經通國際智慧產權事務所

On August 6, 2009, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the trademark application number 096053465 bearing “” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were overruled by the Intellectual Property Court. In the said decision, the Court noted that because squirrel was a kind of animal existed in the natural world, and according to the evidence submitted by the appellant (applicant of the disputed trademark), various granted trademarks employed complete or partial squirrel devices, the prior trademark registration bearing “” cited by the defendant lacked distinctiveness when comparing to the disputed trademark, and was not similar to the disputed trademark.

Regardless of the fact that the disputed trademark had been used by the appellant for years in distribution channels including famous department stores and online shopping websites, the disputed trademark application was initially rejected because the TIPO considered the disputed trademark to be similar to the prior trademark registration bearing “”. And after the subsequent appeal was also rejected by the Committee of Appeal, the appellant filed an administrative lawsuit with the Intellectual Property Court. After reviewing the arguments and evidence provided by both parties, the Court overruled the pervious decisions and instructed the TIPO to reexamine the disputed trademark application based on the following reasons,

1. Both the cited prior trademark and the disputed trademark employed the common image of squirrel devices without special design and thus had weak distinctiveness.
2. Even though the cited prior trademark and the disputed trademark designated the same and similar goods, the two said trademarks could not be considered to be similar because similar characteristics among the appearances of the two said trademarks were all of common features of squirrels in the natural world.

The said Court decision was subject to further appeal.
 

Organized and translated by Tony Chen

International Affairs