Each Mark Should Be Compared As A Whole Without Dissecting Into Parts For Evaluations Of Similarities Between Two Marks
2011/03/08 TaiwanThe Taiwan Intellectual Property Court followed and agreed the Taiwan Trademark Registry’s decision of rejecting the application “Alisoft.com and Chinese Characters & Device
” filed by Alibaba Group Holding Limited for registration of which trademark was deemed similar to a prior registration “PC Partner & Device
”.
Alibaba Group Holding Limited from Cayman Islands filed the trademark application bearing “Alisoft.com and Chinese Characters & Device” designating the goods and services under seven classes in relation to sunglasses, advertisements, insurance, telecommunications, car transportations, and computer hardware in Taiwan.
Nevertheless, the Taiwan Trademark Registry held that the said application is similar to a prior registered trademark “PC Partner & Device” designating identical/similar goods in relation to computer hardware and software and which may cause confusion to the general consumers. Accordingly, a rejection against the trademark application “Alisoft.com and Chinese Characters & Device” was ruled on November 21, 2009.
The applicant, on the other hand, argued that even though both marks contain the devices of those are composed of four intertwining squares, these marks should not be considered similar while the devices only occupy the smaller parts and the word portions are the major proportioned and most distinctive parts. Furthermore, the appearances, concepts and pronunciations of the English words, “PC Partner” and “Alisoft.com”, are extremely different and should not cause any confusion to the general consumers. Therefore, the mark “Alisoft.com and Chinese Characters & Device” should be accepted for registration.
On the contrary, the Court disagreed with the applicant and stressed that when viewing the individual mark as a whole, the similarity of the containing devices should already unavoidably mislead the general consumers to relate the sources of these two trademarks.
Based on the reasons above, the Court concluded that the trademark “Alisoft.com and Chinese Characters & Device” was similar to the cited mark “PC Partner & Device” and highly likely to cause the consumers’ confusion of recognizing their sources. Consequently, an unfavorable rejection for registration was remained against the trademark “Alisoft.com and Chinese Characters & Device”.
Captioned Application “Alisoft.com and Chinese Characters & Device
Cited Prior Registration “PC Partner & Device”
Organized and translated by Tony Chen
International Affairs
