Date: 15 September 2022

【Volume 91】

Choosing to apply for a trademark registration with a word that already exists is no doubt one of the easiest ways. Nevertheless, since there are limited amounts of words that already exist, another option is to combine different words into a compound word. For example, “YouTube” and “iPhone” are both well-known compound word trademarks. However, compound words are no panacea, as the risk of being considered similar to earlier trademarks still remains. In its 2021 XingShangSuZi No.75 Judgment made in April 2022, the Taiwan Intellectual Property Court (IP Court) explains in detail how the similarity of compound word trademarks is determined, which we analyze below.

Case Fact

On 4 December 2020, the applicant of the contested trademark (hereinafter referred to as the plaintiff) filed an application for the registration of the trademark “YouVogue” to the Taiwan Intellectual Property Office (IPO), while later on receiving an Advance Notice of Reasons for Disapproval from IPO on 22 June of the following year. In the Notice, 4 earlier registered trademarks “Vogue” owned by CONDE NAST ASIA/PACIFIC, INC. were cited and compared with the contested trademark “YouVogue”. Since the only difference in both parties’ trademarks is the part “You”, it creates a likelihood of confusion to consumers. The formal Decision of Rejection was then issued on 17 August of the same year, affirming the rejection of the trademark registration “YouVogue”. After an administrative appeal to the Ministry of Economic Affairs was rejected, the plaintiff then turned to filing an appeal to the Taiwan IP Court.

	Trademark	Description of Goods and Services
The Contested Trademark		Class 3 Moisturizing emulsion; Make-up preparations; Massage oil, etc. Class 35 Retailing and wholesaling of cosmetics
The Cited Trademark no. 1		Class 42 Beauty, hair-styling, skin care and makeup services; Consultancy relating to beauty, hair-styling and makeup, etc.
The Cited Trademark no. 2		Class 35 Retail services relating to hair care, skin care, makeup and clothing, etc.
The Cited Trademark no. 3		Class 42 Providing fashion and beauty information through global computer network, etc.
The Cited Trademark no. 4		Class 3 All kinds of cosmetics, perfumes, etc.

Opinion of the Taiwan IP Court

1.The contested trademark and the cited trademarks have a high level of similarity:

(1) The plaintiff claimed that since the part “You” in the contested trademark “YouVogue” is not used as a descriptive word, it should not be examined separately. And according to the general concept when reading in a foreign language, the initial part of the word should be considered as the primary part. Therefore, the overall appearance and the pronunciation of the contested trademark are clearly different from those of the cited trademarks.

(2) Although the contested trademark “YouVogue” is a compound word, the letters “Y” and “V” contained therein are in capitals. Also, the definition of the contested trademark recorded in the application form by the plaintiff is “Your Vogue”, which is confusing and could easily lead consumers to think of the meaning of the word separately as “You” and “Vogue”. Therefore, the contested trademark has a high level of similarity to the cited trademarks “VOGUE”.

(3) The contested trademark “YouVogue” has divided the compound word by showing the letters “Y” and “V” in capitals. Even with the words “You” as a pronoun and “Vogue” as a noun, not only does it not change the overall definition of the compound word, but it also draws people’s attention to the words “Vogue” at the back, making consumers wonder about the connection between the contested trademark and the cited trademarks.

(4) Although the plaintiff tried to use trademarks such as “YouTube”, “YouBike”, “iBike” and “iPhone” as examples to claim that none of those compound word trademarks would be divided by the consumers, nor the part “Tube”, “Bike” and “Phone” would be identified as their primary composing part, “Tube”, “Bike” and “Phone” are not registered trademarks in the first place. This is different from the present case in which "VOGUE" has been recognized as a well-known trademark to consumers by the Supreme Administrative Court since 1998.

2. High level of similarity between the contested trademark and the cited trademarks no. 1, 2 and 4 in their designated goods/services:

The court made 2 charts comparing the similar goods/services designated in the contested trademark and the four cited trademarks, which indicate that the designated goods/services of the contested trademark have a high level of similarity to the ones of the cited trademarks no. 1, 2 and 4; on the other hand, they are not considered similar to the designated services in Class 42 of the cited trademark no. 3.

(Chart 1: Comparison chart of the similar designated services. Partially translated from Judicial Yuan, Law and Regulations Retrieving System)

To sum up, the IP Court announced in the judgment on 13 April 2022 that the contested trademark has a high level of similarity on the overall impressions to the four cited trademarks, as well as on the designated goods/services to the cited registration trademarks no. 1, 2, and 4. Therefore, the registration of the contested trademark was rejected, as it could cause a likelihood of confusion to consumers.