An Observation of The Main Part of The Logos (No. 48/ 2012 of the IP Court)
(The trademark in dispute) vs. (The trademarks cited as the bases in the Invalidation)
The complainant filed the trademark in dispute designating the goods of dolls and toys and being allowed for registration (Reg. No.1313000) by the TIPO (the defendant). A third party filed an Invalidation application against the trademark in dispute based on the cited trademarks on the grounds of the old Trademark Act, Articles 23.I.(12), (13) and (14). Through the examination of the TIPO, the trademark in dispute was invalidated on the ground of the old Trademark Act, Article 23.I.(13). The complainant’s petition of Appeal up to the MOEA was failed, so the complainant further raised a lawsuit with the IP Court against the TIPO’s decision of invalidation.
According to Article 23.I.(13) of the old Trademark Act (Article 30.I.(10) of the current Trademark Act), a trademark application shall be rejected if the proposed trademark is identical or similar to a registered trademark or a proposed trademark of a preceding application that is designated for use on identical or similar goods or services thereof and hence likely to cause confusion to relevant consumers. The cited trademarks used on toys, stationary and clothing were well-known marks, so the cited trademarks owned broader protection on their trademark rights. The trademark in dispute was deemed similar to the cited trademarks designating the same or similar goods. It might mislead the consumers to believe that the goods bearing the trademark in dispute were from the same source or the complainant was an affiliated company, or has license relationship, franchise relationship or the like with the owner of the cited trademarks.
The complainant claimed that the trademark in dispute and the cited marks were different in color, gesture, number and words, so the overall appearance, concept idea and pronunciation sound of the trademarks were different. The consumers would not be misled by the source of the goods from both trademarks. The original decision of the TIPO dissected the trademarks when judging the similarity of the two trademarks which violated the rules that the trademarks must be considered in their entirety.
However, in the opinions of the IP Court, although the similarity of trademarks should be judged in their entirety by a separate comparison, when the specific part of a trademark could attract other’s attention and was more distinctive, the comparison of two trademarks could be dissected on the distinctive part of the trademarks (Case Nos. 265, 277 and 1144 in 1966, 1967 and 1984). Therefore, when the specific part of a trademark was similar to another mark and caused a critical influence on the judgment of the similarity of two marks, they could not be deemed dissimilar (Case No.180 in 2000).
In this case, the features of the two trademarks were both the bears with round faces and soft shapes, the dark dots of their eyes, white color on the noses and mouths, and the white bellies. The similar designs on their ears, faces, bodies, arms and legs were the specific parts of two marks which could attract the attention of consumers. The similarity of the two trademarks was not influenced by the different color, gesture, number and words thereon. So, the trademark in dispute was deemed confusedly similar to the cited trademarks.
Source: TIPO Newsletter, Issue No. 80, Date: February, 2013
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
