The Intellectual Property Court rendered the Hang-Shang-Su-152 Administrative Decision of July 13, 2017 (hereinafter, the “Decision”), holding that with respect to non-distinctive portions of a trademark device with or without a disclaimer, when its similarity with another trademark is being determined, the disclaimed portions shall still be included for overall comparison. However, since the non-distinctive portions are not identifiers of the sources of goods or services, the non-distinctive portions will be given less attention at the time of comparison.
According to the facts underlying this Decision, the Plaintiff applied to register the Online & DEVICE trademark (the foreign-language “Online” outside of the device was disclaimed from exclusive use) for use on goods such as cards under Class 16 of the Classification of Goods and Services under Article 13 of the Enforcement Rules of the Trademark Law at the time on January 26, 2011, and the application was approved (hereinafter, the “Trademark at Issue”). The Intervenor subsequently filed an opposition, and the Defendant rendered a disposition against the opposition. Dissatisfied, the Intervenor filed administrative appeal, resulting in a decision on administrative appeal rendered by the Ministry of Economic Affairs to set aside the disposition which rejected the opposition against the designation of the Trademark at Issue for use on goods such as cards and request the Defendant to render another legally appropriate disposition. Dissatisfied, the Plaintiff filed an administrative appeal and brought administrative action before this matter became final. The Defendant re-examined this matter pursuant to the gist of the reversal by the Ministry of Economic Affairs, holding that the designation of the Trademark at Issue for use on goods such as cards violated Article 23, Paragraph 1, Subparagraph 13 of the Trademark Law effective at the time of registration and Article 30, Paragraph 1, Subparagraph 10 of the current Trademark Law and rendering the original disposition that cancelled the registration. Dissatisfied, the Plaintiff brought an administrative action.
According to the Decision, for the non-distinctive portions of a trademark device, with or without a disclaimer, when its similarity with another trademark is being determined, the disclaimed portions shall still be included for overall comparison. This is an essential embodiment of the above-mentioned principle of overall observation. Although the disclaimed portion of a trademark device is included for overall trademark comparison, still since non-distinctive portions are not identifiers that identify the sources of goods or services, the non-distinctive portions will be given less attention at the time of comparison.
It was held in this Decision that the Trademark at Issue consisted of a personified design formed by English letter “O” in combination with a headset. The lower portion of the trademark consists of foreign language “Online,” which begins with letter “O” of the same design as the previous device. Although foreign language “Online” was disclaimed by the Plaintiff, still it should be included in the overall trademark comparison. However, since such portion will receive less attention from consumers, the personified design of letter “O” is certainly the most distinctive position in the overall comparative observation of the Trademark at Issue. The trademark relied on for opposition features a personified design consisting of English letter “O” in combination with a single-sided clip headset and microphone. A comparison of the two trademarks shows that both feature a personified design with a letter “O” in combination with earphones. Although the Trademark at Issue features headphones, while the earphones in the trademark relied on for opposition are single-sided clip headsets, still both leave an impression of personified earphones in the minds of the consumers. In addition, the trademarks are very similar in pronunciations and concepts and can hardly be differentiated by relevant consumers when they observe them separately at different places and times and when they make a purchase. Therefore, they should be deemed trademarks with similar compositions and a high degree of similarity. The Plaintiff asserted that since the Trademark at Issue still has foreign-language “Online,” which is not found in the trademark device relied on for opposition, the two are different in appearances, pronunciations and concepts. In addition, the styles of “earphones” and “headset” are obviously different, and the consumers cannot possibly be confused into misidentification. However, relevant consumers tend to pay less attention to the “Online” portion when observing the overall trademark device of the Trademark at Issue. As a result, the overall impression left with the consumers should be the personified letter “O” portion. As previously stated, the Plaintiff’s assertion that the two trademarks were not similar simply based on the presence of “Online” in the two trademarks was not acceptable.
It was further pointed out that when actually choosing goods, the consumers would not carefully differentiate if the earphones in the trademark devices were headsets or single-ear headphones or whether the earphones are attached with a microphone. The above minor difference could not fulfill the function of differentiation in the minds of the consumers. The Plaintiff’s assertion that the two trademarks were not similar for the above-mentioned reason was not acceptable. In addition, since the original disposition, which cancelled the Trademark at Issue, was upheld, the Plaintiff’s complaint was rejected.