23 October 2020
The Supreme Administrative Court rendered the 109-Pan-151 Decision in March 19, 2020 (hereinafter, the “Decision”), holding that in view of the differences between different cases in terms of facts and types of evidence for trademark disputes and the different results in the investigation and review of individual cases, such cases should be heard under the principle of case-by-case review and should not be bound by the judgement of another case.
According to the facts, the Appellant applied to the Appellee, the Intellectual Property Office, Ministry of Economic Affairs, to register the “OORAM” trademark (hereinafter, the “Trademark “) and designate the same for use on Class 42 of the List of Goods and Services under Article 19 of the Enforcement Rules of the Trademark Act effective at that time. The Appellee held, as a result of its review, the Trademark should not be registered and rejected the application, since the Trademark was similar to “OO Technology,” a registered trademark (hereinafter, the “Opposing Trademark”), was also designated for use on similar goods or services and existed a likelihood of confusions among the relevant consumers. After the administrative appeal filed by the Appellant was rejected, the Appellant brought an administrative action with the Intellectual Property Court (hereinafter, the ” Trial Court”) and subsequently appealed after the trial court dismissed this case.
It was first pointed out in this Decision that whether two trademarks exist a likelihood of confusions should be determined by considering: (1) the degree of distinctiveness of the trademarks; (2) whether the trademarks are similar as well as their degree of similarity; (3) whether the goods or services are similar as well as the degree of their similarity; (4) the status of diversified operation of the rights holder; (5) actual circumstances of confusion; (6) degree of familiarity of the relevant consumers with each respective trademark; (7) whether the applicant of the Trademark applies with bona fide; and (8) other factors to generally determine the likelihood of confusion among the relevant consumers. According to the Trial Court’s decision, although the arrangements, color schemes and the words that are used are different, still the major distinctive portions that leave strong impression are both foreign language word “OO”. In addition, “RAM” itself is a “Technology” product. Therefore, since consumers with ordinary knowledge and experience can easily associate the two trademarks as the same series of trademarks when purchasing and observing the trademarks at different times and in different places separately, it should be concluded that the trademarks are similar. This does not violate logical or empirical rule.
In addition, the Appellant claimed that the Trial Court split the “single word” in the Trademark “OORAM” into multiple words “OO” and “RAM” in clear violation of laws. Also, Appellant claimed by citing other cases that the Trial Court obviously violated the principle of “no discriminatory treatment”, since “OOBus” and “OOflash” had been concluded by the original trial court to be dissimilar to the Opposing Trademark. However, this Decision indicated that trademark disputes should be heard pursuant to the principle of case-by-case review due to the differences in the facts associated with individual cases and the types of evidence and should not be bound by the judgement of other cases. Therefore, the Decision ruled that the claims are unacceptable and dismissed the appeal.
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Yuki Chiang, Lee Tsai & Partners
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