The Intellectual Property Court rendered the 106-Hang-Shang-Su-14 Administrative Decision of October 25, 2017 (hereinafter, the “Decision”), holding that when a word mark is used by changing the orientation of the word arrangement or font, this shall still be deemed a trademark use as long as this is sufficient to cause relevant consumers to identify such words as the same trademark as a registered trademark.
According to the facts underlying this Decision, the Intervenor was ELLE magazine, which registered the ELLE PARIS Logo trademark (hereinafter, the “Trademark at Issue”) designated for use on goods such as “clocks, watches and the components thereof” on March 1, 1995. The Plaintiff applied to cancel the Trademark at Issue by asserting that the Trademark at Issue was not used for three years since the publication of the ELLE magazine on October 5, 2012 was later than three years prior to the cancellation application date (October 6, 2015), which was one piece of evidence cited by the Intervenor to support use. In addition, the evidence cited by the Intervenor to support trademark use did not meet the trademark identity requirement under Article 64 of the Trademark Law. The Defendant subsequently rendered a disposition that rejected the cancellation. Dissatisfied, the Plaintiff brought administrative action.
Article 64 of the Trademark Law provides: “Actual use of a registered trademark by the proprietor in a form differing in elements which do not affect the identity of the trademark according to general concepts in the society shall constitute use of the registered trademark.” According to this Decision, with respect to the use of a word mark either by changing the arrangement or font of the words, the same identity shall be concluded where a registered trademark which uses such words is used as long as this is sufficient to cause relevant consumers to identify such words as the same trademark as the registered trademark.
According to the Decision, there were two watches bearing words “ELLE” in the product advertisements on inside pages of the ELLE magazine as submitted by the Intervenor. In particular, the image depicting “ELLE Fashionable and Personal Style Belt Waterproof Watch” in the right contains identifiable words such as “ELLE” and “PARIS.” Although they are arranged in the upper left and lower right of the round watch surface, which is different from the tight arrangement of the “ELLE” and “PARIS” in the Trademark at Issue, still all of the words in the Trademark at Issue were included without changing the main distinctive features of the Trademark at Issue with slight differences merely in the arrangement of the words. In addition, the manner of representation could still cause the consumers to view them as the mark that identifies the sources of goods rather than simply decorative words. Therefore, they should be deemed to be of the same identity, and therefore it was sufficient to conclude that the Intervenor did use the Trademark at Issue in watch goods. As for the Plaintiff’s assertion that the publication date of the ELLE magazine was earlier than three years prior to the cancellation application date, which was cited as evidence that support trademark use by the Intervenor, it was held in this Decision that after the magazines were published, they would be continuously displayed and sold in the market and it was possible that the consumers would be exposed to and purchase the magazines before the next issue was published. Therefore, it was concluded that since the original disposition was not unlawful, the Plaintiff’s complaint was dismissed.