On December 4, 2012, the Ministry of Science and Technology (MOST) reversed the decision, dated May 12, 2011, of the National Office of Intellectual Property (NOIP) in which the latter found that VOSFAREL and VOSRAREL–DOMESCO were not confusingly similar to VASTAREL and that VOSRAREL–DOMESCO was registrable as a trademark.
On May 4, 2000, DOMESCO Medical Import Export Joint Stock Company (VN) (Applicant) filed an application for registration of VOSFAREL as a trademark for pharmaceutical products in Class 5. On July 25, 2001, BIOFARMA / LES LABORATOIRES SERVIER (FR), represented by Lê & Lê, lodged an opposition based on its earlier International Registration No. 221430 for the trademark VASTAREL for pharmaceutical products in Class 5. Under relentless pressure from the Opposer, the Applicant changed its pending trademark VOSRAREL to VOSRAREL–DOMESCO which was accepted by the NOIP. BIOFARMA / LES LABORATOIRES SERVIER (Opposer), however, did not accept this change. After many long-time discussions, on May 12, 2011, the NOIP issued the decision to reject the opposition. On June 27, 2011, the Opposer appealed against the NOIP’s decision to the MOST.
In its first response, dated April 16, 2004, responding the opposition, the NOIP contended that VOSFAREL was not confusingly similar to VASTAREL, arguing:
The two trademarks share the same suffix “REL” which is very common for pharmaceuticals (hundreds of pharmaceutical trademarks with the suffix “REL” coexist in Vietnam) therefore the difference [between the two trademarks] is made by the prefixes “VOSFA-“and ‘VASTA-“. These two prefixes have the same number of syllables, but these syllables are not similar therefore pronounced differently.
The Opposer’s attorney argued that the NOIP erroneously evaluated the likelihood of confusion because it did not assess the trademarks as a whole – indeed, the NOIP mechanically dissected the trademarks in question, ignored the suffix “REL”, and only assessed the similarity of sound of the after-dissect marks, “VOSFA” and ‘VASTA”. The Opposer’s attorney contended that the NOIP could not assume that the consumer would have the opportunity to make a side-by-side comparison of the trademarks and that the NOIP should have presumed that the consumer may vaguely remember trademark VASTAREL at the time he/she encounters trademark VOSFAREL. The Opposer’s attorney argued that, in fact, the two trademarks, VASTAREL and VOSFAREL, were much likely to cause the consumer to be confused, both visually and phonetically, because: (1) the main structure (V-S-AREL) was shared by, placed in the same order and position in, both VASTAREL and VOSFAREL; (2) the different letters T – F are quite visually similar, especially they are written in lower case form – “vastarel” and “vosfarel”; and (3) “VA-“ and “VO-“ are pronounced very similarly, and the middle syllables of the two trademarks are pronounced nearly the same because they share the same vowel A when F and T both are voiceless consonants.
The Opposer’s in-house counsel also contested the NOIP’s information that “hundreds of pharmaceutical trademarks with the suffix “REL” coexist in Vietnam”. She submitted an IMS search for cardiovascular pharmaceuticals ending with "REL" sold on the market in Vietnam, showing that there were only less than 10 pharmaceutical trademarks with the suffix “REL” and three (03) of them were VASTAREL.
In addition, the opposer’s attorney pointed out repeatedly that apart from the similarity of appearance and sound of the two trademarks, the NOIP should have considered other factors in determining whether VOSFAREL was likely to confuse the consumer about the source, affiliation of the Applicant’s goods, including (1) the similarity of the goods bearing the two trademarks (both are pharmaceutical products and, in fact, both are film-coated tablets for treatment of the same disease and contain the same main ingredient “Trimetazidine 20mg”, and therefore sold in the same stores for the same kind of patients) and the fact that doctors often scrawl in writing out prescriptions and therefore pharmacists misread them, which increase considerably the risk of confusion; (2) the well-known status of VASTAREL which should have been accorded a broader scope of protection; (3) the bad faith of the applicant (the Applicant used to be the Opposer’s buyer and distributor selling a large amount of VASTAREL pharmaceutical products in Vietnam, and then intentionally copied nearly entirely color, box size, representation of box, blisters and tablets of the Opposer), which should have been taken as circumstantial evidence that the Applicant succeeded to confuse the consumer, and led to a finding of infringement; and (4) the evidence of actual confusion the Opposer provided (many letters of doctors and patients were sent to LES LABORATOIRES SERVIER claiming the confusion due to the substantial similarity between the two trademarks), which was not necessary to prove the likelihood of confusion; if available, however, it should have been highly persuasive.
Silent on the bad faith and actual confusion factors, in its Decision dated May 12, 2011, in response to the well-known status factor, the NOIP argued that “Additionally, if trademark VASTAREL were considered well-known, widely used in pharmaceuticals field, this would demonstrate more clearly that two trademarks in question could be inherently distinguishable…”
According to this argument of the NOIP, the more well-know a mark, the better the consumer pictures the mark in his/her mind, and therefore, the better the mark is distinguishable – it means similar marks can come very close to a well-known trademark without causing confusion for the consumer, thus without constituting an infringement of the well-known trademark. In other words, the NOIP contended that the more well-know a trademark, the less its scope of protection is obtained.
By contrast, the Opposer’s attorney took the position that, without a doubt, this NOIP’s argument was completely contrary to the provisions as provided for in the trademark law that a well-known trademark has a broader scope of protection than an ordinary trademark, meaning that a broader scope of confusion – not only as to source, but also to affiliation – must be considered when evaluating infringement and therefore infringement may be easier to establish. In support of his position, the Opposer’s attorney submitted the evidence showing that many doctors and patients questioned the Opposer whether VOSFEREL was a product of an affiliate of the Opposer for the market in Vietnam.
In response to similarity of the goods, the NOIP argued that because pharmaceutical goods might affect the public health, purchasers had to be careful to choose them and therefore “in fact, there will be no confusion concerning the use of the pharmaceutical products bearing the trademarks in question.” This NOIP’s argument, according to the Opposer’s attorney, not only seemed to be inconsistent with the provision as well set up in the NOIP’s trademark examination manual that for pharmaceutical marks examiners “should take into consideration the danger” caused by the confusion for the consumer”, but also ignored the fact that a lot of consumers were actually confused between the two trademarks.
With regard to the changed trademark VOSRAREL–DOMESCO (formed by adding DOMESCO and a hyphen (-) into the challenged trademark VOSFAREL), the Opposer’s attorney argued that even if the challenged trademark was amended to VOSFAREL–DOMESCO, the likelihood of confusion was the same as before because VOSFAREL is still strong and main part of, and separates from, the composite trademark VOSFAREL–DOMESCO. VOSFAREL will remain in the presentation and that this addition will not dispel the risk that consumers who could mistakenly conclude that the products originate from the same source or otherwise originate from affiliated companies.
The MOST upheld the appeal of the Opposer, finding that the changed trademark VOSRAREL–DOMESCO was confusingly similar to VASTAREL and therefore was unable be registered.
Based on this decision of the MOST, on June 11, 2013, the NOIP notified the Applicant of its provisional refusal of the changed trademark VOSRAREL–DOMESCO. On October 10, 2013, the NOIP issued a final refusal to register the trademark after having considered the Applicant’s request for reconsideration, in which the Applicant’s attorney repeated his specious arguments that the two trademarks are distinguishable as a whole, and that the changed trademark had been used long enough in Vietnam by the Applicant to make the consumer recognize it, meaning that there was no likelihood of confusion of the two trademarks in question.
No appeal of the final refusal was lodged to the MOST within 90 days from October 10, 2013 as required by law. However, an appeal, made to the administrative Court of Hanoi, is still open up to October 10, 2014.
Lê & Lê attorney Le Hoai Duong represented BIOFARMA/LES LABORATOIRES SERVIER.