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TIPO Clarifies Two Marks Decisions

09 November 2012

TIPO Clarifies Two Marks Decisions

The August TIPO Chinese Newsletter, reported in English at the Jaw-Hwa International Patent & Trade & Law Offices website, clarified that the Taipei High Administrative Court ruled correctly in 2006 in its decision that the BioNike mark was not similar to the Nike trademark.

The registrant of the Nike mark had alleged that “BioNike” mark is similar to “Nike” and was in violation of the Trademark Act.

The judge deemed that two marks are not similar to each other, that the designated goods of “BioNike” mark are “cosmetics” which are not in the same or similar business fields of the “Nike” mark, and that, according to the evidence as provided, the “BioNike” mark was first used on “cosmetics” products in 1960 and was registered in Italy in 1963 which were earlier than 1971 when the “Nike” mark was first used in the market. Therefore, it could not declare that the registrant of “BioNike” intended to imitate the “Nike” mark and to confuse the consumers by taking advantage of the well-known “Nike” mark, says the Jaw Hwa website. Further, the Court said, the existence of the “BioNike” mark would not dilute the distinctiveness or reputation of the said well-known trademark.

The registrant of “Nike” also alleged at the time that the trademark right of a well-known mark shall not be limited in the same or similar goods or services only. However, TIPO wrote, as clearly stipulated in Article 30.I(3) of the Trademark Act, the purpose of the protection of a well-known mark is not to let it extend the trademark right to other marks which are used prior to the well-known marks and have been in continual use in the market.

In its July newsletter, TIPO noted that the confusion of “concept” of trademarks should be the direct influence but not an indirect one. According to a case published by the Taipei High Administrative Court in 2006, the “jxy JuXiangYuan Since 1918 & device” mark was deemed dissimilar to “咀香園餅家及圖 CHUI HEUNG YUEN BAKERY” mark. The registrant of the “jxy JuXiangYuan Since 1918 & device” mark alleged that the Cantonese pronunciation of “JuXiangYuan” is similar to” Chui Heung Yuen despite the different spellings, but the judge held that the confusion of “concept” of trademarks should be a direct influence but not an indirect one. For this case, consumers would not be confused by the images of two trademarks no matter how they are pronounced.

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