SEA HORSE device mark survives rough ride to registration

Vietnam

In Bottger GmbH Pharmazeutische und Kosmetische Praparate (DE) v National Office of Industrial Property of Vietnam (Case 1041/KN), the Trademark Office (TO) has overturned a decision to refuse registration of a SEA HORSE device mark for medical ointments. The TO held that the mark (i) is not descriptive of the goods to which it relates, and (ii) has acquired secondary meaning through extensive use.

Bottger GmbH Pharmazeutische und Kosmetische Praparate applied for registration of its SEA HORSE device mark for, among other things, ointments and medical ingredients for bathing products with the National Office of Industrial Property (NOIP). The NOIP rejected the application pursuant to Article 6.2.c of Governmental Decree 63/CP, which states that a sign cannot be protected as a trademark if it designates the kind, quality, ingredients, intended purpose, value, place of origin or other characteristics of the goods or services concerned. The NOIP held that the mark was descriptive because Bottger's medical ointments are derived from salt water organisms and its proposed registration featured a sea horse, which is a form of salt water organism.

Bottger appealed to the TO arguing that although the ingredients of its pharmaceutical products bearing the SEA HORSE device mark are extracted from fresh and salt water organisms, they are not derived from sea horses, and do not have any characteristics associated with sea horses. It further contended that, in any event, the mark has already obtained secondary meaning through over 50 years extensive use in Vietnam and worldwide.

The TO accepted Bottger's arguments and allowed registration of the mark.

Le Hoai Duong, LÊ & LÊ, Hanoi

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