“Baby Boss & device” V.S. ”Boss”, “Hugo Boss” and “Boss Hugo Boss”

BossFact
Based on the Article 23 I (12) and 23 I (14) of the former Trademark Act in effect at the time of the trademark at issue being approved to registration, the HUGO BOSS Trade Mark Management GmbH & Co. KG (hereinafter “the Appellant”) filed an invalidation application against Babyboss City Limited’s (hereinafter “the Appellee”) trademark registration “Baby Boss & device” (hereinafter “trademark at issue”) designating the goods of “candies, chocolate bars, cookies, popcorns and etc.” The TIPO once accepted the Appellant’s allegations and cancelled the trademark at issue.

Article 23 I (12) of former Trademark Act [Equivalent to Article 30 I (11) of the current Trademark Act]

A trademark shall not be registered in any of the following:

(12) being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application;

Article 23 I (14) of former Trademark Act [Equivalent to Article 30 I (12) of the current Trademark Act]

One that is identical or similar to a trademark that has been used prior by another person on the identical or similar goods or services, and the applicant thereof is aware of the existence of the said trademark through contractual, geographical, or business connections, or any other relationship with the said person. However, the aforementioned shall not apply to an application filed with consent from the said person;

The registrant, Babyboss City Limited, then filed an appeal and an administrative litigation sequentially against the decision. The appeal decision and the original action were revoked by IP Court.

The Appellant dissatisfied IP court’s decision so filed an appeal to the Supreme Administrative Court. The Supreme Administrative Court remanded the case to IP court for the second trial. The appeal decision and the original action remained revoked in the second instance. The Appellant accordingly filed another appeal to the Supreme Administrative Court. The Supreme Administrative Court dismissed the Appellant’s appeal.

The Supreme Administrative Court’s viewpoints:

The Appellant’s marks are mainly composed of plain words. However, the trademark at issue contains three colored figures (a chef, a painter and a fireman) with the words “Baby Boss” occupied only a relatively small portion of the mark. The trademark at issue creates completely different impression to consumers from the Appellant’s marks. The Supreme Administrative Court assumes that the Appellant’s marks and the trademark at issue are with low similarity.

In addition, the designated goods/services of the parties are in distinguishable fields and markets. Though the Appellant’s marks have been well-known to the consumers, the evidence of use submitted by the Appellant failed to prove that their business diversification has reached the field of food/provisions. Based on the aforesaid reasons, the trademark at issue does not cause confusion to the relevant consumers concerning the origin of goods/services. Accordingly, the Supreme Administrative Court dismissed the Appellant’s appeal in this case.

Source: Database of the Judicial Yuan

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