I. Preamble
Identifying the sources of goods or services is the main purpose of a trademark, and in order to comprehensively perform such function, registered trademarks grant exclusive rights to their registrants. Since such legal effect substantially limits the freedom to use trademarks [1], the approval of trademark applications is regulated by the Trademark Act and other relevant regulations such as the “Examination Guidelines on ‘Likelihood of Confusion’” and the “Examination Guidelines on Distinctiveness of Trademarks” issued by the Taiwan Intellectual Property Office (TIPO). In the context of these regulations, the concept of “relevant consumers” is of particular importance.
While it is clear that ordinary people are consumers who buy everyday items, this generalization may not apply to certain specialized products, of which medicines may be the best example. Some medicines can only be prescribed by professional health care workers, and some may easily be bought from general pharmacies, while others may be purchased from department stores, supermarkets, grocery stores, or even through online channels. Because of the large number of different medicines and the diversity of sales channels, it becomes very hard to define who the relevant consumers for particular types of medicines really are.
This issue is important when two potentially similar marks designating medicines are filed with the TIPO, as well as in the case when a mark designating medicines possibly implies the ingredients or nature of such medicines. The former refers to the determination of likelihood of confusion, and the latter addresses the examination of trademark distinctiveness. To provide some perspective on the definition of the term “relevant consumers” and factors to be considered when examining each case, this article will present and analyze the opinions of the Taiwan Intellectual Property Court (renamed Intellectual Property and Commercial Court on July 1, 2021) in regard to said issue.
II. Issue
What is the concept of the term “relevant consumers” for goods of medicines according to the practices of the Taiwan Intellectual Property Court in Taiwan in recent years?
III. Regulations
Points 5.2.1 and 5.3.8 of the “Examination Guidelines on ‘Likelihood of Confusion’” stipulate,
“In judging whether two trademarks are similar, consumers’ point of view should be the priority. As the key function of a trademark is to help relevant consumers identify the source of goods/services, whether two trademarks are similar shall be determined based on the level of attention exercised by consumers with common knowledge and experience when shopping. The differences in the nature of the goods will affect the degree of attention exercised by relevant consumers. In the case of general consumer products, relevant consumers normally exercise a lower level of attention, and their ability to differentiate two trademarks is weaker; thus, it is easier to have an impression of similarity. On the other hand, goods of specialty or high-priced goods/services such as medicines, cars; services of insurance and sale of real estate, their relevant consumers would normally exercise greater attention, so they are more capable of telling the difference between two trademarks, and the criteria in judging similarity will vary according to the level of ordinary attention exercised by consumers of the designated good/service.”
“The term ‘consumer groups’ refers to the actual and potential consumers of goods/services. The consumer group for commodities used by ordinary people in their daily life should be the general public, while for the goods/services that circulated among the professionals, those professionals should be the relevant consumers.”
Point 3 of the “Examination Guidelines on Distinctiveness of Trademarks” stipulates,
“Whether a trademark is distinctive depends on the perception of relevant local consumers. The so-called ‘relevant’ consumers refer to consumers who have actual experience in purchasing or using the goods or services and potential consumers who may purchase or use such goods or services in the future. … In general, consumers will pay a higher level of attention to more expensive, professional or durable goods, such as luxury goods, medical products, cars; services of insurance and sales of real estate, than daily essentials.”
IV. Judgments of the Intellectual Property Court
1. Judgment of the Intellectual Property Court 2008 Xing Shang Su Zi No. 77
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the opposition based on the Plaintiff’s marks for use on “Chinese medicines and western medicines” against an independent intervenor’s registered mark “世達心肌樂” for use on the goods “oral medicine for treating heart disease [2]” in Class 5. The case was eventually dismissed by the IPC.
(2) The court’s opinion
The oral medicine for treating heart disease which the subject mark designates must be prescribed by doctors. This means that the medicines must have been handled by doctors or pharmacists before they can reach the consumers, while the goods that the Opponent’s marks designate are topical sprays for relieving muscle soreness, which are displayed in general pharmacies and can be bought by ordinary consumers at any time. Therefore, the natures, functions, purposes, and places for sale of the goods labeled with the two parties’ marks are very different. It is unlikely that relevant consumers will confuse these goods bearing their respective marks, and thus no likelihood of confusion will occur.[3]
2. Judgment of the Intellectual Property Court 2010 Xing Shang Su Zi No. 64
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to revoke the registration for the Plaintiff’s mark “善脂瑩Lightor” for use on “cholesterol-lowering drugs; cardiovascular drugs; medication for treating cardiovascular diseases, etc.” in Class 5 owing to the similarity to the Opponent’s mark for use on “medicines for the treatment of cardiovascular and circulatory system diseases and for lowering cholesterol” based on Article 23-I-13 of the prior Trademark Act. The case was eventually dismissed by the IPC.
(2) The court’s opinion
The products of the two marks involved that are actually in use are both medicines for lowering blood lipids to reduce the effects of chronic diseases. Doctors often issue continuous prescriptions and ask patients to get medicines from pharmacies authorized by the National Health Insurance Administration. Therefore, the consumer groups for these goods are not limited to doctors, pharmacists and other professionals, but also include the general public, which has little knowledge about medicines. Accordingly, it is not proper to conclude that the relevant consumers will pay a higher level of attention merely based on the fact that the designated goods of the two marks involved are both medicines which should be prescribed by doctors. [4]
3. Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 77
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the opposition based on the Plaintiff’s marks for use on “medication for the treatment of neurological diseases, dystonia, etc.” against the independent intervenor’s registered mark “ZENTOX and Device” for use on “muscle relaxant, amino acid solution, medicines for human purposes, western medicines, etc.” in Class 5. The case was dismissed by the IPC, after which the Plaintiff’s appeal was also dismissed in a judgement from the SAC.
(2) The court’s opinion
Most botulinum products are purchased by professional doctors having relevant knowledge and experience; therefore, no likelihood of confusion and misidentification between the subject mark and the Opponent’s marks will exist. [5]
4. Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 131
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the opposition based on the Plaintiff’s marks for use on “medication for the treatment of neurological diseases, dystonia, smooth muscle disease” and other goods in Class 5 against the independent intervenor’s registered mark “Botulax and Device” for use on “drugs for treating neurological diseases, drugs for treating dystonia, drugs for treating autonomic disorders, etc.” in Class 5. The IPC made a judgement to overrule the administrative appeal decision and the original decision; therefore, the independent intervenor filed an appeal before the SAC, but the appeal was dismissed in a judgement from the SAC.
(2) The court’s opinion
The subject mark and the Plaintiff’s mark are highly similar, and the designated goods for each mark are all related to western medicines, medicines for human purposes, facial wrinkle removal and beauty, etc. Therefore, even for professionals such as doctors specialized in the field of aesthetic medicine, it is still possible that they may mistake the subject mark for the Plaintiff’s earlier registered mark. [6]
5. Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 160
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the application for the mark “KEMOPLAT” for use on “medicines for human purposes, medicinal agent for human use, antineoplastic drug” in Class 5 owing to the similarity to an earlier registered mark for use on “western medicines, Chinese medicines, anti-inflammatory and pain relief patches, etc.” in Class 5 based on Article 23-I-13 of the prior Trademark Act. The IPC made a judgement to overrule the administrative appeal decision and the original decision.
(2) The court’s opinion
The goods of the subject mark that are in actual use are injectable medications for anticancer treatment. According to the drug permit license and package insert issued by the Ministry of Health and Welfare, these medicines are limited to being used by doctors …. The relevant consumers of the designated goods of the subject mark are doctors who pay higher attention and have relevant professional knowledge, while the relevant consumers for the earlier registered mark are from the general public. Therefore, the scopes of relevant consumers of each mark are different. [7]
6. Judgment of the Intellectual Property Court 2013 Xing Shang Su Zi No. 64
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to revoke the Plaintiff’s registration for the mark “倍顧康” for use on “Chinese medicines, western medicines, anticancer drugs, nutritional supplements, etc.” in Class 5 owing to the similarity to the marks of the Opponent for use on “Chinese medicine, western medicine, etc.” in Class 5 based on Article 23-I-13 of the prior Trademark Act. The case was dismissed by the IPC, after which the Plaintiff’s appeal was also dismissed in a judgement from the SAC.
(2) The court’s opinion
The relevant consumers of pharmaceutical drugs, nutritional supplements and food for babies are not limited to professionals such as doctors, pharmacists, etc., as ordinary consumers may also purchase these products by themselves from pharmacies or stores. Therefore, if these products are labeled with similar trademarks, confusion and misidentification may still arise among relevant consumers. [8]
7. Judgment of the Intellectual Property Court 2013 Xing Shang Su Zi No. 94
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to revoke the Plaintiff’s registration for the mark “Lasyn” for use on “medicines for human purposes, inotropic agents, diuretics, etc.” in Class 5 owing to the similarity to the mark of the Opponent for use on “western medicines” based on Article 23-I-13 of the prior Trademark Act. The case was dismissed by the IPC, after which the Plaintiff’s appeal was also dismissed by a ruling from the SAC.
(2) The court’s opinion
The subject mark and the Opponent’s mark both designate goods of pharmaceutical drugs, which are highly specialized. Therefore, most of the relevant consumers for these goods are professionals in the field of medical affairs. These professionals will pay more attention when purchasing…. [9]
8. Judgment of the Intellectual Property Court 2017 Xing Shang Su Zi No. 83
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the Plaintiff’s application for the mark “CHAP” for use on “medicines for human purposes, diagnostic test reagent, hyaluronic acid for surgery or plastic surgery, etc.” owing to the similarity to the earlier registered mark for use on “oral pain relievers and/or demulcents” in prior local Class 12 based on Article 30-I-10 of the Trademark Act. The case was eventually dismissed by the IPC.
(2) The court’s opinion
The Plaintiff claimed that the sales channels for the products provided by the owner of the earlier registered mark are general retail pharmacies and regular retail malls, while the designated goods of the subject mark must be used under the guidance of professional health care workers, which proves the significant difference in the natures of the goods of the two marks. However, the scope of medicines for human purposes to which the subject mark designates is very broad, and there is no restriction requiring that such goods should be used under the guidance of professional health care workers. Therefore, the possibility of confusion due to high similarity cannot be precluded. [10]
9. Judgment of the Intellectual Property Court 2019 Xing Shang Su Zi No. 137
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the IPC because the TIPO made a decision to reject the Plaintiff’s application for the mark “Delivering Hope for Life” for use on “antibiotics, anticancer drugs, western medicines, medicinal agents for human use [11], etc.” in Class 5 based on Article 29-I-3 of the Trademark Act. The case was dismissed by the IPC, after which the Plaintiff’s appeal was also dismissed in a judgement by the SAC.
(2) The Court’s opinion
After reviewing the designated goods or services, including analgesics, antibiotics, steroids, antihistamines, medicines for human purposes, western medicines, medicinal agents for human use, disinfectant for human use, pharmaceutical drugs, pharmaceutical preparations, etc., as well as the services of research in the field of physics research, chemical research, etc., it was deemed that the relevant consumers for the above goods and services include professionals as well as the general public. [12]
10. Judgment of the Intellectual Property Court 2020 Xing Shang Su Zi No.26
(1) Synopsis
The Plaintiff lodged an Administrative Suit before the Intellectual Property Court (IPC) because the TIPO made a decision to revoke the Plaintiff’s registration for the mark “顧立關” for use on “western medicines” in Class 5 owing to the similarity to the Opponent’s mark for use on “medicines for human purposes, diagnostic test reagents, etc.” based on Article 30-I-10 of the Trademark Act. The case was dismissed by the IPC, after which the Plaintiff’s appeal was also dismissed by a ruling by the Supreme Administrative Court (SAC).
(2) The court’s opinion
Although the Plaintiff had submitted a market survey report claiming that “medical institutions and doctors” are familiar with the subject mark and the products of said mark, and thus there is no confusion and misidentification between the subject mark and the Opponent’s mark …, the Plaintiff’s survey report only targeted relevant professionals such as doctors, nurses, and purchasers and administrative staff of medical institutions, but it did not include relevant consumers who actually have the needs for western medicines and nutritional supplements, etc. … [13]
V. Analysis
From the judgments cited above, it is evident that the IPC currently follows no consistent definition of “relevant consumers” for medicines. Some of the judgments consider that the relevant consumers of medicines are professional doctors, while some deem that the relevant consumers are the general public, and there are even more judgements indicating that both professionals and the general public are the relevant consumers of medicines.
Although one may assume that the above situation is caused by the differences between either the designated goods of the marks or the goods that are actually in use, it is discovered that such causal relationships are not inevitable. Taking the above indicated Judgment of the Intellectual Property Court 2010 Xing Shang Su Zi No. 64 and the Judgment of the Intellectual Property Court 2008 Xing Shang Su Zi No. 77 for example. The two subject marks in each of the cases both designate similar goods; namely, medicines for the treatment of heart diseases, where all these medicines can only be acquired through doctors’ prescriptions and should be administered orally. The former judgement concluded that both professionals and the general public are the relevant consumers, while the later judgement did not come up with the same conclusion.
In addition to the above point, another issue may be the broad scope of the goods or the sub-class headings in regard to medicines published by the TIPO. As can be seen in the above judgements, there are many subject marks that designate “medicines for human purposes, pharmaceutical drugs, western medicines,” and such goods equally cover prescription drugs and nonprescription drugs [14]. Unless the actual use of these medicines clearly indicates the diseases that they are intended to be used for or shows the channels through which consumers may obtain such medicines (such as the Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 160), the Court tends to avoid making a decision on distinguishing the relevant consumers for respective designated goods between professionals and the general public (such as the Judgment of the Intellectual Property Court 2013 Xing Shang Su Zi No. 64, Judgment of the Intellectual Property Court 2017 Xing Shang Su Zi No. 83 and Judgment of the Intellectual Property Court 2019 Xing Shang Su Zi No. 137 as indicated above).
VI. Conclusion
The relevant consumer’s greater attention should be discriminated from the lower attention of the others when it is the good of medicines in dispute based on the aforementioned local regulations. However, it is discovered that under the practice of the Court in recent years and the classification of goods that the TIPO currently applies, it may be challenging for the Court to identify the relevant consumers of each medicine if their medical indications are not revealed in the specification or cannot be supported by abundant evidence proving their actual use. In fact, in addition to the Judgments indicated above, there are quite a few Judgments in which the Court did not stand clearly in a certain position for the determination on the relevant consumers of the medicines [15]. Consequently, in order to avoid the possible uncertainty regarding the issues of confusion and distinctiveness, for an applicant with trademark applications designating goods of medicines, it would be wise to list the names of the medicines as specifically as possible.
References
[1] Intellectual Property Office, MOEA, Commentaries on the Provisions of Trademark Act, p. 2-3 (2021) [經濟部智慧財產局，商標法逐條釋義，頁2-3。(2021)].
[2] This registration was filed with the designated goods “western medicines, arthritis medicine,” but these designated goods were reduced and amended to “oral medicine for treating heart disease” soon after the independent intervenor’s registered mark was opposed by the Plaintiff.
[3] Judgment of the Intellectual Property Court 2008 Xing Shang Su Zi No. 77 [智慧財產法院97年度行商訴字第77號判決].
[4] Judgment of the Intellectual Property Court 2010 Xing Shang Su Zi No. 64 [智慧財產法院99年度行商訴字第64號判決].
[5] Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 77 [智慧財產法院 101 年度行商訴字第 77 號判決].
[6] Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 131 [智慧財產法院101年度行商訴字第131號判決].
[7] Judgment of the Intellectual Property Court 2012 Xing Shang Su Zi No. 160 [智慧財產法院 101 年行商訴字第 160 號判決].
[8] Judgment of the Intellectual Property Court 2013 Xing Shang Su Zi No. 64 [智慧財產法院102年度行商訴字第64號判決].
[9] Judgment of the Intellectual Property Court 2013 Xing Shang Su Zi No. 94 [智慧財產法院102年度行商訴字第94號判決].
[10] Judgment of the Intellectual Property Court 2017 Xing Shang Su Zi No. 83 [智慧財產法院 106 年行商訴字第 83 號判決].
[11] This term was “medicines and medicinal agent for human purposes” before it was amended by the TIPO ex officio.
[12] Judgment of the Intellectual Property Court 2019 Xing Shang Su Zi No. 137 [智慧財產法院 108 年度行商訴字第 137 號判決].
[13] Judgment of the Intellectual Property Court 2020 Xing Shang Su Zi No.26 [智慧財產法院109年度行商訴字第26號判決].
[14] The TIPO’s, MOEA, interpretation of the question whether the standard for judging the similarity will be different between prescription drugs and nonprescription drugs when the names of the medications are used as trademarks (§§68, 69, 70, 95, 97 of the Trademark Act (103/2) https://topic.tipo.gov.tw/trademarks-tw/cp-515-860165-4264a-201.html#:~:text=%E5%9B%9B%E3%80%81%E6%9C%89%E9%97%9C%E6%89%80%E8%A9%A2%E8%97%A5%E5%93%81,%E4%B9%8B%E5%95%86%E6%A8%99%E4%BD%BF%E7%94%A8%E8%A1%8C%E7%82%BA%E3%80%82?adlt=strict (Last review: January 19, 2023) [經濟部智慧財產局，藥品名稱作為商標使用，其近似判斷標準是否因處方用藥或指示用藥有所不同之釋疑（商標法§68、69、70、95、97）（103/2），https://topic.tipo.gov.tw/trademarks-tw/cp-515-860165-4264a-201.html#:~:text=%E5%9B%9B%E3%80%81%E6%9C%89%E9%97%9C%E6%89%80%E8%A9%A2%E8%97%A5%E5%93%81,%E4%B9%8B%E5%95%86%E6%A8%99%E4%BD%BF%E7%94%A8%E8%A1%8C%E7%82%BA%E3%80%82?adlt=strict (最後瀏覽日: 2023年1月19日)].
[15] Judgment of the Intellectual Property Court 2009 Xing Shang Su Zi No. 91 Judgment of the Intellectual Property Court 2009 Xing Shang Su Zi No.161; Judgment of the Intellectual Property Court 2014 Xing Shang Su Zi No. 45;
Judgment of the Intellectual Property Court 2017 Xing Shang Su Zi No.118.
[智慧財產法院98年度行商訴字第91號判決；智慧財產法院98年度行商訴字第161號判決；智慧財產法院 103 年行商訴字第 45 號判決；智慧財產法院 106 年行商訴字第 118 號判決].
*Trademark Division of Tai E International Patent & Law Office
