1. Introduction

If a trademark is similar to another's earlier registered trademark and there is a risk of causing confusion among consumers, such trademark may be refused registration according to Subparagraph 10, Paragraph 1, Article 30 of the Trademark Act (the “Act”). When considering two conflicting trademarks, the court will rely on the supporting documents and evidence to decide which trademark should be protected (2018 Shin Shang Su Zi No. 96 by the Intellectual Property Court).

2. Facts

(1) The intervener (a natural person) filed a trademark application for the term “東方快車” (“Dong Fang Kuai Che” in transliteration, hereinafter referred to as “Trademark”) with the defendant (Taiwan Intellectual Property Office, “TIPO”) and the application was approved. However, the plaintiff filed an opposition action against the Trademark and the TIPO rendered a decision of “opposition dismissed.” The plaintiff refused to accept the TIPO’s decision and filed an administrative appeal but such appeal was rejected by the Ministry of Economic Affairs. Therefore, the plaintiff filed an administrative litigation with the Taiwan Intellectual Property Court (“TIPC”) and the TIPC ordered the registrant of the Trademark to participate in this litigation as an intervener.

(2) Claims of the plaintiff:

a. The plaintiff is the registrant of the trademarks “東方不敗” (“Dong Fang Bu Bai” in transliteration ) and “東方不敗 with device” (please see below). The plaintiff asserted that the intervener’s trademark registration should be revoked according to Subparagraphs 10 and 11, Paragraph 1, Article 30 of the Act, stating that trademarks shall not be registered if “being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers,” and “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.”

b. Regarding Subparagraph 10, Paragraph 1, Article 30 of the Act, the plaintiff claims that: the first two characters of both trademarks are “東方” (“Dong Fang” in transliteration) and the Trademark is designated to be used on products in class 28 including “mahjong table, electric mahjong table and trading game cards,” which is identical or highly similar with the products of the plaintiff’s trademark registrations. Moreover, as the products bearing the plaintiff’s trademarks have been distributed in Taiwan for a long time and enjoy a very high reputation, and both trademarks not only are similar but also designated are to be used on similar goods, there is a likelihood of confusion among consumers, which would affect the market order. Therefore, the registration of the Trademark should be revoked.

c. Regarding Subparagraph 11, Paragraph 1, Article 30 of the Act, the plaintiff submits supporting documents evidencing their products bearing the trademarks have acquired the ISO9000 quality management system certification. The plaintiff also submitted products pictures, catalogs, advertising documents, pictures of broadcasting vans, maintenance cars, store signs and outdoor billboards, information of more than 300 retailers throughout Taiwan, online shopping platform sales pages, sales receipts over the years, as well as a Facebook account and Youtube channel to prove their trademarks and products have become well-known among consumers.

(3) Claims of the defendant:

a. Regarding Subparagraph 10, Paragraph 1, Article 30 of the Act, the defendant asserted that only the first two characters are identical in both trademarks and the term “東方” (“Dong Fang” in transliteration, which means “oriental”) is a common word. In addition, as the last two characters of the trademarks are different, the overall appearance and pronunciation are also different. Although the plaintiff’s trademarks are relatively famous among relevant consumers, the meanings presented by the two trademarks are different, and the impression given to consumers is also different. Consumers with ordinary knowledge and experience can easily distinguish the two trademarks when paying ordinary attention when purchasing relevant products. Therefore, the similarity between the trademarks is low, and consumers should be able to distinguish the products bearing the trademarks as coming from different sources of origin.

b. Regarding Subparagraph 11, Paragraph 1, Article 30 of the Act, the defendant asserted that the ISO certification mentioned by the plaintiff is irrelevant to the use of the trademark and certain evidence materials retrieved via web search engine, product catalogues, advertisements, broadcasting vans, store signs and billboards were later than the application date of the Trademark or the dates are unidentifiable. Only some evidence bears a date before the registration date of the Trademark and the amount of invoices is still limited. Furthermore, as the plaintiff did not provide relevant information such as turnover and market share of the products bearing their trademarks, the claim that the reputation of the plaintiff’s trademarks in mahjong, electric mahjong tables and other products has been widely recognized by related businesses or consumers in Taiwan and has reached the level of well-known trademark by June 14, 2016, the registration date of the Trademark, is groundless.

3. Issues

Whether the intervener’s Trademark, designated to be used on products in class 28 including “Mahjong table, electric mahjong table, mahjong, dice, game chips, gambling chips, dice cup, game cards, chess table, chess board, poker card, board game equipment, dominoes” violates Subparagraphs 10 and 11, Paragraph 1, Article 30 of the Act when compared with the trademarks registered by the plaintiff.

4. Summary of the judgments

(1) Main text:

a. Both decisions of the TIPO and administrative appeal shall be dismissed.

b. The TIPO shall make an administrative decision of “opposition sustained” and revoke registration of the Trademark“東方快車” (“Dong Fang Kuai Che”).

(2) The TIPC found the registration of the Trademark is in violation of Subparagraph 10 , Paragraph 1, Article 30 of the Act and the reasons are:

a. Both trademarks were designated to be used on identical or similar products.

b. In view of the plaintiff’s advertising and marketing efforts of their trademarks and considering that the web search results also revealed that the plaintiff’s mahjong table are the market leader, the TIPC concluded that since the plaintiff’s trademarks are more familiar to relevant consumers, they should enjoy greater protection.

c. Since the first two characters of both trademarks are “東方” (“Dong Fang” in transliteration,) consumers may mistakenly believe that the products bearing both the trademarks are related. Furthermore, the plaintiff registered a series of trademarks with the term “東方” (“Dong Fang” in transliteration) since 1997 and all of them were designated for mahjong and gambling chips. Besides, the intervener also admitted that he was one of the plaintiff’s distributors, and since the plaintiff invested a huge amount in advertising their products, Taiwan mahjong players should have knowledge of the plaintiff’s trademark. In view of the above, it is obvious that the intervener knew of the existence of the plaintiff’s trademarks before registering the Trademark

d. Since the TIPC found the registration of the Trademark is in violation of Subparagraph 10, Paragraph 1, Article 30 of the Act, Subparagraph 11 of Article 30 of the Act (i.e., whether the plaintiff’s trademarks is well-known) does not need to be considered. 

Reference: Anthology for the 70th Anniversary of Tai E's Law Practice