經通國際智慧產權事務所

The well-known Canadian nutrition and healthcare food company Ocean Nutrition Canada Limited filed a trademark application in Taiwan for “OCEAN NUTRITION CANADA & Design”; a trademark that has been registered by Ocean Nutrition Canada in various countries. The Intellectual Property Office (TIPO) believed that the trademark is confusingly similar to 3 other trademarks that also include the word OCEAN, which would confuse the relevant consumers; therefore, the application was rejected. The Intellectual Property Court, however, believed that the English words and design of the 4 trademarks have different degree of distinctiveness; therefore, the trademarks would not cause any confusion. The TIPO is now required to reexamine the Canadian company’s application according to the Court’s opinion.

In August 2007, Ocean Nutrition Canada Limited filed a trademark application for “OCEAN NUTRITION & Design” in Taiwan. After examination, the TIPO found the trademark to be confusingly similar to 3 other trademarks: “OCEAN and LIVING WATER” by Ocean Biotech INC., “OCEANA and Design” by Oceana Biotech Corp., and “Yu Yi Han Fang SINO-MED and Design” by Huang, Bing Hsien. Furthermore, the subject trademark was either in the same class or designated similar goods as those 3 trademarks, which would confuse the relevant consumers, therefore the trademark was not allowed for registration.

The Intellectual Property Court believed otherwise after examining the case. The Court stated that the words “OCEAN”, “NUTRITION”, “CANADA” were explanatory words, which separately indicates the origin, property, function or place of production of the designated goods. The degree of distinctiveness of the subject trademark is very different than the cited trademarks; therefore the TIPO should not reject the application based on the similarity of the trademarks and the possibility of causing confusion to the relevant consumers. The Court revoked the previous decisions made by the TIPO and the Ministry of Economy, and ordered the TIPO to reexamine the application based on the Court’s opinion.

Organized and translated by Jenny Yu

International Affairs