經通國際智慧產權事務所

On December 4, 2008, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the trademark opposition against the trademark registration bearing “Ma Ma Go” (or “” in Chinese. “Ma Ma” refers to mother, while “Go” refers to purchase) and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Intellectual Property Court. In the said decision, the Court noted that the judgment of similarity between two trademarks should be based on the society’s understanding and the actual market trade.

The said opposition was filed based on the opponent’s trademark registration bearing “Mommy Go mamigo.com & device” (with Mommy in Chinese as “”). The Court examined the two said trademarks and noted that the opponent’s trademark was consisted of enlarged “Mommy GO” (with Mommy in Chinese as “”), a bird device and minimal English letters of “mamigo.com”. And the enlarged “Mommy GO” of the said trademark was the focus of the consumers’ attention. Furthermore, through the comparison between the opposed trademark bearing “Ma Ma Go” and the opponent’s trademark bearing “Mommy GO”, the Court noted that “Ma MA” and “Mommy” are both commonly used terms by Taiwanese for addressing mother; and the Chinese character of “Go” () and the English word “GO” had the same pronunciation. On the other hand, the Court pointed out that the goods designated under the opposed trademark were baby sox, baby clothing, diapers, etc. and the services designated under the opponent’s trademark were providing baby clothing, baby bedding, baby cats, etc. via internet. Therefore, even though different classes of goods and services were designated under the two said trademarks, considering the frequently presented trend of combining physical sales channels with sales via the internet, and the similar materials, functions and producers of the said goods and services, the Court concluded the two said trademarks to be highly similar.

As for the appellant’s claim of that the long-term co-existence of the two said trademarks could be proven by the submitted evidence, the Court examined the submitted evidence and noted that all the evidence was either of altered or amended forms of the opposed trademark. Therefore, the Court denied the co-existence of the two said trademarks at the time (February 15, 2006) of granting the opposed trademark.

Based on the reasons above, the Court concluded that the opposed trademark was highly likely to cause the consumers’ confusion of recognizing the source or mislead the consumers to believe a business, authorization or joining relationship existed between the two said trademarks. Thus, the appellant’s claims were rejected by the Court.

Organized and translated by Akina Pan

International Affairs