The Intellectual Property Court rendered the 105-Hang-Shang-Su-55 Administrative Decision of December 21, 2016 (hereinafter, the “Decision”), holding that whether a trademark is famous should be determined based on the perception of domestic consumers.
According to the facts underlying the decision, the Intervenor applied to register the “ICE MONSTER and Device” trademark on July 26, 2012 for use in Class 30 (goods such as ice and ice cream). The application was approved with the trademark registered as No. 1577429 Trademark (hereinafter, the “Trademark at Issue”). Plaintiff Monster Energy Company filed an opposition against the registration of the Trademark at Issue for its violation of the first part of Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law. Appellee Intellectual Property Office rendered a disposition against the opposition. Dissatisfied, the Plaintiff brought this administrative action.
According to the Decision, although the Trademark at Issue, which consists of personified ice man icons, and the trademarks relied on for opposition Ð MONSTER, JAVA MONSTER, MONSTER ENERGY and X-PRESSO MONSTER Ð both contain “MONSTER” and are designated for use in goods which are partially identical, still relevant consumers with general knowledge and experience are not likely to be confused into misidentification about the sources or producers or manufacturers of the goods so represented if they exercise ordinary caution at the time of purchase. Therefore, the Trademark at Issue was not subject to any circumstance that precludes its registration under Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law.
According to the Decision, the so-called “famous trademarks or marks” set forth in the first part of Article 30, Paragraph 1, Subparagraph 11 of the Trademark Law refer to those which have been generally known to relevant businesses or consumers as supported by sufficient objective evidence. In addition, whether a trademark is famous depends whether it is generally known within the territories of the Republic of China (gist of Judicial Interpretation No. 104). Although the Plaintiff produced materials concerning the most welcomed brands in the world on Facebook, relevant Facebook, Twitter and YouTube materials, and registration information about the trademarks relied on for opposition in various countries to support its assertion that the trademarks relied on for opposition are famous marks, still the Facebook webpages, product catalogues, media reports, website materials, display and promotion venues, sponsored sports competition and event photographs produced by the Plaintiff are all foreign language materials and are insufficient to prove the such trademarks have been known to general consumers in the Republic of China. Although the Plaintiff additionally produced an electronic newspaper published by the Beverage Industry Association in Taiwan in 2010 to support its assertion that the goods represented by the trademarks relied on for opposition were No. 2 branded energy beverages in the US, still this could only substantiate the popularity of the goods represented by the trademarks relied on for opposition among consumers in the US and was still insufficient to evidence that the trademarks relied on for opposition were famous marks in Taiwan.