To determine whether a trade mark can be accepted for registration, the relevant authorities in most countries normally establish and observe a set of rules and guidelines. They typically have to conduct a search and bar the junior applications from registration if identical or similar senior rights have been found. In Taiwan, the Intellectual Property Office (TIPO) follows this practice.

The examiners pay close attention when examining and determining whether a trade mark application meets the standard and requirements for acceptance. They adopt a conservative and very strict criterion in this respect. Some trade mark owners have had experiences of facing rejection on grounds of having a similar or identical mark when seeking trade mark registration in Taiwan in the past. However, after the enactment of the current Trade Mark Law on November 28 2003, two identical or similar marks may co-exist in the same class if no likelihood of confusion will ensue. Thereafter, the TIPO issued Examination Guidelines on the Likelihood of Confusion on April 28 2004. It outlines some, if not all, critical aspects that should be considered and examined.

Skyline v 遠航 Skyline

Far Eastern Air Transport Corporation filed a trade mark application for "遠航 SKYLINE" in Class 16 covering printed materials, magazines, books, geographical maps, travel guides, route maps, calendars and postcards. The mark comprised the Chinese characters "遠航" (an abbreviation of Far Eastern Air Transport in Chinese) and "SKYLINE". The TIPO rejected the application on the grounds that it is identical or similar to another registered trade mark. The applicant filed an appeal and then an administrative suit.

The following factors are required to determine whether Article 23-I-13 is applied to the referenced application:

• whether the two marks are similar and, if they are, the degree of similarity; and

• whether the goods covered by the two marks are similar and, if they are, the degree of similarity.

The cited mark comprises with the word "skyline" in capital letters only. The referenced mark comprises the Chinese characters "遠航" and the word "skyline" (in capital letters) in the same position. The cited mark does not have Chinese characters. However, the Latin letters are the same. When comparing the two marks at different times and places, the Latin letters of the two share the same concept and idea and confusion will likely ensue.

The cited mark covers "trade show display" of International Class 16, while the goods covered by the referenced application are also in the same class, namely printed materials, magazines, books, geographical maps, travel guides, route maps, calendars and postcards. Comparing the designated goods, there is no doubt that they are in the same or similar category of printed material or that they are related articles. The material, function and purpose are quite the same.

Although the applicant submitted use evidence to show that passengers are quite familiar with "遠航 SKYLINE" printed materials, the authorities opined that such materials are only for passengers' reference. They cannot prove that the applicant is well known in the relevant trade. Such material is irrelevant to determining similarity.

Based on this consideration, the Taipei High Administrative Court rendered its decision, on March 13 2008, that the two marks are similar.

Scottish House and device v City Dog and device

This is a trade mark opposition case regarding the similarity between two marks, both containing a dog device and Latin words. According to the TIPO's opinion, the two marks were regarded not to be similar. The case was decided in favour of the applicant. The opposing party filed an appeal with the Ministry of Economic Affairs (MOEA), the authority superior to the TIPO. The MOEA overruled the TIPO's decision and remanded the case for a further appropriate decision. The applicant then raised the administrative suit.

The opposition was filed based on Article 23-I-13. As the goods designated for each mark are mobile phones, the similarity of the goods is intrinsic. Thus, the only dispute that remained in this case was whether the two marks were similar.

The applicant's mark comprises the words "Scottish House" and a dog device. The applicant designates the mark as colour: the words in red and the dog device in red, black and white checks. The opposer's mark also comprises a dog device and the words "City Dog". Apparently, the word portions of the two marks are distinctly different. However, the dog in each mark was designed similarly in appearance, with the head pointing to the right, a short tail and short legs, so that the dog appears to be a West Highland Terrier. The TIPO issued its decision, based on the whole appearance of the two marks, that general consumers would not confuse its origin when purchasing.

Nevertheless, the MOEA opined that the dog devices are so similar in shape that the two marks should be deemed similar.

In the administrative suit, the applicant asserted that the likelihood of confusion is a significant factor in determining similarity. If the marks are held to be similar, a further inspection of the respective goods or services designated for them is required when judging whether confusion will ensue. If an affirmative finding is made, then article 23-I-13 is applied.

The Administrative Court held that the MOEA's decision to reverse the TIPO's decision and request the TIPO to issue an appropriate decision clearly dictates that the TIPO is obliged to re-examine and decide the case. The defendant (the TIPO) issued its previous decision based only on similarity between the two marks. Thus, the TIPO stated in its arguments that it will make a further examination decision with regard to Article 23-I-13. Therefore, the court affirmed the TIPO's explanation and dismissed the administrative suit so that the TIPO could re-examine the subject case and issue its decision afterwards.

The adidas and three stripe device v Jump three stripe device

The trade mark right disputes between Adidas-Salomon AG (Adidas) and Lutong Enterprise Corporation (Lutong) were initiated in 2003. Each party raised invalidation actions against the other by claiming similarity between the two parties' marks.

Adidas registered "adidas" and the three stripe device in relation to clothing in 1999 with the National Bureau of Standards (this authority was reorganised as the TIPO on January 26 1999). Lutong initiated an invalidation action against the registration on January 2 2003. The TIPO upheld Lutong's claim and made a decision in favour of Lutong. Adidas successfully filed an appeal and the original TIPO decision was remanded for further examination. Again, the TIPO decided to invalidate the referenced mark: in a further appeal, the decision was upheld. Adidas then raised a subject administrative suit. The Supreme Administrative Court rendered the decision to remand the subject case to Taipei High Administrative Court.

According to the old law and practices, similar marks cannot co-exist in the same class even though the goods covered in the same class have different functions. (Previously, in Article 37-12: "Any mark identical or similar to a trade mark that is designated for use on the same goods or similar goods cannot be registered".) Applying that rule to the subject case, if the authority determined that the two parties' marks were similar, the later mark would be refused for registration. This was the TIPO's rationale for ruling the invalidation action in favour of Lutong from the beginning.

The latest Trade Mark Act was promulgated on November 28 2003, when these disputes were still pending. According to Article 91 of the current Trade Mark Act, registration of a trade mark will be cancelled only in the event that the trade mark falls into any of the prohibitions set forth under provisions both before and after the amendment to this Act on April 29 2003. Accordingly, in this case, not only Article 37-12 of the previous Act but also Article 23-I-13 of the current Act should be applied to determine whether the subject mark will be cancelled.

Article 23-I-13 of the current Act broadens the possibility for registration. That is, only if the relevant trade marks and their designated goods or services of both parties are identical will the later trade mark be denied registration. Otherwise, a consent letter of the earlier trade mark owner can be relied upon to allow the registration of the later trade mark. Along with this line of thinking, co-existence has been accepted since the current Act came into force.

Based on Article 54 of the current Trade Mark Act, the court opined that if a registered mark had been used in the market and had created its goodwill after long-term use, the trade mark authority needed to take relevant evidence of substantial use after its registration into account. This means that whether or not a registration should be cancelled depends on the factors shown at the time the examiners examine and make a decision of invalidation action.

Whether the business entity has made a genuine and legitimate use of its mark, widely promoted it into the market, as well as the degree of consumer familiarity with the mark, are all factors to be considered in determining whether confusion will ensue. Similarity of marks and goods are not the sole factors to determine likelihood of confusion. Points 5.6.2 and 6.2 of Examination Guidelines on the Likelihood of Confusion should be referred to.

The court upheld the previous decision regarding similarity of the two parties' marks and their respective designated goods so that the likelihood of confusion ensues. However, the appellant (Adidas) submitted substantial evidence of use in Taiwan (catalogues, advertising materials in newspaper and magazines and invoices) dated after registration of the disputed mark. Although such evidence was dated later than the registration date of the opposite party's mark, the relevant authorities did not take such evidence into account and neglected the appellant's claim for co-existence of the marks. According to Article 54, it is apparent that the previous decisions were made without properly applying the laws and regulations. Furthermore, the court, based on the fact that the authorities failed to examine the co-existence of the relevant marks, held that the previous decisions were not given with reasons and were therefore contrary to the laws and regulations.

Therefore, the court decided that the subject case be remanded to the Taipei High Administrative Court. During the subsequent procedure, the Taipei High Administrative Court had to re-examine whether the disputed mark violated the Trademark Act at the time when the TIPO entered into a decision. After re-examination, the Taipei High Administrative Court may overrule all prior decisions if the cause on which the invalidation was based no longer exists at the time of examination for the subject invalidation. Thereafter, the TIPO may render a decision to dismiss the invalidation upon considering the interests of the public and the concerned parties.

Basically, the Examination Guideline on the Likelihood of Confusion applies to both pending applications and trade mark dispute cases. For a pending application, the examination focuses on the similarity of the mark itself and the designated goods. Similar marks may co-exist if the goods or services covered are not quite the same. In some cases, a letter of consent will help the later mark to be granted for registration.

As for a contentious case, the factors to be examined normally focus on whether the likelihood of confusion to the source of origin will occur. The degree of consumers' recognition of the relevant marks plays a vital role in determining the likelihood of confusion. Take the third case for example: the two marks co-existed for some time and each has its own respective market. The longer the marks co-exist, the less likelihood there is that confusion will ensue.

Frances Chen

Frances Chen (LLB) joined Tai E immediately after graduation and has been the head of the foreign trade mark department for many years. She has experience in trade mark applications in-bound and out, contentious trademark cases and copyright and domain name registration. Frances is also interested in comparing IP systems from around the world. Practising in the IP field, she has written many articles and delivered many presentations to clients.