August 2017
When the strength of a trademark's distinctiveness is argued, examination should not be conducted by differentiating or splitting the words in the trademark(Taiwan)
Lenore Chen
The Supreme Administrative Court rendered the 105-Pan-231 Decision of May 12, 2016 (hereinafter, the "Decision"), holding that when the strength of a trademark's distinctiveness is argued, examination should not be conducted by differentiating or splitting the words in the trademark.
According to the facts underlying this Decision, the Intervenor received the Appellee's approval of its application to register the "kbro _____ [Chinese characters literally meaning "kbro big broadband"] SMOD and Device (3)" trademark (the "Trademark at Issue"). The Appellant filed an opposition against the Trademark at issue, and an administrative disposition which rejected the opposition was subsequently rendered by the Appellee as a result of its examination. Dissatisfied, the Appellant brought this administrative action.
According to the Decision, when the strength of distinctiveness, which is one of the factors for arguments concerning trademark confusion and misidentification, is argued, the entirety of the Trademark at Issue and of the trademark for which the opposition is filed should be observed before the distinctiveness of the trademarks is compared. It is not necessary to separate or split the trademarks into their constituting components to observe their distinctiveness first.
It was further determined in the Decision that when examining the distinctiveness factor, which is used to assess the likelihood of confusion and misidentification, the distinctiveness of the entirety of the Trademark at Issue as shown in the attached drawing (i.e., a device consisting of a design similar to the "k" letter, "kbro," "_____" [Chinese characters literally meaning "kbro big broadband"] and "SMOD" arranged from left to right) and of the trademark for which the opposition was filed (the trademark for which the opposition was filed has a device comprised of a three dimensional cube, "MOD" and "____" [meaning "Chunghwa Telecom"] arranged from left to right; and the second device of the trademark for which opposition was filed consists of "__" [meaning "everyday"] and "MOD" arranged vertically) should be examined before the two trademarks are compared. There is no need to separate or split the trademark device and words in the "MOD" portion of the trademark device to redundantly argue about their distinctiveness. Therefore, the original decision which redundantly argued that the divided and split "MOD" word in the Trademark at Issue was not distinctive and did not satisfy the steps in determining confusion and misidentification, either. However, it was held in the Decision that since the above redundant argument in the original decision did not affect the outcome of the decision, the appeal was still rejected.
The Supreme Administrative Court rendered the 105-Pan-231 Decision of May 12, 2016 (hereinafter, the "Decision"), holding that when the strength of a trademark's distinctiveness is argued, examination should not be conducted by differentiating or splitting the words in the trademark.
According to the facts underlying this Decision, the Intervenor received the Appellee's approval of its application to register the "kbro _____ [Chinese characters literally meaning "kbro big broadband"] SMOD and Device (3)" trademark (the "Trademark at Issue"). The Appellant filed an opposition against the Trademark at issue, and an administrative disposition which rejected the opposition was subsequently rendered by the Appellee as a result of its examination. Dissatisfied, the Appellant brought this administrative action.
According to the Decision, when the strength of distinctiveness, which is one of the factors for arguments concerning trademark confusion and misidentification, is argued, the entirety of the Trademark at Issue and of the trademark for which the opposition is filed should be observed before the distinctiveness of the trademarks is compared. It is not necessary to separate or split the trademarks into their constituting components to observe their distinctiveness first.
It was further determined in the Decision that when examining the distinctiveness factor, which is used to assess the likelihood of confusion and misidentification, the distinctiveness of the entirety of the Trademark at Issue as shown in the attached drawing (i.e., a device consisting of a design similar to the "k" letter, "kbro," "_____" [Chinese characters literally meaning "kbro big broadband"] and "SMOD" arranged from left to right) and of the trademark for which the opposition was filed (the trademark for which the opposition was filed has a device comprised of a three dimensional cube, "MOD" and "____" [meaning "Chunghwa Telecom"] arranged from left to right; and the second device of the trademark for which opposition was filed consists of "__" [meaning "everyday"] and "MOD" arranged vertically) should be examined before the two trademarks are compared. There is no need to separate or split the trademark device and words in the "MOD" portion of the trademark device to redundantly argue about their distinctiveness. Therefore, the original decision which redundantly argued that the divided and split "MOD" word in the Trademark at Issue was not distinctive and did not satisfy the steps in determining confusion and misidentification, either. However, it was held in the Decision that since the above redundant argument in the original decision did not affect the outcome of the decision, the appeal was still rejected.
