The James Bond series of movies have enjoyed worldwide recognition all over the world for many years. However, the 007 trade marks were not given famous mark status in Taiwan when they were used to oppose registration of a local trade mark comprising the same wording 007 and a similar pistol device in respect of timepieces in the year 2000. The Administrative Court then had the following findings:
First, the Court said that the determination of a famous foreign mark should be based on the recognition of the mark by the local consumers. Second, given that the relevant products branded with the marks were not produced or marketed extensively in Taiwan, and that the evidence lodged to prove the fame of the said marks abroad was not sufficient, the marks could not be recognised as well known. As such, to allow coexistence of the two parties' marks would not create consumer confusion, especially when the sales channels for films and timepieces were completely different.
A number of subsequent decisions by the Trade mark Office and the Board of Appeals in connection with oppositions filed on the basis of the 007 marks reflected the Courts' view. The authorities concurred that the fame of the marks was limited to films, video tapes and related products and could not be based upon to bar registration of the same or similar marks in respect of other goods or services.
It was not until December 2009 that the long-held view was abandoned by the Intellectual Property Court.
The IP Court acknowledged the famous mark status of one of the 007 trade marks in its Decision rendered in an Opposition filed on the basis of the marks against a trade mark comprising the same wording and a similar pistol device registered in respect of timepieces, noting that the high repute of the mark in connection with films and videotapes would help accumulate fame for the mark in other products or services in a much faster fashion. The IP Court found that the use of the opposer's mark on timepieces abroad and locally was sufficient to prove that the mark had achieved wide local recognition in respect of not only films and videotapes but also timepieces. Therefore, after taking into account the totality of factors in assessing likelihood of confusion, the IP Court ruled that to allow co-existence of the two parties' marks would engender likelihood of confusion
The owner of the opposed mark has appealed the case to the Supreme Administrative Court. Whether the IP Court's decision will be upheld or reversed will be worth watching.
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| Amanda Liu |
Saint Island International Patent & Law Offices
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