Recent trend of trademark coexistence - 106(2017) Xingshangsuzi No.69 Decision rendered by Taiwan Intellectual Property Court

Date: 6 May 2019

【Volume 15】In order to avoid existing trademark registrations being cancelled, when 2 similar trademarks are to be used on or in connection with goods and services which are similar or are in the same or related classes, it is necessary to prove that trademark coexistence is already recognized by consumers and will not cause likelihood of confusion. The Taiwan Intellectual Property Court appears to have shifted to a more relaxed approach than the Taiwan Intellectual Property Office (IPO).

Contested Mark and Cited Marks

	Contested Mark	Cited Marks
Registration Date	April 16^th , 2015	February 16^th , 1997 etc.
Trademark Holder	K. S. TERMINALS INC.	KAI SUH SUH ENTERPRISE CO., LTD.
Trademark
Description of Goods	Class 09 Terminals	Class 09 Wiring ducts, terminals, etc.

Opinions of Intellectual Property Office and Petitions and Appeals Committee

In the original decision of the Taiwan Intellectual Property Office, the IPO deemed the cited marks were well-known trademarks that were familiar to the relevant consumers , whereas the evidences submitted by the defendant (contested mark holder) did not prove that the consumers were familiar to the contested mark and could not prove that the cited marks and contested marks have been coexisting in the marketplace for a considerable period of time. Therefore, the opposition sustains.

The Intellectual Property Court Opinion

1. The defendant presented multiple evidences proving the contested mark has been used for many years and the contested mark registrant has fair percentage in market share

The IP court deemed the evidence presented by the defendant can sufficiently prove that the defendant has already been using the contested mark since 1981 till date. Moreover, according to the total domestic sales of terminals from the Ministry of Economic Affairs, the terminal products bearing the contested mark already had 7 to 10% of domestic market share before the registration date. Relevant consumers should be familiar with the contested mark before the registration date from long-term trademark use.

2. Evidence of coexistence of both trademarks in the marketplace

Both trademarks have been used for terminals or related products for 20 to 30 years. Over the years, their information can be seen on the same page in the exhibition handbook of the same exhibition, and both have been advertised in multiple volumes of Economic Daily News simultaneously. On the other hand, the plaintiff (cited mark holder) has been continuously ordering terminal products with the contested mark from the defendant since 1992. The court held that two trademarks have coexisted in the marketplace for a long time. Relevant consumers are able to distinguish both products are from different sources and the said marks do not cause a likelihood of confusion.

Wisdom’s Commentary and Suggested Strategies

Although in this case the IPO deemed the contested trademark is a use of company name or product number instead of a trademark use, the IP court still held that the contested mark has been used as a trademark for a long time. Moreover, the contested mark has a considerable market share percentage of market before the registration date, hence confirming that the contested mark was used as a trademark and the conflicting marks coexisted in the market. It is concluded that there is no likelihood of confusion.

It can be seen that the court takes a more relaxed approach to the use of a trademark when judging trademark coexistence than the IPO, which is worth noticing. Therefore, the trademark holder can gather all forms of evidence of trademark use and emphasize on proving that the relevant marketplace and consumer are familiar with the mark, which aid the collection of evidence when claiming that the conflicting trademarks coexist in Taiwan.

Tags: Trademarks Case Studies Likelihood of Confusion