Fact pattern:

Formosa Blue Way Jean Co., Ltd. (hereinafter referred as Applicant) filed a trademark application “La Boitier” in Class 25 on April 15, 2005, then transferred the subject application to Texworld Apparel Co., Ltd. (hereinafter referred as Plaintiff), before said mark was registered on November 16, 2005.

Blue Way Kabushiki Kaisha (hereinafter referred as Blue Way Japan) filed an opposition on grounds of the mark being in violation of Article 23-I-12, 13 and 14 of the Trademark Law.

Although Blue Way Japan withdrew the captioned opposition soon after filing, the Intellectual Property Office (TIPO) proceeded to examine, found the opposed mark violated Article 23-I-14 and decided that the referenced trademark should be revoked.

After the Plaintiff lost the Appeal at the Ministry of Economic Affairs, they raised the Administrative Suit.

Article 23-I-14:

Any trademark that is identical or similar to a trademark that has been used prior by another person on the identical or similar goods or service, and the applicant thereof is aware of the existence of the said trademark through contractual or business connections, or any other relation ship with the said person will be rejected. However, the aforementioned shall not apply to an application filed with consent from the said person.

Issue:

Whether any contractual or business relationship existed at the time or prior to the filing date of the opposed mark?

If the aforementioned Article is applied to this case, then, the registration of the subject mark should be revoked.

In the Opposition argument, Blue Way Japan claimed that they adopted and registered “ET BOITE” for jeans in Japan in 1986 and have continuously sold articles bearing said mark in Japan since then, in 1991 they entered into and executed a cooperation agreement with the Applicant for Taiwan market. They also submitted various advertising materials to show use of the mark. The opposed mark was filed on April 15, 2005. The filing date is clearly later than the date of the first use of “ET BOĬTE” in both Japan and Taiwan.

Comparing the relevant two marks from appearance, the terms “boîtier” and “boîte” are quite similar, respectively meaning “cases” and “box” in French. The two French words have similar meaning. Accordingly, the Court deemed the two marks are similar in appearance, connotation and pronunciation. The goods covered by each mark relate to jeans. Thus, its respective material, purpose and function are quite similar. Moreover, marketing channel and consumers of the relevant marks should be similar and thus likely to cause confusion.

From the documents submitted, there is no doubt that Blue Way Japan first used the subject mark and that the Applicant was aware of Blue Way Japan's mark through a business relationship. Although transferring the captioned application to the Plaintiff on May 12, 2005, the Applicant filed the subject application without prior consent from Blue Way Japan. The Court decided that Article 23-I-14 should be applied and the referenced mark should be revoked.

Comment:

This case is not complicated, and in general, a mark should be invalidated when all of the following conditions apply.

1. It is clear that the other person adopted and used its mark earlier than the filing date of the captioned application.

2. There is sufficient evidence to prove contractual or business relation between the applicant and said other person.

3. The relevant marks and designated goods or services are identical or similar.

However, in this case, the application was transferred to a third party that had no business of contractual agreement with the opposition party. This judgment therefore clears up the ambiguity that the original applicant and not an assignee is investigated under Article 23-I-14. Since, Blue Way Japan, the opposition party, submitted sufficient evidence to prove use of its mark and the contractual relationship with the Applicant, transferring the application to another will not alter the fact that the Applicant was aware of the mark and filed said mark without prior consent. Although Blue Way Japan withdrew the opposition, TIPO may continue examination of the subject registration under its own discretion to protect general consumers from fraudulent registration.

Plaintiff's Mark

 Blue Way Japan's Mark