The Taiwan Trade Mark Act stipulates that any mark identical with or similar to a mark registered or filed earlier by another shall be unregistrable. In assessing whether a junior mark is similar to a senior mark, the two marks are generally viewed in their entireties. However, in a recent opposition case, questions have arisen as to whether a junior mark incorporating several discrete components respectively similar to a series of senior marks will be deemed a similar mark and whether the form under which a senior mark is used in commerce will be considered in the assessment of likelihood of confusion.
In this case, the opposed mark is a coloured, two-dimensional mark consisting of Chinese and Japanese characters, a fish device and a wave-pattern background in addition to the registrant's house logo. The opposition was based on a number of senior marks including a Japanese character mark, two composite marks each consisting of characters and a wave device and two fish device marks. Both parties' marks are designated for use on condiments in Class 30.
The IP Court held that the opposed mark is confusingly similar to the marks because it contains a similar wave pattern, similar Japanese characters and a similar fish device. The Court also took into consideration the opposing party's combined use of the marks on product packaging and found that the orange background colour of the opposed mark is similar to that of the opposing party's product packaging. According to the Court, although the opposed mark is not exactly the same as the other marks, it is an assemblage of those marks as they are registered and used.
It is not stipulated in the Trade Mark Act nor is it stated in the examination guidelines that the form under which a mark is used in commerce may be a factor to be considered in the test of likelihood of confusion. As such, the Court's ruling is quite out of the norm. Whether this ruling will be followed is worth noting. Nevertheless, in order to avoid any dispute, if several marks are to be used in combination, it is advisable to obtain registration for a combination mark in addition to registering the separate marks.
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| Julia Hung |
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