Summer Ruby vs. Ruby
2011/09/16 TaiwanThe famous logistics company “President Transnet Corporation” filed an application for the trademark “Summer Ruby” in Chinese and designated for use on vegetables and fruits. However, The Taiwan Intellectual Property Office (TIPO) rejected President Transnet Corporation’s application in consideration of the prior registration “Ruby”, which is registered by a fruit merchant, Chang.
In order to promote the fresh seasonal fruits and vegetables, President Transnet Corporation cooperated with the municipal governments and Farmers’ Association. Two years ago, President Transnet Corporation collaborated with Tainan County Government for the purpose of popularizing Irwin Mangoes, and filed an application to register “Summer Ruby” as its trademark in 2009. The trademark shows a combination of the Chinese characters “Summer Ruby”, and a green leaf design, and designated for use on vegetables and fruits. However, from the TIPO’s point of view, the trademark “Summer Ruby” is confusingly similar to the prior registration “Ruby” in terms of concept and words. Moreover, these two trademarks designated for use on the same goods. Hence, they were very likely to cause confusion to relevant consumers in the market. For this reason, TIPO rejected President Transnet Corporation’s application of “Summer Ruby”.
After receiving the decision of rejection from the TIPO, President Transnet Corporation filed an appeal to the Ministry of Economic Affairs against the TIPO’s decision. Unfortunately, the appeal was still dismissed. Therefore, President Transnet Corporation had gone further to file an administrative lawsuit with the IP Court.
After the investigation, the panel of judges found that even though there was, indeed, likelihood of confusion between these two trademarks, the trademark “Ruby” was registered in September 2000 and already expired in September 2010. The trademark owner Chang did not request for renewal on trademark term after the term expiration, thus the trademark rights shall ipso facto extinguish according to Article 39 of the Trademark Act. Based on the reasons above, President Transnet Corporation’s application for the trademark “Summer Ruby” shall be granted by TIPO. The decision was issued by the IP Court in June 2011.
Organized and translated by Tina Tsai
International Affairs
