【Volume 66】 The Taiwan Intellectual Property Office (IPO) published the revised “Examination Guidelines on Likelihood of Confusion” on 27th October, 2021. The newest guidelines thoroughly elaborate the examination standards of the similarity of trademarks, relatedness of the goods or services and other factors in a likelihood of confusion analysis. Also, many new cases are added for examiners and brand owners’ reference. The revision has come into effect immediately and we set out the 4 most important revisions below:

I.Whether two trademarks are similar and the extent of the extent of their similarity

When examining the similarity of trademarks, their designing concepts should not be considered

Since the creativeness or the designing concept of trademarks cannot be perceived from their appearance by the consumers, these subjective factors should not be taken into consideration during the examination of trademark similarity.

Relevant principles for judging word marks consisting of Chinese and other foreign languages

    1.The examination of similarity in sound should rely on the original pronunciation of the word marks in general

In general, examiners shall only compare foreign language parts when examining the similarity between a foreign word mark and word marks consisting of both Chinese and foreign languages. However, if the Chinese wording and the foreign wording are corresponding transliteration or associated words according to common understanding, their overall pronunciation may likely to cause confusion.

•  For example, “Fuji” and “富士 (the corresponding Chinese or Kanji of Fuji)” are similar.

    2. Clarification of examination principles of foreign word marks

If the suffix or the beginning letters have respectively weaker distinctiveness in the genre of designated goods/services or apparently have different definitions, less weight shall be given to the comparison of suffix or beginning letters..

•  For example, “Bioneed” and “BIONEO” have a low degree of similarity since “bio-” is a common prefix widely used in trademarks for similar designated goods/services.

When a foreign language trademark consists of several words which are widely known by relevant consumers, the consumers might be confused  by some of the distinctive words. The trademarks could be deemed as similar in such case.

•  For example, “LINECAST” and “LINE” are similar.

When foreign language trademarks consist of a combination of punctuation marks, symbols, uppercase and lowercase letters which separates the marks into several portions, although the separated portions shall be considered as a whole in principle, the dominant portion of each mark shall be compared. The higher the similarity of the dominant portions, the more similar the trademarks are.

•  For example, “ariCASE” and “ARI” are similar.

   3.Other principles of examining word marks

If a part of the trademark applied for consists of the dominant part or of the entirety of trademarks owned by others, they are considered to be highly similar.

•  For example, “ ” and “ ” are similar.

If a trademark consists of resembling parts of other trademarks and non-distinctive words, or such combination has little influence on overall appearance or concepts of the trademark, the trademarks are similar to a high degree.

•  For example, “WISS” and “IWISS” are similar.

Similarity in trademark format is also one of the patterns of similarity. However, similarity in trademark format should be limited to coined signs and suggestive signs which have considerable level of creativity. Also, the degree of similarity between their designated goods/services should be higher to prevent the concept of “similarity” from over expansion.

• For example, “TEN BY TEN” is similar to “十乘十 (“ten times ten” in Chinese)” and “10x10”. Although the three marks consist of different words and symbols, conceptually all of them denote the same mathematical formula “10x10”.

II.Whether the goods or services are similar and the extent of their similarity

Identifying complimentary goods/services

The term “complimentary goods” refers to a specific good that is necessary or important for the use of another specific good, and consumers may believe that these goods are manufactured or sold by the same supplier. For “functionally complementing goods and services”, they must be able to be used together and aim at identical consumer groups for them to be deemed as complimentary.

• For example, “fabrics” aim at general consumers while “textile treating” aims at consumers with professional needs for textile treatment. Therefore, they are not complimentary goods/services.

Designated goods and corresponding installation, maintenance and repairing services

Designated goods and corresponding installation, maintenance and repairing services could be similar if following factors exist:

• In that relevant market, manufacturers of these designated goods often provide these services;
• These goods and services have mutual customer base;
• The provision of these services is independent from the sale of goods. In other words, they are not part of after-sale services.

III.The extent to which relevant consumers are familiar with the trademarks concerned

The Taiwan Trademark Act adopts first-to-file principle. In order to prevent marketing activities of a later-filed trademark from harming the interest of prior trademark right holders, the familiarity of trademarks concerned is not a decisive factor on determining a likelihood of confusion.

If relevant consumers are familiar with both trademarks and the applicant of the trademark applied for could prove that relevant consumers could distinguish different sources that these trademarks implied through the use of trademarks, the examiner should respect the fact of their mutual existence.

IV.Situations that the consent of the prior trademark right holder is obviously improper

Obtaining the consent of the prior trademark right holder is one of the ways to resolve the conflict of confusion. However, if such consent is obviously improper, the application for registration would be unacceptable even the prior trademark right holder has provided a letter of consent.

The examples of improper co-existence are listed below:

• Essentially identical trademarks

1. “旺旺” and “旺-旺”
2. “BABY CARE” and “baby care”

• Identity of designated goods/services

1. “藥錠 (tablets)” and “藥丸 (pills)”
2. “唇膏” and “口紅” (Both of them mean “lipsticks” in Chinese)

• The right of disposition of the prior registered trademark has been suspended by the court.