Are dietary supplements and non-alcoholic beverages similar goods? An Analysis on Taiwan Intellectual Property Court 2020 Xingshangsuzi No.53 Judgement
Date: 9 November 2021
【Volume 64】
The “Reference Material for Classification and Cross-Search of Goods and Services (“Reference Material”)” published by the Taiwan Intellectual Property (IPO) is typically the standard for judging whether designated goods are identical or similar. However, even if the Reference Material does not define particular goods as similar goods, goods with similar function or nature still constitute identical or similar goods.
The Taiwan Intellectual Property Court made an important decision for the determination of similar goods in 2020. In Taiwan Intellectual Property Court 2020 Xingshangsuzi No.53 Judgement, the court points out that dietary supplements and non-alcoholic beverages are similar goods, even though the Reference Material makes no mention of the goods being similar. The court revoked the original administrative disposition rendered by the Petitions and Appeals Committee of Ministry of Economic Affairs (“PaAC”) and the IPO.
Case fact
Monster Energy Company, the biggest energy drinks manufacturer in the U.S. which is famous for its “Monster Energy” products, filed an application to register “MUTANT” trademark for Class 32 goods, including “non-alcoholic beverages” (“Monster Energy’s Mark”). The trademark was registered in January 2017.
In September 2017, Fit Foods Ltd., a company registered in Canada, also filed an application for “MUTANT” trademark including Class 5 goods “meal and dietary supplements with protein which are beneficial to maintaining and supplying body mass” (“Fit Foods’s Mark”). The trademark was registration in February 2019.
Monster Energy promptly filed an opposition against Fit Foods’s Mark, stating that the mark is similar to Monster Energy’s Mark and may lead to the likelihood of confusion on relevant consumers. After the IPO rejected the opposition, Monster Energy appealed to the PaAC and eventually the Taiwan Intellectual Property Court (“IP Court”). Upon investigation, the IP Court determined that the designated goods of these two trademarks are highly similar. The registration of Fit Foods’s Mark in Class 5 shall be cancelled.
The MUTANT Trademarks
| Fit Foods's Mark | Monster Energy’s Marks |
|---|---|
|
Reg. no. 01969085 |
Reg. no. 01816350 |
|
Goods in Class 5 Protein powder; Meal and dietary supplements for the purpose of health; Meal and dietary supplements with protein which are beneficial to maintaining and supplying body mass, etc. |
Goods in Class 32 Non-alcoholic beverages; Beer. |
Opinion of the IP Court
- The two trademarks are identical.
Both trademarks are made up by the non-stylized English word “MUTANT”. Their appearance, concept and pronunciation are all the same. Therefore, these two trademarks are identical.
- The designated goods of these two trademarks are highly similar.
(1) According to the investigation result of the court, the item “non-alcoholic beverages” in Class 32 includes energy drinks.
(2) Additionally, evidence submitted by Monster Energy includes several of its registered trademarks in Class 32. The designated goods of these trademarks include “soft drinks with vitamins/herbs”, “non-alcoholic beverages, namely energy drinks with vitamins and minerals”, etc.
The evidence indicates that the designated good of Monster Energy’s Mark, “non-alcoholic beverages”, includes drinks with vitamins, minerals and herbs. All of the drinks with the above-mentioned ingredients are “dietary supplements drinks”.
(3) All designated goods of both trademarks provide nutritional supports. Therefore, the function and the nature of the designated goods of both trademarks are identical or similar.
In conclusion, trademarks of both parties are identical, and their designated goods are highly similar. Even though the relevant consumers are more familiar with Fit Foods’s Mark, Monster Energy’s Mark has an earlier registration date and a respectable level of distinctiveness. The designated goods in Class 5 of Fit Foods’s Mark should be revoked because of the likelihood of confusion.
Wisdom Suggested Strategies
In Taiwan, examiners and judges often refer to the Reference Material to determine “identicalness or similarity of the goods/services”, one of the elements of “likelihood of confusion” under Paragraph 1(10), Article 30 of the Taiwan Trademark Act.
During the opposition and the administrative appeal of this case, both the IPO and PaAC adopted the Reference Material as the standard of their decisions. They stated that the designated goods of these two trademarks belong to different groups of goods, and all goods do not fit in the cross-search criteria. Because of the lack of “identicalness or similarity of the goods/services”, they rejected the opposition and appeal.
Nevertheless, the Reference Material is published by virtue of the power of the IPO. It is an "administrative rule" which only regulates the staff of the IPO, and is not a law which has binding authority to the judges.
Thus, the IP Court reasons that it is necessary to examine whether the functions, nature or sales channels are substantively highly similar. The court indicates that the concept of “non-alcoholic beverages” includes energy drinks which fall into the category of dietary supplements drinks. Also, the designated goods of Fit Foods’s Mark in Class 5 are dietary supplements too. Accordingly, the functions, nature and sales channels of the designated goods are highly similar. As both trademarks are also identical, the registration of the designated goods in Class 5 of Fit Foods’s Mark should be revoked.
We suggest that applicants should not only rely on the Reference Material, but also make their own judgement based on substantive evidence while examining the similarity of goods/services.
