registered and the scope of the protection for other competitors andconsumers to easily identify the limit of the right granted. Hence, the trademark application
does not have the distinctive capacity to identify a specific service/product or associate itwith a specific company origin and stablish clearly the scope of protection.
The fact that said description generates ambiguities and uncertainties regarding thefragrance to be registered and that it is not possible to unequivocally determine what is thecompound smell that is constituted from the fusion of citrus aromas, with jasmine, lemon,
eucalyptus, mint, and lemongrass the olfactory trademark application is evidence that it
lacks objectivity.
Ruling:The CTO denied the registration of the olfactory trademark arguing lack of distinctivenessdue to improper graphic representation. No applicant has challenged this decision before
the judiciary. Thus, it is nowadays the “rule of the land” in Colombia regarding olfactory
trademark applications.

375 Egypt5

Egypt+Basic Information of Legal System
As of October, 2021

No.

Item

Details Examples

Details in your country (If any)

1

Administrative

Trademarks and Industrialorganization for

Designs Office, Internal

Trademark

Trade Development
Authority, Ministry ofTrade and Industry(ITDA)

2

TrademarkLaw No. 82/2002 on the

Law/Act

Protection of Intellectual
Property Rights

3

Registablenames represented in a

Trademarkdistinctive manner,signatures, words, letters,
numerals, designs,
symbols, signposts,
stamps, seals, drawings,
engravings, a combinationof distinctly formed
colours and any othercombination of theseelements

4

MadridAcceded2009/9/3

Required

A power of attorney notarized fromProtocol5

Local Agent

notary public
6

Required

1. Application Form,

documents for2. 4 copies of the design,

filing

3. Extract from the commercial register,
memorandum of association or legal
system.
4. A copy of the design or model thatwas deposited in a foreign country and38

5 Egyptcertified by the industrial property
office therein
7

Language for

Arabicfiling
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

Not for Trademark, but available forPatent11

Publication ofNo

Unexamined
Applications
12

Request for

N/A

All applications are examined.

Yes

Within 10 to 12 months the Trademark

Examination
13

Substantive
Examination

14

Accelerated

Registration application
No

Examination
15

OppositionYes

60 days16

Trial for

Yes

Interested person/party may request a

Invalidation

trial.

17

AppealYes

18

Initial Term of

10 years from the Filinga Registration

date.

Term for10 years

19

within 30 days from registrar’s decision

The request of renewal can be filed

Renewalduring the last year of the protection
period20

Proof of Use

N/A

21

Cancellation forYes

For 5 years of non-consecutive use

Non-use22

E-filing

No39

5 Egypt+Case Study (Bad faith application, Sanction and remedies)
Case Name: Appeal No. 11414 of Judicial Year 85
Case No.11414/85
Parties: Parties Name remain confidential in the Egyptian courts publications
Judgment Date: 13/02/2018
Original Decision: 11/07/2017
Referred Articles: Law on the protection of Intellectual Property No 82 of 2002 Article 63,
Commercial Law Article 66/1.
Keywords: Similarity in appearance and soundSummary:
The purpose of a trademark is product identification. For trademarks to be considered assuch, they must have a unique design. Trademark ownership Is based on the precedence ofuse. Registration is nothing more than a presumption of ownership which can be denied in
the case of precedence of use.
Fact:
The plaintiff is a foreign company operating in Egypt through a distributor with registeredtrademarks in classes 5, 6, 16 and 21 in many Arab countries but not in Egypt. Whenwanting to register its trademark in class 16 in Egypt, the request was refused by theregistration office on the claim that the defendant who is the distributor of the plaintiff in
Egypt has already two similar registered trademarks in the same class.
The plaintiff brought this case to the Court claiming similarity between his trademarks andasking for cancellation of the defendant’s trademarks.
Issues:Similarity judgement, bad faith
Ruling:By examining the two marks and comparing them to each other, the court has decided thatboth marks use the same drawings, which is illustrated in the shape of a wing above theletter (C) in both trademarks. In addition, the combination of the letters in both marks
cause similarity in the sound of both trademarks which will lead to the confusion of the
public. Consumers will therefore believe that the products of the plaintiff belong to thedefendant, especially since both marks are in the same class, class 16.
40

5 EgyptThis contradicts the objectives of the legislator behind trademark protection which is statedin his national legislation and international treaties; an objective which the Administrationof Trademarks has failed to retain by refusing to register the plaintiff’s trademark.
As the plaintiff has proven in a previous case that he is the owner of the unregisteredtrademark and has previously used it in the Arab Republic of Egypt through his distributor,
this court had decided to cancel the previously registered trademarks for the defendant. The
plaintiff is also granted a 100.000 $ compensation.
The court accepted the plaintiff’s claim.

41

6 India

6

India+Basic Information of Legal System
As of January, 2022

No.

Item

Details Examples (Your

Details in your country (If any)Country)12Administrative

Controller General oforganization for

Patents, Designs & Trade

TrademarkMarks

Trademark

Trade Marks Act, 1999

Law/Act
3

Registabledevice, brand, heading,Trademarklabel, ticket, name,signature, word, letter,numeral, shape of goods,
packaging or combinationof colours or any
combination thereof

4

MadridAcceded2013/7/8

Required and IndianIf you do not have either a permanent

Applicant can file directly

address or residence in India, you are

Protocol5

Local Agentrequired to appoint a representative, a
trademark attorney in India.
6

Required

Prescribed application

Application form includes a mark for

documents forform

which registration,filingA power of attorney is not required at
the time of filing.
A priority document has to be filed.

7

Language forEnglishLaw and Rules are also in Hindi but

filingForms and online E-filing is in English
language only. No translation required if
trademark is in Hindi language.

8

Classification

NICE Classification

9

Multiple

YesClasses42

6 India10

Fee ReductionYes.

For Individual and Small Enterprise

11

Publication ofNo.

Only accepted applicationNo.

Trademark office shall examine all

Unexamined
Applications
12

Request for
Examination

13

Substantive

application
Yes.

Examination
14

AcceleratedYes

On payment of fees

Yes

Any person can file an opposition within

Examination
15

Opposition

four months from the date of
publication of the registration.
16

Trial for

Yes

Interested person/party may request a

Invalidation

trial.

17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date. (Date ofApplication)

19

Term for10 years

The request for renewal can be filed

Renewalwithin 1 year prior to the expiration
date. The grace period after the
expiration date is 12 months withpayment of surcharge.

20

Proof of Use

No (Yes in case of user isclaimed)21

Cancellation forYes

5 years after the date of registrationYes

https://ipindiaonline.gov.in/trademarke

Non-use22

E-filing

filing/user/frmLoginNew.aspx

43

6 India+Case Study 1 (Infringement against registered mark)Case Name: Iruttukadai Halwa case
Case No.: Civil Appeal No. 2758 of 2015
Parties: S. Syed Mohideen (Appellant)
VersusP. Sulochana Bai (Respondent)
Judgment Date: 17th March 2015
Court: Supreme Court of India
Referred Articles: Trademark Act. Sections Section 27, 28, 29, 34
Keywords: Prior user, Reputation, Well-known,
Action against Registered Trademark owner, Common Law Rights
Summary:
The Appellant (Original Defendant) was sued by the Respondent (Original Plaintiff) in a
civil suit for declaration and permanent injunction for trademark Iruttukadai Halwa inDistrict Court of Madras State. The suit was decreed against the appellant and the same
judgement of Trial Court was confirmed by the High Court. The appellant has filed theappeal and challenged the order of the High Court in the Supreme Court of India.
Fact:(A) Case:
I. The appeal before the Supreme Court was filed against the Judgement of the High Courtof Madras. The High Court has dismissed the appeal and affirmed the decree of the Trial
Court. The respondent got a Permanent Injunction against the appellant on the groundthat the respondent is not only a prior user of Trademark but also has prior registrationof the trademark “Iruttukadai Halwa”. The Court had accepted the Common Law Right,
Goodwill in the market of the respondent and Passing Off Action against the appellant.
II. The Supreme Court had also accepted the reasonings and findings of the High Court aswell as Trial Court and held that Prior User or Passing Off Right has a better right thanthe Statutory Rights. Further, passing off is a broader remedy based upon Common Law
principles that offer protection to the business, goodwill which is attached to registeredand unregistered trademark.
III. The Supreme Court also held that the prior user has a superior right over the registeredtrademark owner and passing off action is available against the registered trademark.

44

6 India(B) The Appellant, The Respondent and Trademark “iruttukadai halwa”:
I. The respondent is registered trademark owner of iruttukadai halwa and it was registeredin the year 2007. Interestingly, the business of a respondent was started in the year 1900
in East Car Street, Tirunelveli Town in Tamil Nādu state. The respondent also claimed
that from the year 1900 till now, `Iruttukadai Halwa Shop' would open only at 5.00 p.m.
or 5.30 p.m., and would remain open till 10.30 p.m., or 11.00 p.m., each day and only one
item is being sold viz., halwa and because of maintaining such good quality, theconsumers used to call this shop as `Iruttukadai Halwa Shop'. In the long run, the word
`Iruttukadai' became the name of the shop. Therefore, the respondent has acquired
reputation and goodwill attached to trademark iruttukadai halwa since the year 1900 in
addition to the registration of the trademark.
II. The respondent alleged that the appellant, because of jealousy for the goodwill enjoyedby the respondent, had started the sale of Halwa and thereafter, opened one shop
`Tirunelveli Iruttukadai Halwa' to deceive the public that the Respondent has opened
another shop. The appellant had also issued the advertisement in the newspaper andtherefore, the public had started the inquiring.
III. The respondent had issued a notice to the appellant and called upon not to use thePlaintiffs trademark for selling their sweet and savouries since the Plaintiff has also
registered under the Trade Marks Act in the name of `Irruttukadai Halwa'. But theappellant had refused to accede to the demand of the respondent.
IV. The respondent had filed a suit whereas, the appellant had contested the said suit anddenied the allegation of the respondent. The appellant also claimed that he is having
registered trademark as ‘Tirunelveli Iruttukadai Halwa’ and therefore, the respondent
had no right to file the suit. The appellant also denied the allegation of deception,
confusion and cheating as alleged in the suit.
V. The Trial Court has framed in total 11 issues and the trial of the case was proceeded byexamination of witnesses and documents. After the trial, the trial court reasoned that“the Respondent's family started the business in the year 1900 which fact was proved byplacing various documents. On this basis, the trial court recorded the finding that the
Respondent is the prior user of the word `Iruttukadai Halwa' and, therefore, she isentitled to the decree for declaration and injunction.”
VI. The appellant had filed the appeal against the decree of the trial court. Whereas theHigh Court has also affirmed the findings of the Trial Court, moreover, the High Court
had noted the popularity of the respondent’s name and also observed that respondent is
the Respondent is not only a prior user of the trademark, she has even prior registrationof a trademark.
45

6 India

Issues:1. Whether the suit for passing off is maintainable against the registered proprietor of
trademark?
2. Whether the prior user has superior right against statutory rights?
3. Whether registered proprietor of trademark can file a suit against another registeredowner for protection of reputation and goodwill?
Ruling and Finding of the Court:(A) The appeal of the appellant (Ori. Def.) was dismissed by the court with a cost of Rs.
50,000 /-.
(B) The court observed that “Firstly, the answer to this proposition can be seen by carefully
looking at the provisions of Trade Marks Act, 1999 (The Act). Collective reading of theprovisions especially Section 27, 28, 29 and 34 of the Trade Marks Act, 1999 would
show that the rights conferred by registration are subject to the rights of the prior userof the trademark.” And also held that, “…...and thus the rights emanating from thecommon law shall remain undisturbed by the enactment of Section 28(3) which clearlystates that the rights of one registered proprietor shall not be enforced against anotherperson.”(C) The court also observed that “Thus, the scheme of the Act is such where rights of prioruser are recognized superior than that of the registration and even the registeredproprietor cannot disturb interfere with the rights of prior user. The overall effect ofcollective reading of the provisions of the Act is that the action for passing off which ispremised on the rights of prior user generating a goodwill shall be unaffected by any
registration provided under the Act.”(D)The court had discussed the principle of passing off and ruled that passing off is a rightfor protection of goodwill in the business against the misrepresentation and considered
the classical trinity laid down in, “Jif Lemon” case.
(E) The court has held that common law jurisdiction i.e., passing off rights is a broader
remedy in comparison to the infringement of trademark as the doctrine of passing off isoperate on general principle for the protection of business. Moreover, also ruled that thepassing off action has to be considered independent of the infringement of the
trademark.
(F) Lastly, the court had observed that prior user of a trademark can file a suit against theregistered trademark owner and held that, “Thus, we hold that registration is merely arecognition of the rights pre-existing in common law and in case of conflict between the46

6 India

two registered proprietors, the evaluation of the better rights in common law is essential
as the common law rights would enable the court to determine whose rights between thetwo registered proprietors are better and superior in common law which have beenrecognized in the form of the registration by the Act.”(G) After considering the provisions of the act, principles laid down in various judgements ofHigh Court and Supreme Court and comparing the said law with the facts of the case,the court had affirmed to concurrent finding i.e., Trial Court and High Court anddismissed the appeal and confirmed the decree against the appellant.

47

6 India+Case Study 2 (Bad faith application)
Case Name: Lovesac Company case
Case No.: MP. NO. 185/2020 IN ORA/143/2020/TM/DEL [IPAB]
Parties: Lovesac Company (Petitioner)
VersusAvneet Kaur & Another (The Respondents)
Judgment Date: 31st December 2020
Court: INTELLECTUAL PROPERTY APPELLATE BOARD (3 Members)
Referred Articles: Trademark Act. Sections Section 11(10)(ii), 47, 57, 125
Keywords: Bad Faith, Well-known, Foreign Registration, Trans-border Reputation,
Cancellation of Registered Trademark
Summary:
The petitioner is USA based company and had created a trademark LOVESAC for framelessfurniture products since the year 1995. The petitioner was also having trademark
registration in more than 15 countries and some of the trademark applications werepending. The petitioner filed the Rectification Application for cancelling the registration
granted to the Respondent no.1 for the device trademark LOVESAC.

Fact:(A) Case: The Rectification Application was filed by the petitioner under Section 47, 57 and125 of Trademark Act, 1999 for Removal of the "" under Reg. TM No 3910894

in class 20 registered in name of The Respondent No. 1. The petitioner had also filed
Miscellaneous Petition for Stay of operation of Registration of The Respondent No. 1
for the above-impugned mark pending disposal for the main Rectification Application.
The Petitioner, The Respondent and Trademark LOVESAC:
I. The petitioner had started the business of frameless furniture in the USA from the year
1995 with a trademark LOVESAC in the basement of the home. Thereafter, thepetitioner had developed its business and created a company “The Lovesac Corporation”
48

6 Indiain the year 2002 and also got the trademark registration in the USA. By the passage oftime, it is now known as The Lovesac Company.
II. The petitioner’s business was grown substantially and the sale was increased in manyfolds. The petitioner had also advertised and promoted the brand LOVESAC andthereby, LOVESAC became an essential part of the business of the petitioner. The
petitioner is one of the fastest-growing American furniture manufacturers and retailers
specializing in frameless furniture sold under the Brand LOVESAC and for the past 20
years, the petitioner is selling various sizes and types of frameless furniture. Because of
the internet, its website www.lovesac.com the mark "LOVESAC" is also visited and usedworldwide, including in India in addition to a variety of social media platforms including
YouTube, Instagram, Twitter and Facebook.
III. The petitioner has got its trademark "LOVESAC" registered in Australia, Canada,
China, Costa Rica, EU, Hong Kong, Mexico, New Zealand, Norway, Republic of Korea,
Saudi Arabia, Singapore, Taiwan, United Kingdom, UAE, USA and Vietnam and isawaiting Registration in Argentina, Brazil, Cambodia, Chile, Iceland, Indonesia, Israel,
Japan, Kuwait, Morocco, Philippines, Russia, South Africa, Switzerland, Thailand,
Turkey and Ukraine. The petitioner also had Indian Trademark Registration obtained
from the Madrid system in the year 2018 based upon USA trademark registration of theyear 2002.
IV. The petitioner had alleged that the Respondent no.1 had dishonestly with malafide
intention adopted the deceptively similar and phonetically identical mark. The petitioner
had also alleged that the Respondent No. 1 blatantly used the trademark "LOVESAC" inits mark and fraudulently affixed the added feature/device thereupon to camouflage its
illegitimate acts of imitation. The Respondent no.1 is neither honest adopter nor
originator of the mark.

Petitioner’s Trademark

The Respondent No.1’s Trademark

LOVESAC

V. The Respondent no.1 in its reply stated that the application for registration of trademark
label/device was filed before the petitioner’s trademark application in India and no
objection/opposition was filed till the grant of registration. The Respondent no.1 had
49

6 Indiaalso stated that the petitioner had not placed on record the details of their consumers ofbean bags in India in other words, the petitioner has no business or sale in India. The
Respondent also stated about no similarity between the marks as the registeredtrademark is a device mark compared to the wordmark of the petitioner moreover, Love
and Sac are common words and are being used rampantly and that is why over and above
worm was used as a symbol.
Issues:1. Whether the trademark application filed by the Respondent no.1 was in Bad Faith?
2. Whether the petitioner has proved the trans-border reputation?
3. “Priority in Use” is better than “Priority in Registration”
Ruling and Finding of the Board/Court:(A) Trademark application in bad faith if the filing of a trademark with the sole purpose ofhindering a foreign competitor on the market.
(B) Observed regarding the bad faith that “……thus we found that the Application for the
impugned mark by the Respondent No. 1 has been made in Bad faith and therefore
cannot be allowed to be remaining on the Register. Section 11(10)(ii) of the Trademark
Act, 1999 suggests to take into account of such bad faith if any in filing Trademark
Applications. The acts of the Respondent No. 1 constituted bad faith trademark
registrations and prejudiced to the Applicant's competitive strength and goodwill andcan be termed as unfair competition.”(C) Observed about the Madrid Route Trademark Application and priority that “TheApplication of the Applicant though filed after the Application of the Respondent No. 1
but takes the Priority and hence the Application of the Applicant that has been filed
through Madrid Route vide IRDI No. 4234845 on 11/09/2018 claiming priority of
convention dated 14/06/2018; hence the Applicant's Application is prior in date and the
Respondent No. 1 Application though filed on 8th August 2018 is subsequent
application.”(D)The Board had also accepted the principle of trans-border reputation and acceptability
in India.
(E) The Board had also rejected the submission of the Respondent about the descriptive
word and no similarity in the marks.
(F) The Board opined that the Trademark application and registration granted in favour of
the Respondent no.1 is in bad faith and therefore, the operation of registration in nameof the Respondent no.1 shall remain stayed.
50

7 Indonesia

7

Indonesia+Basic Information of Legal System
as of January, 2022

No.

Item

Details Examples

1

Administrative

Directorate General oforganization forIntellectual Property

Trademark(DGIP)

TrademarkLaw No. 20 of 2016

Law/Act

regarding Trademark and2

Details in your country (If any)

Geographical Indication(Minor amendment in
Law No.11 of 2020
regarding Job Creation
Law)
3

Registable

any sign capable of being

Trademarkrepresented graphically inthe form of drawings,
logos, names, words,
letters, numerals, colors
arrangement, in 2 (two)and/or 3 (three)dimensional shape,sounds, holograms, or
combination of 2 (two) or
more of those elements

4

Madridacceded2018/1/2

RequiredForeigners and foreign companies

Protocol5

Local Agentshould appoint a representative, anIntellectual Property Attorney. Only
domestic applicant that can file a
trademark application directly to the
DGIP (agent is not necessary).

51

7 Indonesia

6

Requiredprescribed application

1. Application form;

documents forform

2. Mark specimen

filing

3. Power of Attorney;
4. Declaration Letter;
5. Priority Document and its Indonesianlanguage translation (if any);

7

Language forIndonesian

filing
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

11

Publication ofYes

All trademark applications are publishedUnexamined

and will be published for 2 months.

Applications
12

Request for

N/A

All trademark application is examined

Examination
13

Substantive

after the publication period ends.
Yes

Since the implementation of Job

Examination

Creation Law, if there is no opposition
from third party, Trademark Examiner
shall finish the substantive examination
within 30 (thirty) days. Whilst, if there
is an opposition from third party,
Trademark Examiner shall finish thesubstantive examination within 90(ninety) days.
However, in practice, due to theworkload of the trademark examiner thesubstantive examination may exceeds
the timeframe.

14

Accelerated

N/A

Examination
15

OppositionYes

Any party can file an opposition during
the 2 months publication period52

7 Indonesia

16

Trial for

Yes

Article 76 & 77 of Trademark Law

Invalidation

1. Unregistered mark owner may file thelawsuit after filing the trademark
application to the DGIP
2. the lawsuit for invalidation is filed to
the Commercial Court against theregistered mark owner. The lawsuit isfiled to the Defendant nearest
Commercial Court, however, If thePlaintiff and/or Defendant is
Foreigner/Foreign entity then thelawsuit is filed to Jakarta Commercial
Court.
3. the lawsuit for invalidation of
trademark registration may only be filed
within a period of 5 years as from thedate of trademark registration
4. the lawsuit for invalidation may be
filed in unlimited time if there is bad
faith and/or the relevant trademark
contravenes the state ideology, laws andregulations, morality, religions, decency,
and public order.

17

AppealYes

After the trademark applicants received
final rejection, the applicant may appeal
the trademark examiner decision
through Trademark Appeal Commission
within 90 days after the notification
letter18

19

Initial Term of

10 years from the filinga Registration

date

Term for10 years

the request for renewal can be filed

Renewalwithin 6 months prior to the expiration
date. The grace period is 6 months since
the expiration date by paying fine.

20

Proof of Use

N/Adeclaration of use (statement letter) and53

7 Indonesia

factual product/service
21

Cancellation for

Yes

Article 74 of Trademark Law

Non-useCancellation for Non-Use may berequested by a relevant third party inthe form of lawsuit to the commercial
court on the ground that the trademark
has not been used for 3 consecutive
years in a course of trades of goods
and/or services as of the date ofregistration or last use.

22

E-filing

Yes

URL: https://merek.dgip.go.id/54

7 Indonesia+Case Study 1 (Cancelation trials based on non-use)
Case Name: Trademark “CRISTALINE” Cancellation Lawsuit Based on Partial Non-Use
Case No.: Supreme Court Decision No. 959 K/Pdt.Sus-HKI/2018 in conjunction with
Jakarta Commercial Court Decision No. 69/Pdt.Sus-Merek/2016/PN.Niaga.Jkt.Pst
Parties: 1. PT Pepper Tree Investama (“Plaintiff”)
against2. Gie Cristaline (“Defendant”); and3. Ministry of Law and Human Rights CQ. Directorate General of Intellectual
Property CQ. Directorate of Marks and Geographical Indication (“CoDefendant”)
Judgment Date: 17 April 2018 (Jakarta Commercial Court) and 14 November 2018
(Supreme Court)
Original Decision : Jakarta Commercial Court Decision No. 69/Pdt.SusMerek/2016/PN.Niaga.Jkt.Pst
Referred Articles: Article 74 of Trademark Law
Keywords: Cancellation lawsuit based on non-use; Statement of Use Letter
Summary:
Plaintiff filed a Trademark Cancellation Lawsuit based on partial non-use to Defendant’s
registered “CRISTALINE” trademark with the argument the trademark was never used in awater bottled or mineral water product for three consecutive years in Indonesia.
Case Fact:
On 28 January 2004, Defendant filed a trademark application namely “CRISTALINE” inclass 32. The Directorate General of Intellectual Property granted Defendant trademark
application on 30 September 2005. On 17 July 2013, Defendant filed a renewal applicationof trademark “CRISTALINE.”
According to the survey result from the independent surveyor in Indonesia, the Plaintiff
found out that the trademark “CRISTALINE” was never been used in Indonesia and there
were no products registered under the trademark of “CRISTALINE” in the Badan Pengawas
Obat dan Makanan Republik Indonesia/BPOM RI (Indonesia Food and Drug Agency)
specifically for mineral water and/or bottled water.
Based on such fact, Plaintiff file a Cancellation Lawsuit based on Partial Non-Use against
Defendant’s registered trademark “CRISTALINE” on the basis that Defendant was neverused the trademark for mineral water and/or bottled water three consecutive years.
55

7 Indonesia

Below is the comparison between Plaintiff and the Defendant’s trademark:The Plaintiff’s Trademark

Class 32: Mineral water; bottled water

The Defendant’s Trademark

Class 32: Mineral and aerated waters andother non-alcoholic drinks; beer and types ofbeer; fruit-flavored drinks and juice;In this case, the court had sent a summon letter to Defendant to attend the court hearing.
However, after three times summon letter was sent, Defendant and/or its proxy had neverappeared before the court even though it has been called legally and properly. The case wasresumed with the attendances of Plaintiff and Co-Defendant only.
Plaintiff’s argument was Defendant’s trademark “CRISTALINE” was never used for mineralwater and/or bottled water products for three consecutive years. Such a fact was supported
by Indonesia Independent Surveyor, stating that there was no bottled water product soldbearing the trademark “CRISTALINE.” Moreover, the bottled water bearing the trademark“CRISTALINE” was never been registered in BPOM RI.
On the other hand, Co-Defendant denied Plaintiff’s argument by stating the trademark“CRISTALINE” has been renewed and protected until the year 2024. Consequently, CoDefendant concludes that the trademark “CRISTALINE” was still being used by Defendant.
Issue:The Statement of Use Letter of which a prerequisite document in filing a trademark renewal
is treated as evidence by Co-Defendant despite there is no presence of use of trademark“CRISTALINE” for mineral water products and the Defendant itself was never appeared
before the court.
Ruling:In rendering the adjudication, the court referred to Article 36 of Trademark Law which
regulates the trademark renewal application will be approved if the applicant enclosing aStatement of Use Letter that stating the trademark is still being used. Accordingly, theCourt considered that the trademark “CRISTALINE” was still being used by Defendant and56

7 Indonesia

the Plaintiff cannot prove that the trademark “CRISTALINE” was never been used for threeconsecutive years.
The Court was not convinced by the fact that Plaintiff had provided sufficient evidence,such as:
1. A survey from a relevant Independent Surveyor indicating trademark “CRISTALINE” wasnever been used in Indonesia;
2. The bottled water was never been sold in Indonesia based on Independent Surveyor; and3. Data from BPOM RI shows there were no bottled water products sold under the
trademark “CRISTALINE” in Indonesia. But in contrary, the court dismissed Plaintiff’s
lawsuit and the court fees shall be burden by Plaintiff.
In conclusion, a Statement of Use Letter which was a prerequisite document for filing arenewal trademark may be used as evidence and convince the judge that it is sufficient toprove that the trademark is being used. Regardless in factual cases, such a trademark is not
being used at all. The court refuse the lawsuit because they were of the opinion that thestatement letter in renewal application means the defendant still using the trademark.

57

7 Indonesia+Case Study 2 (Bad faith application)
Case Name: Varivas vs Varivas – Varivas Trademark Cancellation Lawsuit Case
Case No.: Supreme Court Decision No. 880 K/Pdt.Sus-HKI/2019 in Conjunction with
Jakarta Commercial Court No. 5/Pdt.Sus-Merek/2019/PN.Niaga.Jkt.Pst
Parties: 1. Morris Co., Ltd. (“Plaintiff”);
against2. Meliana (“Defendant”) and3. Ministry of Law and Human Rights CQ. Directorate General of Intellectual
Property CQ. Directorate of Marks and Geographical Indication (“CoDefendant”)
Judgement Date: 17 June 2019 (Jakarta Commercial Court) and 7 October 2019 (Supreme
Court)
Original Decision : Jakarta Commercial Court No. 5/Pdt.Sus-Merek/2019/PN.Niaga.Jkt.Pst
Referred Articles: Article 76 in conjunction with Article 77 of Trademark Law and Article 18of Ministry of Law and Human Rights Regulation No. 67 of 2016
regarding Trademark Registration (Concerning Cancellation Lawsuit ofRegistered Trademark)Keywords: Bad faith application; Well-known trademark protection; Invention Name;
Trademark Cancellation Lawsuit; Substantively Similar Trademark
Summary:
Plaintiff filed a Trademark Cancellation Lawsuit against the trademark “VARIVAS”
registered by the defendant with the basis of bad faith trademark application and free-riding
the well-known trademark “VARIVAS” owned by Plaintiff that has been registered invarious countries.
Case Fact:
Defendant filed a trademark application of “VARIVAS” in Class 28 on 20 March 2014. The
Directorate General of Intellectual Property (“DGIP”) granted the Defendant trademark
application on 4 July 2016.
On 4 January 2019, Plaintiff filed a “VARIVAS” trademark application. Then to ensure theregistrability of Plaintiff’s trademark application, on 16 January 2019, Plaintiff filed a
trademark cancellation lawsuit to the Jakarta Commercial Court on the basis of bad faithtrademark application and free-riding the well-known trademark against Defendant.

58

7 Indonesia

Below is Plaintiff and Defendant’s trademark comparison:
Plaintiff’s Trademark

Defendant’s Trademark

In the lawsuit, the Plaintiff claimed the followings:
1. the trademark “VARIVAS” owned by Plaintiff is a well-known trademark, supported by
the evidence that shown the “VARIVAS” trademark is being used by Plaintiff since 1980,
registration in various countries, and massively promoted worldwide which indicates its
existence all over the world.
2. the “VARIVAS” trademark is an invention name, thus Defendant “VARIVAS” trademark
registration was filed in bad faith because it has similarities in appearance, pronunciation,and type of goods with the trademark “VARIVAS” owned by Plaintiff. Moreover,
Defendant’s trademark “VARIVAS” was also allegedly tried to free-ride the well-known
trademark “VARIVAS” owned by Plaintiff because it was registered in various countries.
3. Defendant is not eligible to produce fishing equipment because there was not found a
product named “VARIVAS” made and/or imported by Defendant.
On the other hand, the Defendant who previously registered the “VARIVAS” trademark,rebut the Plaintiff’s argumentation by stating the followings:
1. refuse all claims submitted towards her and argues that the Trademark Law adhere to the“First to File” system. It was supported by the “VARIVAS” trademark certificate in thename of Meliana (Defendant) on 4 July 2016. Whilst Plaintiff’s filed a trademark
application of “VARIVAS” on 4 January 2019. Accordingly, Defendant claimed that she
was the legitimate owner of the trademark “VARIVAS” in Indonesia.
2. denied Plaintiff’s trademark “VARIVAS” as a well-known trademark by arguing that it has
not fulfilled the criteria of a well-known trademark according to the Ministry of Law and
Human Rights Regulation No. 67 of 2016. Thus, she requested the court to survey by anindependent surveyor to evaluate the Plaintiff’s “VARIVAS” trademark popularity.
3. denied the trademark “VARIVAS” was filed in bad faith, by clarifying that in the“VARIVAS” trademark application process, the trademark successfully passed thesubstantive examination conducted by the trademark examiner to look into similarities,
either similar to the registered trademark and/or well-known trademark. Defendantconcludes that the trademark application “VARIVAS” submitted by her that has been59

7 Indonesia

granted by Co-Defendant is a proof that Defendant has complied with the laws andregulations and the bad faith trademark application claimed by Plaintiff was irrelevant.
4. the legal protection of trademark is inherently a territorial principle, which means where
the trademark is registered there it is protected. Consequently, Plaintiff’s arguments who
claimed as the first user and the owner of “VARIVAS” trademark that has been registeredin various countries cannot be used as grounds in nullifying the registration of Defendant’s“VARIVAS” trademark.
Issues:Bad faith in trademark application and free-riding the well-known trademark.
Ruling:Regarding Plaintiff’s argumentation that claim “VARIVAS” trademark is a well-known
trademark, the court opines that Plaintiff’s proven to have registered “VARIVAS” trademark
in various countries. The Plaintiff’s also proven to have invested and promoted massively invarious countries by conducting competitions, sponsoring, being covered by the media, etc.
Further, Plaintiff was proven to be the first user of the “VARIVAS” trademark because theysucceeded in showing a proof of using the mark in Japan and proof of registration of the“VARIVAS” trademark in Japan since 1987. In addition, as evidence of the trademark use
and investment in Indonesia, Plaintiff also succeeded in proving the existence of an official
distributor in Indonesia. Therefore, the court declared Plaintiff’s “VARIVAS” as a wellknown trademark.
Then, after the court examined the trademark “VARIVAS” owned by Plaintiff and compared
it with Defendant’s trademark “VARIVAS,” the court opines that there are similarities inappearance, pronunciation, class, and type of goods. Hence, it is proven that Defendant’s
trademark “VARIVAS” has similarities with the well-known trademark “VARIVAS” owned
by Plaintiff’s. As a consequence, Defendant was proven to have the intention to imitate or
free-ride the Plaintiff’s well-known trademark “VARIVAS” for its business interest, which
creates unfair competition and deceives the consumers.
Based on the above considerations, the court is of the opinion that Defendant in registering
the trademark “VARIVAS” was qualified as a bad faith trademark application.
Eventually, Plaintiff lawsuit was proven and granted entirely by the court, with the decision,as follows:
1. Declare the “VARIVAS” trademark owned by the Plaintiff is a well-known trademark;2. Declare the Plaintiff as the Interested Party in the case;
3. Declare the “VARIVAS” trademark, Registration No. IDM000536979, Class 28, owned by60

7 Indonesia

Defendant, is a bad faith trademark application;
4. Declare the “VARIVAS” trademark, Registration No. IDM000536979, Class 28, owned by
Defendant, is similar to the well-known trademark “VARIVAS” owned by the Plaintiff;
5. Cancel the registration of the “VARIVAS” trademark, Registration No. IDM000536979,
Class 28, owned by Defendant, along with its legal consequences;
6. Order the Co-Defendant to record the cancellation of the “VARIVAS” trademark,Registration No. IDM000536979, Class 28, owned by Defendant, and publish it in theTrademark Gazette;
7. Order the Co-Defendant to grant Plaintiff’s “VARIVAS” trademark application no.
D002019000269, filing date 4 January 2019, and issue its trademark certificate, andpublish it in the Official Gazette.

61

8 Japan

8

Japan+Basic Information of Legal System
As of May, 2021

No

Item

Details Examples

Administrative

Japan Patent Officeorganization(JPO)

Details in your country.
1

for Trademark
23TrademarkAmendment of Act No.

Law/Act

55 of 2006

Registable

Characters, figures,

Trademarksigns or threedimensional shapes, orcolors, or any
combination thereofwith colors, sounds,
motion, holograms,
positions.

4

MadridAcceded2000/3/14

RequiredIf you do not have either a permanent

Protocol5

Local Agentaddress or residence in Japan, you arerequired to appoint a representative, apatent attorney in Japan.
6

Required

Prescribed application*Application form includes a mark for

documents forform

which registration,filing*A power of attorney is not required at thetime of filing.
*A priority document has to be filed within
3 months from the filing date.

7

Language forJapanesefiling
8

Classification

NICE Classification

9

Multiple

YesClasses62

8 Japan10

Fee Reduction

N/A

Not for Trademark, but available forPatent, Utility Model.

11

Publication ofYes

All application is published.

N/A

All application is examined.

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

Yes

If meeting the requirements, accelerated

Examination

examination is applicable free of charge, orthe fast track examination is applicable(Examined in about 6 months from thefiling date) since February 1, 2020.

15

OppositionYes

Any person can file an opposition within
two months from the date of publication of
the registration.

16

Trial for

Yes

Interested person/party may request a trial.

Invalidation
17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

Term for10 years

19

The request for renewal can be filed within

Renewal

6 months prior to the expiration date. The
grace period after the expiration date is 6
months.

20

Proof of Use

N/A

21

Cancellation

Yes

Within 3 years after the date of registration

for Non-use

and any consecutive three-year period
thereafter.

22

E-filing

Yes

URL:
http://www.pcinfo.jpo.go.jp/site/index.htm
l(Support page; Japanese only)63

8 Japan+Case Study 1 (Registrability issue (Relative Ground))Case Name: Three dimensional Octopus device vs flat octopus device
Case No. Heisei12(gyo-ke)234 / 2000(gyo-ke)234
Parties: Ushijima Shoten vs Japan Patent officeJudgment Date: 2000/12/18
Original Decision: JPO appeal No.1998-20552
Referred Articles: Trademark Act 4-1-11
Keywords: Similarity in appearance; three-dimensional device; predominant direction
Summary:
As the three-dimensional trademark has a unique nature of presenting a different
appearance when seen from a different angle, appearance of one of the views from one
specific angle is similar to the flat trademark device of others. The Court issued how to exam
similarity between three-dimensional trademark device and flat trademark device.
Fact:
The plaintiff filed a trademark application with three-dimensional octopus device in class 30
on July 3, 1997. The JPO decided that the trademark device of the present application was
similar to the cited mark which consists with flat octopus device designating in class 30, andrefused the present case and issued the decision of refusal at the appeal against the decisionof refusal. Therefore, the plaintiff bought the claim to the Tokyo High Court.
The present markThe cited markIssues:Similarity judgement method:
Ruling:A three-dimensional trademark consists with three-dimensional shape or a combination of a64

8 Japanthree-dimensional shape and flat mark, and it has a unique nature of presenting a different
appearance when seem from a different angle. In actual use, it is not possible to visually
been recognized the entire shape at a glance. Therefore, assuming one or more specificdirections (hereinafter referred to as "predetermined directions") that the viewer will mainly
see when observing this, the viewer's vision when viewed from a predetermined direction. It
is usually considered that the characteristics of the reflected appearance can identify thesource of goods or services. A three-dimensional trademark is judged, in principle, as similar
in appearance to a plain trademark indicating an appearance (including similar one) which
it presents when viewed from a specific angle. This does not apply in the case where a threedimensional trademark is not recognized as presenting a specific appearance characterizing
the trademark, when viewed from a specific direction. Which direction is the predetermined
direction presenting a specific character or not shall be judged individually and objectively.
However, as mark of the present case, if the mark represents personification of animals, it isnatural that the consumer deems the front direction showing the face as predeterminedcharacterizing appearance. The appearance of the present mark with front direction issimilar to the cited mark, they shall be deemed as similar to each other.
Tokyo High Court dismissed the Plaintiff’s claim. The court cost shall be burden by the
Plaintiff.
⚫

This judgment was issued before the establishment of the Intellectual property Highcourt.

65

8 Japan+Case Study 2 (Internet and trademark)Case Name: Chupa Chups case
Case No. Heisei 22(ne) 10076/ 2010(ne)10076
Parties: Rakuten Kabushiki Kaisha vs Perfetti Van Melle Societa Per Azioni
Judgment Date: February 14, 2012
Original Decision: Heisei 21(wa)33872/ 2009(wa)33872
Referred Articles: Trademark Act article 36-1,
Unfair competition prevention Law article 3-1, Civil law Article 709
Keywords: Internet, service provider liability, online shopping mall
Summary:
The appellant (=the Plaintiff) claimed damage to the appellee (=the defendant), operatinginternet shopping mall “Rakuten Ichiba,” because displaying the shop store’s goods
attaching the Plaintiff’s trademark without getting consensus on the shopping mall site is
infringing the trademark right.
Fact:
The defendant manages internet online shopping mall “Rakuten Ichiba.” In this mall, thestore owners who have contracted with the defendant create their website, post their goods
on it, and sell their goods. Before the contract, the defendant checked the qualification for
selling the products, however, after the contract, the store owners can freely amend their
shop contents without examined by the defendant. The consumer can search all the goods
posted in “Rakuten Ichiba” and choose the goods to purchase. One store owner sold thegoods attaching the plaintiff’s well-known trademark without getting a consensus by theplaintiff via “Rakuten Ichiba.” As a result, the defendant displayed the goods infringed theplaintiff’s trademark right.
Issues:
Does the EC site managing company have a liability or not?
If the EC site operator does more than simply prepare the environment for the store ownerto open the web site but also permits or reject the store opening applications, suspend theservices to the store owner, getting the benefit from the store owner such as basic opening
fee, system utility fee, when the EC site operator aware the trademark infringement by thestore owner, unless deleting such store site within the reasonable period, the trademark rightholder can claim for injunction and damage against the EC site operator as well as the store66

8 Japanowner.
In this case, the defendant deleted the store owner’s website within eight days from when
the defendant knew the store owner did the infringement. Eight days is deemed as areasonable period.
Ruling:
The court dismissed the plaintiff’s claim.

67

9 Kenya9

Kenya+Basic Information of Legal System
As of October, 2021

No.

Item

Details Examples

Details in your country (If any)

1

Administrative

Kenya Industrial Property

organization for

Institute (KIPI)

Trademark2

3

Trademark

Trade Marks Act Chapter

Law/Act

506

Registable

Distinctive works, letters,

Trademarknumbers, drawings,
colours or combination ofcolours, or pictures,
monograms, signatures,word, symbol, a design,
brand, heading, label,name or any combination
thereof whether rendered
in two dimensional or
three-dimensional form.

4

MadridAccededJune 26, 1998

Required

The agent may be an advocate or

Protocol5

Local Agentpersons approved by the institute6

Required

Prescribed Application

A person is required to file the following

documents forFormforms for purposes of effecting a TradefilingMark Registration Form:
TM1: Form of agent authorization form;
TM2: Application for Registration of amark

7Language forEnglishfiling
8

Classification

Nice Classifications

9

Multiple

YesClasses68

9 Kenya

10

Fee Reduction

N/A

N/A

11

Publication ofYes

all applications are Published

N/A

all applications are examined

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

Yes

if a party meets all requirements, thenExamination

accelerated
examination is available for them inparticular law firms
are always given priority.

15

OppositionYes

Any person can file an opposition within
two months from the date of publicationof the registration.

16

Trial for

Yes

Upon publication for the intended

Invalidation

registration of the Trade Mark, an
opposing party may request a trial to theregistrar of trade mark to authenticate
the dispute in issue

17

AppealYes

Appeal of the decision of registrar of
Trade Mark Lie to the High Court of
Kenya

18

19

Initial Term of

10 years from the date ofa Registration

application.

Term for10 years

The request for renewal is done 90 days

Renewalprior to the expiration of the Trade
Mark either in their own motion or
through a reminder by the Registrar of
Trade mark who may remove the Trade
Mark protection after lapse of the
10year period.

20

Proof of Use

N/A

69

9 Kenya

21

Cancellation forYes

If a Trade Mark application has not

Non-usebeen in use for a continuous period of 5
years from the registration, it can becanceled upon a third Party’s request.

22

E-filing

N/A70

9 Kenya+Case Study 1 (Registrability issue (Relative Ground), Sanction and remedies)
Case Name: Sony Corporation v Sony Holding Limited [2018] eKLR
Case No: civil appeal no.376 of 2015
Parties: Sony Corporation vs Sony Holding Limited
Judgment Date: 29th May,2018.
Referred Articles: The Trade Mark Act, Trade Related Aspects of Intellectual Property
Rights (“TRIPS Agreement”).
Summary:This is an Appeal against the Decision of The Registrar of Trademarks in relation to a Trade
Mark Opposition proceeding filed by Sony Corporation (The Appellant). In the Appeal, theappellants sought to quash the decision of the registrar to dismiss its opposition application
to the use of the words and marks by the Respondent by virtue of it having registered thesame.
Facts:On 28th February 2012, the Appellant filed a Notice of Opposition against the Registrationof the Marks on the basis that, inter alia, it is the registered proprietor of existing Trade
Marks in clauses 9,35,36,37,39,40,41, and 42. After hearing the parties, the Assistant
Registrar gave her Ruling on 5th June 2015 in which she dismissed the Opposition
proceedings with costs and allowed the Respondent Marks to proceed to Registration. Being
dissatisfied with that Decision, the Appellant has filed an Appeal.
The contested mark(1) SONY HOLDINGS” (WORDS & DEVICE)(2) SONY HOLDINGS” (WORDS & DEVICE)
Respondent: Sony Holding Limited

The cited markSONY with device
Appellant: Sony Corporation

It is true. In addition, the Trademark registration in Kenya applies only in respect to thenature of business (statutory referred to as classes) upon which it is protected. The court
reiterated this position in this case when it faulted the decision of the registrar to accept
registration of the Respondent Trademark for partially being in the same trade upon which
the applicant had a legal claim of Trademark protection.
Issues:
The following issues were determined by the court;719 Kenyaa) is the Appellants’ Trade Mark a well-known mark in Kenya and therefore deserving
protection under the provisions of section 15A of the Act"?
b) Are the Respondents’ marks “SONY HOLDINGS” (WORDS & DEVICE) and “SONYHOLDINGS” (WORD) so similar to the Appellant’s’ Trade Mark “SONY” (WORD&DEVICE) as to cause a likelihood of confusion in Contravention of the provisions ofsections 14 and 15(1) of the Trade Mark Act"?
c) Did the Respondent have a valid and legal claim to the Trade Mark “SONY HOLDINGS”(WORD & DEVICE) and “SONY HOLDINGS” (WORDS) before applying to register themarks as provided for under section 20(1) of the Trade Marks Act"?
Ruling:Of Importance, was the Court finding that the factors for consideration in determining
whether a Mark is a well-known Mark are clearly spelt out and known. A person asserting
well-knowness of a Mark bears the responsibility of submitting information (evidence) inrespect to factors from which the competent authority may infer that the Mark is indeed wellknown. This is not left to the perception or personal inclination of the competent authority.
On the second issue, the Court in overturning the decision of the registrar stated that
‘nothing prevents the use of similar or identical Trade Marks by different proprietors
provided that the respective goods or services are of a different description. The only
property in a Trade mark is the business or Trade in connection with which the Trade markis used. This therefore means that though the name appears quite similar to pass off as suchthe same goods and service were of different description with one being electronics whileothers on Real estate hence only the registration mark under the same classification should
ought not to have been allowed.
On the last issue, the court held that ‘‘for purposes of Section 20(1), the Appellant must
prove reputation and goodwill so as to establish proprietorship. The provision envisages that
the Appellant is a proprietor of a Mark which is either used or which is proposed to be used.
It is not easy to see how an unused Mark will have reputation or goodwill.”
Judgment:
The appellants were successful only to the protection accorded to the Respondents undersimilar classes however, it is correct that the contested marks passed the legal test and theregistrar was directed to register the same.

72

9 Kenya+Case Study 2 (Registrability issue (Relative Ground), Sanction and remedies)
Case Name: Match Masters Limited v Kenafric Matches Limited & another [2021] eKLR
Case No: HCCC NO. E 250 OF 2020
Parties: Match Masters Limited v Kenafric Matches Limited & Anti Counterfeit Agency
Judgment Date:8th March 2021
Referred Articles: The Trade Mark Act, Trade Related Aspects of Intellectual Property
Rights (“TRIPS Agreement”).
Summary:
Plaintiff, the owner of a well-known unregistered trademark, sought an injunction against
the defendant's use of goods bearing the trademark of the Plaintiff. The court deemed thedefendant's action as passing-off because the plaintiff proved three requirements: theplaintiff's mark acquired goodwill, the existence of a likelihood of confusion, and damage
caused by the defendant's use. The court ordered the injunction against the defendant's use.
Facts:MML is the owner of several brands of safety matches including Rhino, Kifaru, Simba andPaka. The brand names, MML contends, include the names of the “big five’’ animals.
Kenya’s “big five” are the elephant, lion, leopard buffalo and rhinoceros. MML is the
proprietor of registered Trade Marks over these brands.
On 22nd March 2019, Kenafric Matches Limited (Kenafric or the 1st Defendant) applied toregister two marks as trademarks being Number 106346, “Big Five” (word mark) and
106617 “Big Five” (word and device). MML opposed that registration through opposition
proceedings presented on 10thFebruary 2020. Those proceedings, before the Registrar of
Trademarks, were pending at the time the current application was argued.
The contested markPlease show the mark“big five’’
Goods: what is the goods? Matchbox
Defendant：
Defendant 1: Kenafric Matches Limited
Defendant 2: WHO IS? The AntiCounterfeit Agency

73

The cited markPlease show the mark“Big Five” (word mark) and 106617 “BigFive” (word and device).
Goods: what is the goods? Matchbox
Plaintiff:
Match Masters Limited

9 Kenya

Issues:Whether the Court should issue the injunctive relief sought? Towards this end, the court
cited the following cases as guides; Nzioka J in Unga Limited v Capwell Industries Limited[2019] eKLR where she observes: -“Further in view of the fact that, the Trademarks are still a subject of proceedings before theRegistrar of Trademarks, the grant of any orders at this stage in favour of or as against anyof the parties will not be in the interest of justice as it will have far reaching impact on theirbusiness operations and/or may determine the matter at this stage. In that regard, I shall notgrant any of the orders sought for at this interim stage hold and order that, the parties
proceed expeditiously to deal with the matter at the Registrar of Trademarks and/or prepare
this matter for hearing of the main suit. The costs of the application herein to abide theoutcome of the main suit.”
The court further took cognizance of certain instances where failure to issue the injunctive
relief could lead to an injustice. Such was the case of In Newton Oirere Nyambariga v KCB
Bank Kenya limited & Another [2017] eKLR, the Court observed; passing off claim is a rightof trader to bring a legal action for protection of goodwill. It is actionable under the law of
unfair competition and sometimes as a Trademark infringement with the party having toprove the following three elements;“First, he must establish a goodwill or reputation or reputation attached to the goods orservices which he supplies in the mind of the purchasing public by association with theidentifying “get up”(whether it consists simply of a brand name or a trade description, or theindividual features of labelling or packing) under which his particular goods or services areoffered to the public, such that the get up is recognized by the public as distinctive
specifically of the Plaintiff’s goods or services. Secondly, he must demonstrate amisrepresentation by the defendant to the public (whether or not intentional) leading or
likely to lead the public to believe that goods or services offered by him are the goods orservices of the Plaintiff. Whether the public is aware of the plaintiff’s identity as the
manufacturer or supplier of the goods or services is immaterial, as long as they are identified
with a particular source which is in fact the Plaintiff. For example, if the public is
accustomed to rely upon a particular brand name in purchasing goods of a particular
description, it matters not at all that there is little or no public awareness of the identity ofthe proprietor of the band name. Thirdly, he must demonstrate that he suffers or, in a quia
timet action that he is likely to suffer, damage by reason of the erroneous belief engenderedby the defendant’s misrepresentation that the source of the defendant’s good or services is74

9 Kenya

the same as the source of those offered by the Plaintiff.”
Ruling:The Court issued an order of injunction in favour of the Plaintiff but as for Prayer of the
Notice of Motion of 10thJuly 2020 which sought for an;“e. Injunction be issued to stop the 1stDefendant from continued sale of counterfeits in theoffending marks and to further production and marketing pending hearing anddetermination of the main suit.” The court ruled as that;“While the Court will grant that prayer, the Court has not found the products of the
1stDefendant to be counterfeits. So, with that qualification, prayer e only of the applicationis allowed on condition that the Plaintiff furnishes to the 1stDefendant an undertaking as todamages for the sum of Kshs.10,000,000/= within 14 days hereof.”
The injunction was against the 1st Defendant to stop the production since the same
constituted passing off. The 2nd Defendant is a state agency mandated by law to protect
consumers from consumption of counterfeit goods. The court could therefore not issue anorder against it since the process of ascertaining goods to be counterfeit or not requires
some scientific examination hence the application having been brought in an interim basis
could not infer culpability on the 2nd defendant for failure to take action against the 1st
Defendant product until the goods to be examined then a proper order be issued against it.

75

10 Korea

10

Korea

+Basic Information of Legal System
As of November, 2021

No.

Item

Details Examples

1

Administrative

Korean Intellectualorganization

Property Office

for Trademark(KIPO)

TrademarkAmendment of Act

Law/Act

No. 44 of 2020

Registablea symbol,

Trademarkcharacter,2

3

Details in your country (If any)

diagram, threedimensional shape,or anycombination
thereof, as well as
color combinationsof the mark.
a mark formed by asingle color or a
combination ofcolors, holograms,
motions, and alltypes of visually
recognizable
marks.
non-visualtrademarks such as
sounds and smells.
4

MadridAcceded

2003/4/10

RequiredIf you do not have either a permanent address

Protocol5

Local Agentor residence in Korea, you are required toappoint a representative, a patent attorney in
Korea.

76

10 Korea

6

Required

Prescribed(a) an application stating the following: thedocuments forapplication form

name and address of the applicant; thefilingtrademark; the designated goods and classthereof; the date of submission; and thecountry and filing date of the priority
application, if the right of priority is claimed;(b) 10 specimens of the trademark;(c) the priority document if the right of priority
is claimed;(d) a power of attorney, if necessary.

7

Language for

Koreanfiling
8

Classification

NICE
Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

Not for Trademark, but available for Patent,
Utility Model, and Design.

11

Publication of

N/A

Unexamined
Applications
12

Request for

N/A

All applications are examined.

Yes

Trademark applications are automatically

Examination
13

Substantive
Examination

14

Accelerated

examined in order of their filing date.
Yes

Examination
15

Opposition

Yes

Once a trademark application is published in
the official gazette, the "Trademark Publication
Gazette," any person may file an opposition
within two months (non-extendable).

16

Trial for

Yes

Invalidation

Interested person/party or an examiner may
request a trial.

17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

77

10 Korea

19

Term for10 years

RenewalThe request for renewal can be filed within 1
year prior to the expiration date. The grace
period after the expiration date is 6 months.

20

Proof of Use

N/A

21

Cancellation

Yes

for Non-use
22

E-filing

Any consecutive three-year period before theday of the request for revocation trial.

Yes

https://www.patent.go.kr/smart/portal/Main.do78

10 Korea+Case Study (Bad faith application)

Case Name: Sambuja(“”) caseCase No. 2017hu2178
Parties: Sambuja(“”) vs Somunnan Sambuja(“”)

Judgment Date: February 13, 2020
Original Decision: 2017heo2628
Referred Articles: Trademark Act article 119(1)( ii )Keywords: Service mark, trademark
Summary:
If a licensee who has obtained a permission to use a registered trademark from a new
trademark proprietor after the transfer of trademark ownership uses a mark identical orsimilar to the registered trademark, there is a high possibility of causing confusion withgoods related to the previous trademark proprietor’s business. In such cases, it should bedetermined whether such use constitutes an improper use of a registered trademark in viewof social convention by carefully examining the manner in which the mark is actually used on
goods.
Fact:
An individual named Y. Kim was a proprietor of the registered trademark (“”) of thesubject case, which uses 'laver, seaweed, and fried kelp' as designated goods, and Honghae
F&D (CEO Y. Kim) used “” as its mark.

Afterwards, the ownership of the registered trademark (“”) of the subject case wastransferred from Y. Kim to the defendant, and the defendant granted “Sambuja Co., Ltd.”and “Hyosung Food Co., Ltd.” permissions to use the registered trademark of the subject
case.
Sambuja Co., Ltd. and Hyosung Food Co., Ltd. used the registered trademark “

its proper form, but then subsequently used the mark “
79” and “” in”,

10 Korea

which are similar to the registered trademark of the subject case, on goods such as seasonedlaver and lunch box laver.
Issues:
Article 119(1)(ii) of the Korean Trademark Act stipulates, “a trial to revoke a trademark
registration may be requested, where an exclusive licensee or a non-exclusive licensee causes
the misunderstanding of the quality of goods or confusion with goods related to anotherparty's business by using a registered trademark or a trademark similar to the registeredtrademark on the designated goods or goods similar to the designated goods.”
Do the mark “
trademark “” and “” used by the defendant after the registered” of the subject case was transferred to the defendant cause confusion

with goods related to another party's business?
Ruling:After the registered trademark of the subject case was transferred to the defendant, thelicensees who obtained permission to use the registered trademark from the defendant did
not use the registered trademark of the subject case in its proper form, but used the markand goods identical to those that have been used by Honghae F&D.
In that case, the mark “” and “”, and the goods used by the licenseesof the registered trademark of the subject case can cause misunderstanding of the quality ofgoods or confusion as to their sources with the mark and the goods of Honghae F&D among
consumers.
Accordingly, as the registered trademark of the subject case was transferred to thedefendant, Y. Kim who is the previous trademark proprietor or Honghae F&D which Y. Kim
granted the right to use the registered trademark is deemed as “another party.”80

11 Malaysia

11

Malaysia+Basic Information of Legal System
As of November, 2021

No.

Item

Details Examples

1

Administrativ

Intellectual Property

e organization

Corporation of

for Trademark

Malaysia (MyIPO)

Trademark

Trademarks Act

Law/Act

2019 [Act 815]

2

Details in your country (If any)(repealed
Trademarks Act
1976)
3

Registable

Sign includes letter,

Trademarkword, name,signature, numeral,
device, brand,heading, label,ticket, shape of
goods or theirpackaging, colour,sound, scent,hologram,
positioning,sequence of motion
or any combination
thereof.

4

MadridAcceded2019/12/27

Yes

If the person does not reside or carry on

Protocol5

Local Agentbusiness principally in
Malaysia, must appoint a registered TM
Agent.

81

11 Malaysia

6

RequiredApplication form

- Application Form

documents forwithin the- the markfilingprescribed period- prescribed fee

together with the- translation/ transliteration document (ifpayment of theany)prescribed fee.
7

Language forEnglish, Malay

filing
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

11

Publication ofYes

All TM application is published.

N/A

All TM application is examined.

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

Yes

Follow procedure for Expedited Examination.

Yes

Any person may file an apposition (withExamination
15

Oppositionprescribed fee) within
two months from the date of the publicationof the acceptanceof an application for the registration.
16

Trial forYes

By an aggrieved person

Yes

Appeal shall be made to the Court within theInvalidation
17

Appealtimeline (extension of time is applicable withprescribed fee) from the written grounds ofdecision of the total provisional refusal issued
to the applicant.
18

Initial Term of

10 years from thea Registration

date of registration.

82

11 Malaysia

19

Term for10 years

RenewalThe request can be made before expiry.
Within 6 months after expiry prescribed fee
and surcharge.

20

Proof of Use

N/A

21

Cancellation

Yes

for Non-use

Revocation by Court (application by
aggrieved person) where within
uninterrupted 3 years after the date of
notification of registration, for non- use.

22

E-filingYes

https://iponline2u.myipo.gov.my/myipo/www/8311 Malaysia+Case Study (Infringement against registered mark)Case Name: “nano-g” trademark infringement
Case No. [2021] 1 LNS 660
Parties: Nano G Central Sdn Bhd & NanogPLT vs Eva Energy Sdn Bhd, IrisproInternational Sdn Bhd & Chew Lea Yong
Judgment Date: 2021/04/30
Original Decision: The Court allowed the interlocutory application.
Referred Section: Section 56(3) of the Trademarks Act 2019.
Keywords: Infringement; identical; registered mark.
Summary:
The Plaintiffs filed suit against the Defendants for trademark infringement, passing off andconspiracy to injure and unlawful interference with the Plaintiffs’ trade. While pending thefinal settlement of this suit, the Plaintiffs filed an interlocutory application for the issuanceof an injunction to restrain the Defendants from using the mark “nano-g” in conducting
their business. The Court granted the interim injunction to the Plaintiff. Thus, theDefendants brought two separate appeals filed against the said decision. The Court applying
the 5 tests to be fulfilled in order the Court to allow Plaintiffs’ interlocutory application.
Fact:
The Plaintiffs are the specialist in a non-invasive waterproofing good and service whichbearing “nano-g” trademark. The Defendants are in the business of energy- efficient
products and anti-bacterial solutions manufacturer. The Defendants’ conduct in adopting
the Plaintiffs’ “nano-g” trademark in the Defendants’ mark is intentional and deliberate totake advantage of the goodwill and popularity of the Plaintiffs’ “nano-g” trademark. This
could attract the consumers’ attention and would give false perception that the Defendants’
goods and services originate from and are associated with the Plaintiffs. The Plaintiffs filed a
trademark infringement suit over the “nano-g” trademark and at the same time, thePlaintiffs asserted that Court must allow their interlocutory injunction as there exist serious
questions to be tried and the damage caused by the Defendants’ actions cannot becompensated by way of damages due to the continuous damage to the Plaintiffs’ goodwill
and reputation by the Defendants’ act of passing off their goods and services with unknown
quality as that of the Plaintiffs’ and that the Defendants would continue to retain profits
derived from such conducts. The Court allowed the interlocutory injunction and now the
Defendants appeal against the decision.
84

11 Malaysia

The Plaintiff’s markThe Defendant’s markIssues:Whether the Plaintiffs fulfilled the tests below in order the Court granting the interlocutory
injunction:(i) there are serious and unusually strong issues and questions to be tried:(ii) in the event that the Plaintiff were to succeed at the trial, damages would not be anadequate compensation for their losses;(iii) the balance of convenience and justice of the case lies in the Plaintiffs' favour;(iv) there are special circumstances in favour of the Plaintiffs; and(v) whether the status quo should be maintained.
Ruling:First of foremost, the Court must satisfy the “full and frank disclosure” test to sustain theinterlocutory injunction to the Plaintiffs against the Defendants. The issue is whether the
Plaintiffs had disclosed material information during the ex-parte phase. The Court was
satisfied that the Plaintiffs did not fail to disclose such material information. Apart of thelocus- standi and consequential issue of ownership of the Plaintiffs’ trademark issues, theCourt also look into the Plaintiffs’ intention to expand their business similar to the
Defendant’s class of goods and services, among of the issues that can only be determined ata full trial. Next, the Court ruled that there is likelihood of damage caused to the Plaintiffs if
the Defendants are not restrained from continuing to use the “nano-g” mark. Aside from theidentical or near resemblance in the visual look and the distinguishing and essential featuresof the “nano-g”, the other key feature is the sound or the way the mark is pronounced.
Pursuant thereto, the Court further found that the balance of convenience lies in favour of
the Plaintiffs for this Court to grant the interlocutory injunction as it will preventing the
Defendants from continue to use “nano-g” mark which has almost identical look and soundwith the Plaintiffs’ “nano-g” mark. The Court ruled that the status quo is to be maintained
where to allow the Plaintiffs’ interlocutory application to restrain the Defendants from using
the words “nano-g” mark as depicted in the Plaintiffs’ “nano-g” mark. The Plaintiffs havesatisfied all the tests above, thus, the Court allowed the Plaintiffs’ application.

85

12 Myanmar

12

Myanmar+Basic Information of Legal System
As of January, 2022

No.

Item

Details Examples

Details in your country (If any)

1

Administrative

Registration office,Trademark Law has not yet enforced inorganization for

Ministry of Agriculture,

Myanmar. Registration Law 2018 is to

TrademarkLivestock and Irrigation

do registration at Registration office, it
is under the Ministry of Agriculture,
Livestock and Irrigation.

2

TrademarkRegistration Law 2018

Law/Act
3

Registable

Invented words, letters,

Trademarknumbers, illustrated parts,
or combinations of colors,
or one such markcombined with another

4

MadridNo

Protocol5

Local Agent

Required6

Required

Trademark Declaration

documents forfiling7

Language for

Myanmarfiling
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

11

Publication of

N/A

Unexamined
Applications
12

Request for

N/AExamination
13

Substantive

N/A

Examination86

12 Myanmar

14

Accelerated

N/A

Examination
15

Opposition

Yes

16

Trial for

Yes

Invalidation
17

AppealNo

18

Initial Term ofEvert three years from thea Registration

registration date

Term forNo

19

Renewal20

Proof of Use

Yes

21

Cancellation for

Yes

Non-use22

E-filing

No87

12 Myanmar+Case Study (Infringement against registered mark)Case Name: Canon Laser Printer’s Cartridges and Toners
Case No: 2011 Criminal case number 350
Parties: Canon Co., Ltd. (for Ms. Khine Khine U) Vs. (1) Mr. Mg Mg Lay, (2) Mr. Ko Lay& (3) Mr. Aung Myint
Judgment Date: 26 June 2014 (by Compensation)
Original Decision: 26 June 2014 (by Compensation)
Summary:
The plaintiff claimed damages for Canon Laser Printer’s Cartridge counterfeit goods. The
defendants displayed and sold the counterfeit Cartridges and Toners at defendants’stationary shops and computer & copier shops.
Fact:
Police officer inquired and investigated the defendants’ shops and seized the counterfeit
Cartridges and Toners with search forms. The Court did pre-examination and accepted thecase, take and action to the defendants for the Canon Laser Printer’s Cartridges and Toners
counterfeits.
GenuineCounterfeit

Light blue

Deep blue

Security seal: Gold colour

Security seal: Black colour

Issues:The Court did take and action to the defendants for the Canon Laser Printer’s Cartridges
and Toners by Criminal Law section 486.

88

12 Myanmar

Ruling:- Criminal Law section 486- Prima facie- P K PakeMohamad Vs. Government- AhVaDuShaku Vs. Government

1929 AIR Yangon 322

1936 AIR Yangon 96- Republic of Myanmar Vs. Maung Shwe & 2 1966 MaTaSa 616

89

13 Philippines

13

Philippines+Basic Information of Legal System
As of January, 2022

No.

Item

Details Examples

1

Administrative

Intellectual Property

organization for

Office (IPOPHL)

Details in your country (If any)

Trademark2

Trademark
Law/Act* R.A. 8293: The
Intellectual Property
Code, as amended by
R.A.s 9150, 9502, and10372* R.A. 623: Use of DulyStamped and Marked
Containers (1951), as
amended by R.A. 5700

3

Registable

Words, letters, digits,

Trademarknumerals, ideograms,
slogans, figurative signs,
mixed signs, colors
defined by a given form,
three-dimensional signs,
movement signs andholograms

4

MadridAcceded2012/7/25

RequiredIf the applicant is not domiciled or has

Protocol5

Local Agentno real and effective commercial
establishment in the Philippines, heshall designate, by a written document
filed in the IPOHIL, the name andaddress of the Philippine resident who
may be served notices and processes in
the proceedings affecting the mark.

90

13 Philippines

6

Required

Prescribed application*A copy of the mark for registration

documents forformshould be included in the application

filingform*A power of attorney is not required at
the time of filing*An application with a claim of priority
right must be filed within six (6) months
from the date the earliest foreign
application was filed. If the fact of filing
and/or registration is verifiable from theofficial website of the foreign
intellectual property office where theearliest application was filed, theapplicant is not required to submit acertified copy of the foreign application
or registration that serves as basis of theclaim of priority right. Otherwise, theapplicant shall be required to submit a
photocopy of the foreign registration
and an English translation, if necessary,
within six months from the mailing dateof the office action of the Examiner
requiring the same, subject to extensionof 1 year.
*The applicant or the registrant shall file
DECLARATION OF ACTUAL USE(DAU) of the mark with evidence tothateffect, as prescribed by the Regulations
within three (3) years from the filingdate of application. Otherwise, theapplication shall be REFUSED or themark shall be REMOVED from theRegister by the
Director.

7

Language for

Filipino or English

91

13 Philippines

filing
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

Yes*Applicant/Registrants classified as
small entities are entitled to lower
official fees (at least 50% lower thanthose paid by big entities)*A small entity shall be construed as any
business enterprise engaged in any
business activity or industry, agribusiness and/or services whether single
proprietorship, cooperative, partnershipor corporation, whose total asset is
Php100 Million or less; otherwise it
shall be considered as a big entity.

11

12

Publication ofNo.

Only applications which passed the

Unexaminedexamination stage are allowed forApplications

publication.

Request for

N/A

All applications are examined.

Yes*Trademarks are examined based on

Examination
13

Substantive
Examination

absolute and relative grounds. Taken
into consideration are the proscriptions
listed in Section 123.1 of the IP Code(RA 8293).

92

13 Philippines

14

Accelerated

Yes

Priority of action and/or examination

Examination

may be granted upon petition underoath with payment of fees and upon
approval by the Examiner to trademark
applications falling under any of thefollowing:(a) Re-filing by the same registrant or
assignee of a mark previously registeredbut:(i) removed from the Register for failure
to file the 3rd year DAU or DNU or
meet the maintenance requirement; or(ii) has expired due to non-filing or latefiling of the renewal;(b) Re-filing by the same applicant of amark previously filed but:(i) abandoned and can no longer be
revived; or(ii) refused for failure to file the 3rdyear DAU or DNU;(c) An application for registration of amark, names or abbreviation of names,
logos of any nation, intergovernmental
or international organizations;(d) An application for registration of amark, names, abbreviation of names,
logos of any sports competition
conducted within a short period of timeor when periodically conducted, theregistration of the mark is necessary to
promote goodwill or image before thecommencement of the sports activity;(e) An application for registration of amark, names, abbreviation of names,
logos of product and services ofapplicants introduced and/or

93

13 Philippines

participating in a trade mission and/or
exposition local or abroad and will be
conducted within a short period of time;(f) An application for registration of amark, names, abbreviations of names,
logos of a religious, social or charitable,
educational activity the earlyregistration of which is necessary toachieve its purpose or objective;(g) Domain names (as service mark);and(h) Trademarks, service marks, andtrade names used or to be used inInformation and Communications
Technology (ICT) infrastructure.
15

OppositionYes

Any person who believes that he would
be damaged by the registration of amark may file an opposition within 30
days from the date of publication in the
IPOPHL E-Gazette. Said deadline may
be extended thrice with 30 days eachextension.

16

Trial for

Yes

Invalidation
17

AppealYes

After the TM Examiner's final refusal of
the TM application, the refusal can beappealed to the Director of the Bureauof Trademarks.

The Decision of the

Director of Trademarks can be appealed
to the IPOPHIL Director General.
The Decision of the IPOPHIL Director
General can be appealed to the Court ofAppeals.

Finally, the Decision of the

CA can be appealed to the Supreme
Court.
18

Initial Term of

10 years from registration

94

Renewable for 10 years each renewal

13 Philippines

19

a Registration

date

periodTerm for10 years

The request for renewal can be filed

Renewalwithin 6 months prior to the expiration
date. The grace period after the
expiration date is 6 months subject topayment of surcharge.

20

Proof of Use

Yes

Period to File Declaration of Actual
Use. -The IPOPHL will not require any
proof of use in commerce upon filing ofan application. All applicants orregistrants shall file a Declaration ofActual Use (DAU) of the mark withevidence to that effect and upon
payment of the prescribed fee on thefollowing periods:(a) Within three (3) years from thefiling date of the application;(b) Within one (1) year from the fifth
anniversary of the registration;(c) Within one (1) year from date ofrenewal;(d) Within one (1) year from the fifth
anniversary of each renewal;
otherwise, the application shall berefused registration or the registered
mark shall be removed from the Registerby the Director.
The following shall be accepted as proofof actual use of the mark:(a) labels of the mark as these are used;(b) downloaded pages from the website
clearly showing that the goods are being
sold or the services are being renderedin the Philippines;(c) photographs (including digital
photographs printed on ordinary paper)95

13 Philippinesof goods bearing marks as these are
actually used or of the stamped or
marked container of goods and of theestablishment/s where the services arebeing rendered;(d) brochures or advertising materials
showing the actual use of the mark on
the goods being sold or services being
rendered in the Philippines;(e) receipts or invoices of sale of thegoods or services rendered or othersimilar evidence of use, showing that the
goods are placed on the market or theservices are available in the Philippines;(f) copies of contracts for services
showing the use of the mark.
21

Cancellation forYes

A petition to cancel a registration of a

Non-usemark under this Act may be filed with
the Bureau of Legal Affairs by any
person who believes that he is or will bedamaged by the registration of a mark at
any time, if the registered owner of themark without legitimate reason fails to
use the mark within the Philippines, orto cause it to be used in the Philippines
by virtue of a license during anuninterrupted period of three (3) years
or longer (Section 151.1 of the IP
Code).

22

E-filing

Yes

For New Application:
https://tm.ipophil.gov.ph/sp-uitmefiling/
For other TM related documents:
https://edoc.ipophil.gov.ph/eDOCfile/96

13 Philippines+Case Study 1 (Infringement against registered mark, Bad faith application)
Case Name: Zynapse v. Zynaps
Case No.: G.R. No. 211850
Parties: Zuneca Pharmaceutical, Akram Arain and/or Venus Arain, M.D. and Style ofZuneca Pharmaceutical (Petitioners)v. Natrapharm, Inc. (Respondent)
Judgment Date: 8 September 2020
Original Decision: CA-G.R. CV No. 99787/ Civil Case No. Q-07-61561
Referred Articles: Sections 122, 155 to 155.2, 159.1 of R.A. 8293 (IP Code)
Keywords: How trademarks are acquired, prior user in good faith, trademark infringement,
bad faith registration
Summary:
While use of a mark was recognized as a mode of acquiring trademark ownership under the
old Trademark Law (Republic Act 166), pertinent provisions of the Intellectual Property
Code (R.A. 8293 or IP Code), which became effective on 1 January 1998, clearly convey therule that ownership of a mark is acquired through registration.
Fact:
On 24 September 2007, the Intellectual Property Office granted trademark registration to
Respondent for the mark Zynaps covering citicoline, a drug for the treatment of
cerebrovascular disease. On November 29, 2007, Natrapharm filed with the Regional Trial
Court a Complaint against Petitioners for Injunction, Trademark Infringement, Damages
and Destruction with Prayer for TRO and/or Preliminary Injunction, alleging that
Respondents’ mark Zynaps for carbamazepine, an anti-convulsant drug, is confusingly
similar to its Zynapse mark. In their defense, Petitioners alleged that they have been
selling carbamazepine Zynaps since 2004 and as the prior users of the Zynaps mark, they
have the better right to the trademark as against a first-to-file registrant. Praying for thecancellation of the trademark Zynapse, Respondents also alleged that Petitioner registered
its trademark Zynapse in bad faith.
Issues:Who between the prior user of a mark and the first-to-file registrant has the better right?
What are the rights of a prior user in good faith?
When is there registration in bad faith?
97

13 Philippines

Ruling:The Supreme Court ruled that upon the effectivity of the IP Code on 1 January 1998, themanner of acquiring ownership of trademarks reverted to registration, as expressed in
Section 122 of the IP Code. It was the intention of the lawmakers to abandon the rule thatownership of a mark is acquired through use. As between the Petitioners, who are priorusers of the unregistered mark Zynaps, and the Respondent, who is the first- to-fileregistrant of the trademark Zynapse, the latter has the better right to the trademark.
Petitioners, however, cannot be held liable for trademark infringement and be made to pay
damages pursuant to Section 159.1 of the IP Code, which contemplates that a prior user ingood faith may continue to use its mark even after the registration of the mark by the firstto-file registrant, subject to the condition that any transfer or assignment of the mark by theprior user in good faith should be made together with the enterprise or business or with thatpart of his enterprise or business in which the mark is used. The mark cannot be transferred
independently of the enterprise and business using it.
The Supreme Court ruled that Petitioners were not able to establish bad faith registrationon the part of the Respondent that could result in the cancellation of Zynapse. Bad faith intrademark registrations is the knowledge by the registrant of prior creation, use, and/or
registration by another of an identical or similar trademark. That the parties participated in
the same medical conventions and published their drugs in the same publications is not
sufficient to prove that Respondents had knowledge of Respondents’ Zynaps mark when it
applied for registration of Zynapse.

98

13 Philippines+Case Study 2 (Registrability issue (Relative Ground))Case Name:vsCase No.: G.R. No. 228165
Parties: Kolin Electronics Co., Inc. (Petitioner)v. Kolin Philippines International, Inc. (Respondent)
Judgment Date: 9 February 2021
Original Decision: CA-G.R. SP No. 131917/ (IPO-DG) Appeal No. 14-09-64/
IPC No. 14-2007-00167
Referred Articles: Sections 123.1(d), 144.2 and 115.1 of R.A. 8293 (IP Code)
Keywords: Confusing similarity, similar/related goods, Dominancy Test
Summary:
In this case, the use of the Holistic Test in determining the resemblance of marks isabandoned. The test of dominancy is now explicitly incorporated into law in Section 155.1of the Intellectual Property Code (IP Code). The use of product and service classification(NCL) as a factor in determining relatedness or non-relatedness is also abandoned.
Fact:
On 11 September 2006, Respondent filed a trademark application for the markfortelevisions and DVD players (Nice Class 9). Petitioner opposed the application alleging thatthe mark is confusingly similar to its registered markfor automatic voltage

regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-downtransformer, PA amplified AC-DC (Nice Class 9). Respondent asserted that Petitioner’sownership over the mark is limited only to goods specified in Petitioner’s certificate ofregistration and those related thereto. Respondent insisted that televisions and DVD players
are not related to the goods covered by Petitioner’s registered mark.
Issue:
Whether Respondent should be allowed to register the

99

mark

13 Philippines

Ruling:In the determination of confusing similarity between two marks, jurisprudence hasdeveloped two tests: (a) the Dominancy Test which focuses on the similarity of theprevalent features of the competing trademarks which might cause confusion or deception,and thus infringement; and the (b) Holistic Test which requires that the entirety of themarks in question be considered in resolving confusing similarity. In this case, theSupreme Court made it clear that the use of the Holistic Test in determining theresemblance of marks has been abandoned. The test of dominancy is now explicitly
incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the "colorable imitation of a registered mark x x x or a dominant feature
thereof." Applying the Dominancy Test here, Respondent’s
Petitioner’s

mark resembles

mark because the word "KOLIN" is the prevalent feature of both

marks. Phonetically or aurally, the marks are exactly the same.
In resolving whether goods are related, the court is required to examine various factors thatcome into play such as the business and location of the goods, the nature and cost of thearticles, the descriptive properties, the purpose of the goods, et cetera. However, theinclusion of the Nice Classification of goods as among the factors has no legal basis and evencontradicts Section 144.2 of the IP Code. The NCL serves purely administrative purposes
and the classes in the NCL undergo several changes each year. In this case, the Supreme
Court also expressly abandoned the use of product and service classification as a factor in
determining relatedness or non-relatedness. In this regard, the Supreme Court ruled thatthe goods covered by Petitioner's
Respondent’s

are complementary to the goods covered byand could be considered as related. This increases the likelihood that

consumers will at least think that the goods come from the same source. Confusion ofbusiness will likely arise.

100

14 Singapore

14

Singapore+Basic Information of Legal System
As of 11 November 2021 (*Please note that the Trade Marks (Amendment) Rules 2021 came into
operation on 1 October 2021. There was also a proposed draft Intellectual Property (“IP”) (Amendment)
Bill 2021 that was published for public consultation.)

No

Item

.
1

Details

Details in your country (If any)

ExamplesAdministrativ

Intellectuale organization

Property

for Trademark

Office ofSingapore(IPOS)

2

Trademark

Trade Marks

Law/Act

Act (Chapter
332)

3

Registable

Letters, words,

Trademarknames,
signatures,
numerals,
devices(figurative
elements),
brands,headings,
labels, tickets,
shapes andcolours, or any
combinationof theseelements

4

MadridAcceded2000/10/31

Protocol101

14 Singapore

5

Local Agent

RequiredAn address for service in Singapore is required ofevery applicant for the registration of a trade mark in
Singapore. If the applicant has no address in
Singapore, it can appoint a representative or a C/O
name or an agent in Singapore. What is important isthat there is a local address for service. The
representative need not be a law firm or attorney in
Singapore.

6

Required

Prescribed(1) The application form (Form TM4) requires adocuments forapplication

representation of the trade mark. (2) A power offilingform (Formattorney is not required. (3) To claim a right ofTM4)priority, an applicant must file notice of the priority
claim in the Form TM4. Documentation regarding
the priority application claimed is generally not
required. However, under Rule 18(3) of the Rules,
the Registrar may request for documentation
certifying the validity of the priority claim during theexamination of the application.

7

Language forEnglishfiling
8

Classification

NICE
Classification

9

Multiple

YesClasses10

Fee Reduction

Not fee200% tax deduction on up to $100,000 of qualifying

reduction, but

IP registration costs incurred for each Year oftax deductions

Assessment from YA 2019 to YA 2025. 100% tax

on costs

deduction will continue to be allowable on qualifying

incurred in

IP registration costs incurred in excess of $100,000

registering

for each YA from YA 2019 to YA 2025.

patents,
trademarks,
designs andplant varieties(referred to as"qualifying

102

14 Singapore

IP")
11

Publication ofYes

If there is no objection to the application or if all of

Unexamined

the objections have been overcome, the applicant will

Applications

be informed of the acceptance of the application. The
application will be published for public inspectionin the Trade Marks Journal for a period of twomonths. During the publication period, anyinterested party
may oppose the registration of a trade mark.

12

Request for

No need to

The application will be examined to determine

Examination

request. All

whether the mark is registrable in accordance withapplications

the law.

are examined.
13

Substantive

Yes. All

Examination

applications
are examined.

14

Accelerated

No

Examination
15

Opposition

However, issuance of trade mark registration is very
fast for straight forward applications

Yes

During the publication period, any interested party
may oppose the registration of a trade mark.

16

Trial for

Yes

Invalidation
17

AppealApplication for Declaration of Invalidity - Hearing ispart of the process.

Yes

The parties can appeal the decision within 28 days
after the date of our decision. An appeal should be
filed at the High Court.

18

Initial Term of

10 years from the date of filinga Registration
19

Term forA Singapore-registered trade mark can be renewed

Renewalonce every 10 years. Each time, it can only be
renewed starting from 6 months before the expiry
date of the registered trade mark through the filingof Form TM19 with the relevant fee.

20

Proof of Use

N/A

103

14 Singapore

21

Cancellation

Yes

The registration of a trade mark may be revoked if,

for Non-use(revocation)

without valid reasons, the owner of the registered
mark has not commenced use of the mark within aperiod of five years after the completion of theregistration procedure.

22

E-filingYes

https://ip2sg.ipos.gov.sg/RPS/RPSLogin/SPLogin.a
spx

104

14 Singapore+Case Study 1 (Cancelation trials based on non-use)
Case Name: Technopharma Limited v Unilever PLC [2021] SGIPOS 11
Case No. Trade Mark Nos. T8802249B, T0808259J and T0404547Z
Parties: Unilever PLC (Registered Proprietors) and Technopharma Limited (Applicants)
Judgment Date: 22 September 2021
Referred Articles: Sections 22(1)(a), 22(1)(b) and 22(2) of the Trade Marks Act
Keywords: Revocation; non-use
Summary:
The word mark should be revoked on the ground that it has not been used in relation to anyof the categories of goods listed in its specification. The Logo Mark and the Series Mark are
likewise revoked on the grounds that (1) their use in Singapore is limited to the specificskincare products (that appear on third party website and goods that are distributed via
online sales channels) which does not correspond to the scope of their specifications, andalso (2) the forms that these marks have actually been used by the Proprietor cannot be
considered a genuine use as they do not fall within the scope of Section 22(2) of the Trade
Marks Act.
Fact:
Unilever PLC are the Registered Proprietors (“the Proprietors”) of the following trade
marks in Singapore (“Subject Marks”):

Technopharma Limited (“the Applicants”) filed applications for revocation of the Subject
105

14 Singapore

Marks on the ground of non-use.
The Proprietors’ evidence of use of the Subject Marks is as follows:

Issues:Whether the Subject Marks should be revoked on the ground of non-use for failure tocomply with Sections 22(1)(a), 22(1)(b) and 22(2) of the TMA.
Ruling:
The analytical framework for determining if the criteria for revocation on grounds of nonuse have been satisfied revolves around five “W” Issues – “Where”, “When”, “Which”,“Who” and “What”. To defeat the application to revoke trade mark registration, theregistered proprietor must show: (i) that the trade marks in question have been used in
Singapore (the “Where” Issue); (ii) that those marks have been used during those relevanttime periods defined by the statute (the “When” Issue); (iii) that those marks have beenused in relation to the goods for which the marks have been registered (the “Which” Issue);(iv) that those marks have been used by the proprietor or with his consent (the “Who”
Issue); and (v) that there has been use of the mark, either in the form in which it has beenregistered or in forms which does not alter the distinctive character of its registered form
(the “What” Issue). These five “W”s are cumulative requirements.
As to whether the use of the Logo Mark and Series Marks meet the legal standards set by
Section 22(2) of the TMA (“use of a trade mark includes use in a form differing in elements
which do not alter the distinctive character of the mark in the form in which it was
registered”), to enables the Proprietors to satisfy the “genuine use” requirements in Sections
22(1)(a) and 22(1)(b) TMA, the IP Adjudicator construed the distinctive character of the
Logo Mark and Series Marks as residing in the combinations of two components – the words“Fair & Lovely” and pictorial elements – which constitute each composite mark. The IP
Adjudicator then considered whether use of the words “Fair & Lovely” on the productpackaging images, without the dual-headed photographic pictorial element from the Series
Marks, or the dual-headed line drawing pictorial element from the Logo Mark, should be
regarded as “use in a form differing in elements which do not alter the distinctive character106

14 Singaporeof the mark in the form in which it was registered”. He determined that what appeared in
the product-packaging images made additions, alterations and adaptations to the registeredforms of the Series Marks and Logo Mark which had altered their distinctive character.
While the product-packaging designs exhibited visual cues that broadly corresponded to the
distinctive components of the Series Marks and the Logo Mark, it also appeared as if theircomponent elements had been disaggregated, reconfigured and reconstituted alongside
additional design elements (new layouts, shapes and fonts, as well as words describing thefunctionality of the products) to render these designs legally non-equivalent to theregistered forms of the trade marks.

107

14 Singapore+Case Study 2 (Registrability issue (Relative Ground))Case Name: Warrior Pte Ltd v Nippon Paint (Singapore) Co. Pte. Ltd. [2021] SGIPOS 7
Case No. Trade Mark No. 40201909725V
Parties: Nippon Paint (Singapore) Co. Pte. Ltd. (Applicant)and Warrior Pte Ltd (“the Opponent”)
Judgment Date: 23 June 2021
Referred Articles: Section 8(2)(b) and Section 8(7)(a) of the Trade Marks Act
Keywords: relative ground; marks similarity
Summary:
The Application Mark and Opponent’s Mark 1, when compared as wholes, are: (i) visually,
more dissimilar than similar; (ii) aurally, marginally more similar than dissimilar; and (iii)
conceptually neutral in relation to each other. The Application Mark and Opponent’s Mark2, when compared as wholes, are: (i) visually, more dissimilar than similar; (ii) aurally,
marginally more similar than dissimilar; and (iii) conceptually dissimilar to each other.
Fact:
Nippon Paint (Singapore) Co. Pte. Ltd. (“the Applicant”) applied to register the trade mark(“the Application Mark”) in Class 1 in Singapore. The Opponent Warrior Pte Ltd

markets its “W1” cement strengtheners under the marks

and(“Opponent’s Marks”) registered in Class 1.
Issues:Whether the Application Mark and the Opponent’s Marks are similar under the Trade
Marks Act.
Ruling:
The marks under comparison are reproduced below only for ease of reference.

108

14 Singapore

Visual Similarity
Bearing in mind that the comparison of the marks is not made side by side, but based on theimperfect recollection of the average consumer, the Hearing Officer finds that the
Application Mark has “distinguish(ed) itself sufficiently and substantially” from Opponent’s
Mark 1. The differences between the alphanumeric elements “NW1” and “W-1”, as well as
the wholly different structure and look of Opponent’s Mark 1

with the large, visually

impactful green rectangle, formed the basis of his finding. Thus, the Hearing Officer findsthat the Application Mark and Opponent’s Mark 1 are rather more dissimilar than similar
visually.
The Hearing Officer also finds that the Application Mark has “distinguish(ed) itself
sufficiently and substantially” from Opponent’s Mark 2. In addition to the different visual
impression created by the length and structure of Opponent’s Mark 2, the differences
between the alphanumeric elements “NW1” and “W-1” are sufficient to visually distinguishthe marks as wholes. The difference of the letter “N” would be very significant in the context
of very short marks such as those here.
Aural Similarity
Overall, the Hearing Officer is persuaded that the Application Mark (pronounced “N” “W”“one”) and Opponent’s Mark 1 (pronounced “W” “one”) and Opponent’s Mark 2 are
marginally more aurally similar than they are dissimilar.
Conceptual Similarity
The ideas behind the marks must manifest in their look and feel, and not in something thatis known only to its creator. Hence, putting himself in the shoes of the average consumer toconsider what the natural conceptual apprehension of the marks, in particular their109

14 Singapore

components “NW1” and “W-1”, would be, the Hearing Officer thinks that there is none,
since both marks have no particular meaning to the average consumer. Accordingly, themarks are neither conceptually similar nor dissimilar. This factor is neutral.
The main difference in the analysis of conceptual similarity vis-à-vis Opponent’s Mark 2 liesin the additional words “cement strengthener” in the latter. These words lend a definite
concept to Opponent’s Mark 2, albeit a descriptive and non-distinctive one. Where one partof the mark has no conceptual meaning, the instinctive tendency is for the average consumer
to look to other parts of the mark in a search for conceptual meaning. Since “W-1” has no
particular conceptual meaning, we end up with the unusual situation of perceiving that themark in its totality,, being a combination of the meaninglessalphanumeric term “W-1” and the descriptive words “cement strengthener”, points
conceptually to a brand of cement strengthener called “W1”. This is the idea that “lie(s)behind and inform(s) the understanding of the mark as a whole”. In this limited respect, theHearing Officer finds that the Application Mark and Opponent’s Mark 2 are conceptuallydissimilar.

110

15 Thailand

15

Thailand+Basic Information of Legal System
As of October, 2021

No.

Item

Details Examples

Details in your country (If any)

1

Administrative

Trademark Office,Department of Intellectual Property (DIP)

organization

Department offor Trademark

Intellectual Property,
Ministry of Commerce2

Trademark

Trademark Act B.E.

Law/Act

1991 Amended by
Trademark Act (No.2)
B.E.2000
and Trademark Act(No.3) B.E.2016

3

Registableperson name orTrademarksurname, word orphrase,invented word, stylized
letter or numeral,
combination colors,
signature, picture,shape, sound4

MadridAcceded2017/11/7

Not Required*Trademark owner can submit theProtocol5

Local Agent

application by himself/herself*Agent/Attorney can submit theapplication, as authorized by thetrademark owner to submit theapplication.
Non resident who want to apply for
trademark registration in Thailand can do(1) apply by himself, mentioned his officeor address for communication or (2)appoint an agent to apply for him, in this111

15 Thailand

case in the application will show both theaddress of the applicant and the agent.
6

Required

Prescribed application*Registration application with picture of

documents forform

the trademark applied for registration

filing*Authorization letter or power of attorney
and ID card of representation or
agent/attorney

7

Language for

Thaifiling
8

Classification

NICE Classification

9

Multiple

YesClasses10

Fee Reduction

N/A

In principle, any fee paid to DIP shall not
be refunded, except the law stipulates
otherwise such as the double-paid fee, thefaulty payment from the mistake of theofficer.

11

Publication ofYes

All application is published.

Yes

All application is examined.

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

No

The application is examined in the basis of

Examination
15

Opposition

first come first serve.
Yes

The opposer files an opposition within 60
days following the publication date tooppose the trademark.

16

Trial for

Yes

Interested person/party may request a

Invalidation

trial.

17

AppealYes

18

Initial Term of

10 years from thea Registration

registration date.

112

15 Thailand

19

Term for10 years

The request for renewal shall submit the

Renewalapplication to registrar not less than 3months prior to the expiration date. The
renewal within 6 months after the
expiration date also available with the extra
fee.

20

Proof of Use

Required

A distinctive trademark is a trademark
which enables the pubic or users to
distinguish the goods with which thetrademark is used from other goods.

21

Cancellation

Yes*The owner of trademark had no bona fidefor Non-use

intention to use the trademark with thegoods during the three years prior to thepetition for cancellation.
*Unless the owner can prove that suchnon-use was due to special circumstancesin the trade and not an intention not toabandon the trademark.
*Any interested person or the Registrar
may petition the Board to cancel a
trademark registration.

22

E-filing

Yes (Support page:

http://www.ipthailand.go.th/th/home.htm

Thai only)l113

15 Thailand+Case Study 1 (Infringement against registered mark)Case Name: Mr. Morakod vs Department of Intellectual Property and GCIH Trademark
Limited.
Case No. 16358/2555
Parties: Mr. Morakod vs Department of Intellectual Property
Judgment Date: N/A
Original Decision: The Thai Supreme Court Decision
Referred Articles: Revocation of Trademark Registration by the Board under Section61,
Section62, and Section63 of Thai Trademark Act B.E.2534
Keywords: good moral, bona fide, and First-to-File
Summary:
Considering the similarity of a trademark to another registered trademark, whether such asimilar trademark could mislead the origin of the products should examine the overallsimilarity, outstanding characteristics, and type of the products of both trademarks.
Fact:
The trademark "TANGO" (herein after “the cited mark”) was registered both in Thai andEnglish versions in class 30. The plaintiff's trademarks applied for registers were "TANGOTHINS," "TANGO MAXCRUNCH," and "TANGO SAPPHIRE." The Registrar refused theplaintiff’s applications, reasoning that the plaintiff's trademarks were similar to the citedtrademark. The plaintiff appealed to the Board of Appeal, but the Board of Appeal sided
with the Registrar. As a result, the plaintiff filed a case requesting the court overturn the
Board of Appeal's order. Accordingly, the Central of Intellectual Property and International
Trade Court dismiss the case. Finally, the plaintiff appealed to the Supreme Court.
Issues:What are the criteria in evaluating the trademark's similarity, which can cause confusion or
mislead the origin of the products?
The plaintiff's trademarks applied for class 30 covered many products such as chocolate, adessert made for chocolate, products made from cocoa, and candy, the same class as thecited trademark. The Registrar refused the applications based on the similarity to the citedtrademark.
The Supreme Court opined that considering the similarity of a trademarks, whether such asimilar trademark could cause confusion or mislead the origin of the products, should114

15 Thailand

examine the overall similarity, outstanding characteristics, and type of the products of bothtrademarks. For the trademarks in issue, the court opined that the key elements of the citedtrademark and the plaintiff's trademarks are "TANGO." The addition words "THIN,""MAXCRUNCH", and "SAPPHIRE" suffixed to the word "TANGO" of the plaintiff's
trademark were not the main features of the trademarks. Therefore, the word "TANGO" isthe crucial element of both trademarks. Besides, they are in the same class and were easy toconfuse and mislead the origin of the products. Therefore, the Registrar and the Board of
Appeal were correct in denying the plaintiff's applications. The court concurred with theCentral of Intellectual Property and International Trade Court and dismissed the case.
Ruling:
The court dismissed the case.

115

15 Thailand+Case Study 2 (Bad faith application)
Case Name: Kwangtong Senhung Electrical Co., Ltd. vs Appliance Co., Ltd
and Ms. Kankayla
Case No. 5452/2554
Parties: Kwangtong Senhung Electrical Co., Ltd. vs Appliance Co., Ltd and
Ms. Kankayla
Judgment Date: N/A
Original Decision: The Thai Supreme Court Decision
Referred Articles: The Trademark Act B.E. 2534, Section 27, Section 13, Section 44,
and Section 67
Keywords: Bad faith registration
Summary:
The defendant registered the trademark “JEPO” in Thailand knowing that the plaintiff had
used this trademark before. The plaintiff filed a case to revoke the defendant's trademark
registration.
Fact:
The plaintiff is the owner of the trademark "JEPO" and used in marketing the product bothin China and Thailand before the defendant applied for registration of the same trademark
in Thailand. The plaintiff filed a case to revoke the trademark registration within five years
after the registrar registered the defendant's trademark. The defendant argued that theplaintiff is not the actual trademark owner and deceived him into marketing the productwithin Thailand and then filed the case to revoke the defendant's trademark with bad faithintention. The plaintiff acted in good faith in registering this trademark.
Issues:Is the defendant registered the trademark in bad faith? Moreover, is the plaintiff, in bad
faith, filing a case to revoke the defendant's registered trademark?
The plaintiff used the trademark "JEPO" in China and Thailand before the defendant
applied for trademark registration; however, the plaintiff did not register this mark in
Thailand; on the contrary, the defendant did. In principle, the Thai Trademark Law protects
the trademark registered in Thailand. However, a person who proves that he is a legitimate
owner of the mark and has a better right on the registered trademark than the applicant canfile a case to revoke the registration within five years after the registrar registers the11615 Thailand

trademark.
The plaintiff proves by submit the export-import documents showing that the plaintiff uses
the mark before the defendant registered the mark.
Further, the documents (import doc) that the defendant submitted to the court alsoaffirmed the same fact. After the plaintiff acknowledged that the defendant claimed andregistered the "JEPO" trademark in bad faith in Thailand, the plaintiff filed a case within
five years after the registrar registered the defendant's trademark and proved that he was theactual and legitimate owner of the trademark by using the trademark before the defendant.
Furthermore, the defendant previously visited a trade show where the plaintiff showed the
products using the "JEPO" trademark. The defendant also talked to the plaintiff's staff about
the plaintiff's products at the said trade show. These facts convinced firmly the defendant
noticed that the plaintiff would be the trademark owner and should respect the plaintiff's
right to that trademark and not apply for trademark registration in Thailand. Therefore, thedefendant applied for the trademark registration in bad faith, and the plaintiff employed his
right pursuance to the Trademark Law in filing the case to revoke the defendant's trademark
was acting in good faith. Hence, the Supreme Court concurred with the Central ofIntellectual Property and International Trade Court in revoking the defendant's trademark
registration and dismissed the case.
Ruling:The Supreme Court upheld in dismissed the case.

117

16 Vietnam

16

Vietnam+Basic Information of Legal System
As of September, 2021

No.

Item

Details Examples

1

Administrative

Intellectual Property

organization forof Vietnam (IPTrademarkVietnam)

Trademark

IP Law in 2006,

Law/Act

amendment in 2009,2

Details in your country (If any)

2012, 20193

Registablea visible sign (capable

Trademarkof distinguishinggoods or services ofthe mark owner fromthose of othersubjects) in the formof letters, words,
drawings or images,
two or threedimensional shapes,
including holograms,
or a combination
thereof, represented
in one or morecolours.

4

MadridAcceded2006/7/11

Protocol5

Local Agent

Required6

Required

Prescribed*Application form includes a mark for whichdocuments forapplication form

registration

filing*A power of attorney, if via IP agent*A priority document, if any

7Language forVietnamese

filing
8

Classification

NICE Classification118

16 Vietnam

9

Multiple

YesClasses10

Fee Reduction

N/A

11

Publication ofYes

All application is publishedYes

All application is examined

Unexamined
Applications
12

Request for
Examination

13

Substantive

Yes

Examination
14

Accelerated

N/A

Examination
15

OppositionYes

Any person can file an opposition from thedate of publication of the registration

16

Trial for

Yes

Interested person/party may request a trial

Invalidation
17

AppealYes

18

Initial Term of

10 years from thea Registration

filing date

Term for10 years

19

The request for renewal can be filed within 6

Renewalmonths prior to the expiration date. The
grace period after the expiration date is 6
months.

20

Proof of Use

N/A

21

Cancellation forYes

The mark has not been used by its owner or

Non-usethe licensee of the owner without justifiablereason for five (5) consecutive years prior toa request for termination of validity, except
where use is commenced or resumed at least
three (3) months before the request for
termination

22

E-filing

Yes

Manual:https://ipvietnam.gov.vn/web/guest/huongdan-ang-ky-tai-khoan

119

16 Vietnam+Case Study 1 (Internet and trademark)Case Name: Flowerbox case
Case No.Judgment No. 938/2013/KDTM-ST of People’s Court of Ho Chi Minh city
Parties: Thuận Lê Co., ltd. vs Anh Quân Investment and Business Co., ltd.
Judgment Date: August 19, 2013
Referred Articles: Law on Intellectual Property, Articles: 124, 129 and 202
Keywords: Internet domain name, trademark, infringement
Summary:
The appellant (=the Plaintiff) claimed damages to the appellee (=the defendant) who
operates the registered internet domain name “Flowerbox.vn”, which is considered toinfringe the Plaintiff’s protected trademark rights (trademark “Flower box”) without getting
consensus.
Fact:
The Mark “Flower box, not just flower, we deliver yours feelings”, Certificate No. 161818,
was granted to the Plaintiff (Thuận Lê Co., ltd.) by the National Office of Intellectual
Property of Vietnam according to the Decision No. 6844/QD-SHTT dated on 14 April,2011. Internet domain name “Flowerbox.vn” was issued to the Defendant (Anh Quân
Investment and Business Co., ltd.) by the Vietnam Internet Network Information Center
later. The Plaintiff reminded the Defendant of the infringement of Plaintiff’s trademark
rights but the Defendant explained that this Trademark “Flower box, not just flower, wedeliver yours feelings” was protected wholly, was not protected partly for “Flower box”. The
Plaintiff sued and asked the damages (350 million VND) from the Defendant for the
infringement by Defendant’s use of both trademark “Flowerbox” and internet domain name“Flowerbox.vn” without the Plaintiff’s consent.
Issues:
The whole protection of one registered Mark (“Flower box, not just flower, we deliver yours
feelings”) does not mean anyone could use partly of this registered Mark. Moreover, thepartly use is considered as the infringement of the protected Mark if the user uses the Markin fact. In addition, the use of internet domain name that is similar to the registered Mark is
the violation of mark rights, even it is considered to the unfair competition acts which areprohibited by laws.

120

16 Vietnam

Ruling:
The court accepted partly the Plaintiff’s claim as follows:- The Defendant had to stop using both Trademark “Flowerbox” and internet domain name“Flowerbox.vn” under any means.
- The Defendant had to excuse the Plaintiff publically on newspapers Tuoi Tre and Thanh
Nien.
- The Defendant had to pay only the Court fee, not the damage sum as the Plaintiff asked
because the Plaintiff did not show the loss evidences.

121

16 Vietnam+Case Study 2 (Infringement against registered mark)Case Name: Ánh Hồng trademark vs Ánh Hậng trademark
Case No. Judgment No. 704/2004/DS-ST of People’s Court of Ho Chi Minh city
Parties: Ms. Ánh Hồng, owner of Ánh Hồng flan cake manufacture unit vs Ms.
Tâm, owner of Ánh Hậng flan cake manufacture unit
Judgment Date: 2004/04/16
Referred Articles: Civil Code, Articles: 780, 785, 788, 791, 796, 804
Keywords: Similarity in number of letters; similarity in color; flan cake
Summary:
Ms. Tam, a flan cake manufacturer hired IP Attorney to search her using trademark “ÁnhHậng and picture” and did not find out any granted marks but did not register trademark to
the NOIP. Ms. Anh Hong, filed the trademark “Ánh Hồng and picture” to the NOIP, and it
was registered. Ms. Anh Hong sued Ms. Tam for infringement of industrial property rightsof the trademark. The Court accepted the claim of the owner of the registered mark, Ms.
Anh Hong.
Fact:
Trademark “Ánh Hồng and picture” (priority date 22 February, 2000) was granted the Mark
Certificate No. 37509 for Ánh Hồng flan cake manufacture unit (the Plaintiff) that Ms. ÁnhHồng is the owner, according to the Decision No. 1638/QD-DK dated on 12 June, 2001 forflan cake, Nice classification: 30. Ms. Tâm, owner of Ánh Hậng flan cake manufacture unit
(the Defendant) explained that she used “Ánh Hậng and picture” for flan cake before 2000
when her IP attorney searched and did not find any identical or similar protected marks atthat time.
Ms. Ánh Hồng, owner of Ánh Hồng flan cake manufacture unit (the Plaintiff) sued Ms.
Tâm, owner of Ánh Hậng flan cake manufacture unit (the Defendant) with the reason thatthe defendant used trademark “Ánh Hậng and picture” for flan cake which is considered tobe similar to registered trademark “Ánh Hồng and picture”.
Issues:The principle of “first to file” is essential. Because the Defendant did not register trademark“Ánh Hậng and picture”, even they used this trademark earlier than the filing date oftrademark “Ánh Hồng and picture”, this trademark “Ánh Hậng and picture” was notprotected. When the trademark “Ánh Hồng and picture” is granted Certificate by the12216 Vietnam

National Office of Intellectual Property of Vietnam, the continuous use of trademark “ÁnhHậng and picture” is considered to infringe the industrial property rights of trademark “ÁnhHồng and picture”.
Ruling:
The People’s Court of Ho Chi Minh city sent the Official Note No. 3037/TADS dated on 25
November, 2003 to the National Office of Intellectual Property, Ministry of Science andTechnology to ask its mark expertise for “Ánh Hậng and picture”. National Office ofIntellectual Property, Ministry of Science and Technology sent the Official Note
No.522/KN dated on 12 December, 2003 to the People’s Court of Ho Chi Minh city andconfirmed that sample Mark “Ánh Hậng and picture” was similar and make confused with
Trademark “Ánh Hồng and picture” which was granted the Mark Certificate No. 37509 forÁnh Hồng flan cake manufacture unit (plaintiff) that Ms. Ánh Hồng is the owner because ofsame number of letters (only different by letter “ă” and letter “ô”) and of same color.
The People’s Court of Ho Chi Minh city accepted partly the Plaintiff’s claim.
- The Defendant (Ánh Hậng flan cake manufacture unit) had to stop all violations against
the intellectual property rights of Mark “Ánh Hồng and picture”.
- The Defendant had to withdraw all products with mark “Ánh Hậng and picture” in themarket and at the production unit.
- The court cost shall be burden by the Defendant.
- The attorney fee (by the consulting contract between the Plaintiff and consulting
company) shall be burden by the Plaintiff.
⚫

This judgment was issued before the issuance of the Law on Intellectual property.

123Quick Reference Matrix(X: Yes)
Country

MadridLocal

Language

ProtocolAgentfor FilingClassification

Multiple

Fee

Publication ofRequest for

Substantive

Accelerated

Class

Reduction

Unexamined

Examination

Examination

Examination

Opposition

Trial forAppealInvalidation

Applications

1

BrazilX

X

Portuguese

NICE

X (Only

Initial Term

Term for

Proof

Cancellation

E-of Reg.

Renewalof Usefor Non-use

Filing(years)(years)

X

X

X

X

X

X

X

X

X

10

10

for
MadridApp.)

2

Cambodia

X

X

Khmer,

NICE

X

X

X

X

X

X

10

10

X

Chinese

NICE

X

X

X

X

X

X

10

10

X

X

Spanish

NICE

X

X

X

X

X

X

10

10

X

X

X

X

X

10

10

X

X

X

X

10

10

English
3

China

X

X

4

Colombia

X

5

Egypt

X

X

Arabic

NICE

X

6

India

X

X

English

NICE

X

X

X

X
X

X

X

X (in

X

X

case ofuser isclaimed)7

Indonesia

X

X

Indonesian

NICE

X

X

X

8

Japan

X

X

Japanese

NICE

X

X

X

9

Kenya

X

X

English

NICE

X

X

10

Korea

X

X

Korean

NICE

X

11

Malaysia

X

X

English,

NICE

X

X

X

X

X

10

10

X

X

X

X

X

X

10

10

X

X

X

X

X

X

X

10

10

X

X

X

X

X

X

10

10

X

X

X

X

X

X

X

10

10

X

X

X

X

X

X

X

10

10

X

X

X

X

10

10

Malay
12

Myanmar13

Philippines

X

X

Myanmar

NICE

X

X

Filipino,

NICE

X

X

NICE

X

Tax

X

X

3

X

X

X

X

X

X

X

X

X

X

X

English14

Singapore

X

X

EnglishX

deduction
15

ThailandX

16

Vietnam

X

X

Thai

NICE

X

X

X

X

X

X

X

10

10

Vietnamese

NICE

X

X

X

X

X

X

X

10

10

124

X

We would like to thank Dr. Insan Budi Maulana and Ms. Reiko Toyosaki for supervising thisbook.

Published on March, 2022

IP Collegium
Email: ip-com@jiii.or.jp