COMMUNITY mark has been accepted registration for Classes 25 and 35

Applied-for mark COMMUNITY under application 4-2011-28083 dated December 29th 2011 for Class 25 and Class 35 in the name of  Aritzia LP (Canada) was denied  registration by the National Office of Intellectual Property (NOIP) for the reasons of being liable to mislead, confuse or deceive consumers as to the origin, functional   parameters, intended purposes, quality, value or other characteristics of the goods or    services as stipulated in Art. 73.5 of the IP Law  and  is descriptive of the goods or services as stipulated in Art.74.2.c of the IP Law.

Representing Aritzia LP, Pham & Associates appealed the NOIP’s  refusal decision, arguing that:

(i) Regarding the NOIP’s ground for refusal based on Art.74.2.c, IP Law:  applied-for mark COMMUNITY is translated into/has meanings in Vietnamese as "community”, “association”, ”company”, “district”..., none of such terms describes goods of Class 25 “Clothing, clothing accessories, namely belts, scarves and gloves, ties; shoes, socks and hats ... ” and Class 35 “Retail store services and online retail services of clothing  accessories (belts, scarves and gloves, ties; shoes sandals, socks and hats ..). To describe the characteristics, functions, intended use purposes of products [that bear applied-for mark above] manufacturers often use words like "pretty", "beautiful", "nice", "Comfortable", "soft", "well elastic"; they do not use the word "community";

(ii) Regarding the NOIP’s ground for refusal based on Art. 73.5 of the IP Law: when seeing  the above goods/services [in Class 25 and Class 35] bearing COMMUNITY mark the consumers  do not consider that these goods/services are used for the activities of  community, association, company, or district; it does not affect consumer awareness of such products. Or saying in other words, the consumers are not mistaken or deceived when seeing or hearing about the goods/services bearing the applied-for mark in question.

(iii) The COMMUNITY mark has been accepeted to registration in many countries around the world such as Australia, Canada, European Community, Hong Kong, Russia and the United States ...

Accepting the above argument, the NOIP canceled the previous decision and issued Decision 387/QD-SHTT of January 28, 2019 to register the COMMUNITY mark according to application No. 4-2011-28083.