Two logos respectively being “ECOFFEE & Design壹咖啡” and “STARBUCKS COFFEE and Design”, both comprising the white word “COFFEE” on a green circumference framing a white picture on a brown background were held to be distinctive by the Taipei High Administrative Court on December 13, 2007; because the word coffee is illustrative of the designated goods and the circular device has become a weak mark.

Ecoffee Co. Ltd., the former company of Ecafe Co., Ltd. (the intervening party) filed a trademark application for “ECOFFEE & Device壹咖啡” on April 5, 2004, and said application was granted Registration No. 1104889.

However, Starbucks Co. filed an opposition against Registration No. 1104889 in accordance with R.O.C. Trademark Law, Articles 23-I-12 and 23-I-13 on April 29, 2005.  Registration No. 1104889 was assigned from Ecoffee Co. Ltd. to Ecafe Co., Ltd. on September 25, 2006. The opposition against Registration No. 1104889 was rejected on November 14, 2006. Starbucks Co. filed an appeal and after the appeal was rejected, filed an administrative suit against the rejection decision with regard to the opposition. Taipei High Administrative Court made a judgement of 96-Su-Tzu No. 1374 on December 13, 2007 and the gist of the judgement follows.

The trademarks “STARBUCKS COFFEE and Design” and “ECOFFEE & Device壹咖啡” are deemed distinguishable.  The trademark “ECOFFEE & Device壹咖啡” with the word “COFFEE” and the undesigned coffee device disclaimed is a green circular device consisting of the white word “ECOFFEE” arranged on top in the shape of a semi-circle with a white oval device similar to a coffee bean on the right and left sides, a white coffee cup emitting smoke surrounded by a circular frame in the center and the Chinese characters “壹咖啡” in the bottom.

The plaintiff's trademark “STARBUCKS COFFEE & Device” is a green circular device consisting of the white word “STARBUCKS” arranged on top in the shape of a semi-circle with a white star device on the right and left sides, a girl with long hair and a crown on her head surrounded by a circular frame in the center, and the white word “COFFEE” in the bottom on the green background.

Although the two trademarks “STARBUCKS COFFEE and Design” and “ECOFFEE & Device壹咖啡” are both concentric circular frames with English words in the circular frames, many such trademarks have been registered with regard to coffee shops and restaurants. Moreover, the word “coffee” is generic of the designated goods and should be deemed lack of distinctiveness.  Therefore, concentric circular frames with the English word “COFFEE” cannot be used as the basis for judging whether the trademarks “STARBUCKS COFFEE and Design” and “ECOFFEE & Design壹咖啡” should be deemed similar.

Additionally, the white word “ECOFFEE”, the white oval device similar to a coffee bean on the right and left sides, the white coffee cup emitting smoke surrounded by a circular frame in the center and the Chinese characters “壹咖啡” of Trademark No. 1104889 are distinguishable in pronunciation, design and creativity from the impressive white word “STARBUCKS”, the white star devices on the right and left sides, the girl device with long hair and a crown on her head surrounded by a circular frame of the plaintiff's trademark. Therefore, the two trademarks “STARBUCKS COFFEE and Design” and “ECOFFEE & Design壹咖啡” should be deemed distinguishable since consumers applying a normal level of attention would not be confused.