4 July, 2018
The IP Court held that the registration of the opposed mark “熊本賀and Design" 
” should be revoked since it was likely to cause confusion to the public in that the goods/services offered under said mark could be misidentified to be coming from Japan’s Kumamoto Ken area.
The IP Court found in its Judgement 106-Hsin-Shan-Su-Tze No. 133 that the Bear Design and the Chinese characters “熊本賀” [“熊本” means “Kumamoto” in Chinese; “賀” means “to celebrate” in Chinese] constituting the opposed mark “熊本賀and Design ”,
Mr. Bo-Wei Huang, could easily cause the public to associate the mark with Japan’s Kumamoto Ken area thereby misidentify the goods/services offered under said mark to be coming from or are related to Kumamoto Ken area.
The IP Court held that the registration of the opposed mark “熊本賀and Design” shall be revoked based upon Article 30-I-(8) of the Trademark Act.
The PAC ruled that the opposed mark “
” and the cited mark “
" were similar and that the opposition petition should not have been denied.
The PAC ruled on March 15, 2018 that the opposed mark “”
and the cited mark “” had the same prefix “naviga”, and that the concept of “NAVIGATION”, “navigare” and the sailboat wave device all expressed sailing; thus, the appearance, concept and pronunciation of both marks were similar.
Since both marks were designated to the same or similar goods and the cited mark had distinctiveness, the PAC ruled that the registration of the opposed mark could confuse the relevant consumers and would likely to associate both marks to be from the same source, or that the users thereof were affiliated by organization, license, franchise or other similar relationship.
The PAC therefore reversed the TIPO’s denial of the opposition to registration of the opposed mark, and ordered that the registration of the opposed mark be revoked.
For further information, please contact:
Jennifer Lin, Partner, Tsar & Tsai Law Firm
jenniferLin@TsarTsai.com.tw
