經通國際智慧產權事務所

The Supreme Administrative Court in Taiwan overturned Taipei High Administrative Court’s ruling regarding the Taiwan Intellectual Property Office (TIPO) ’s rejection to the opposition filed by the French cosmetic company HELENA RUBINSTEIN against the mark HR HELENA R. for “clothing, ties, belts, hats, gloves, etc.” (Class 25). The Examining Attorney and the Board of Appeal of TIPO considered the opposed mark and the various trademarks containing the HR logo registered in United States, United Kingdom, France, Canada, Australia, etc. by the opponent were similar in essence but rejected the opposition on grounds that the evidences provided by the opponent mostly contained documents originated from foreign countries and lacked of proof of domestic use of opponent’s own trademarks. In addition, the majority of the said evidences were dated either just several months earlier or later than the application date (May 20th, 1997) of the opposed mark. As a result, the opponent’s claim of the HR series trademarks to be famous in Taiwan was deemed as invalid by TIPO.

Taipei High Administrative Court concurred with TIPO’s reasons of rejecting the aforementioned opposition; and opted to overrule the appellant’s claim of that 25 of the 140 trademark applications previously filed by the opposed party constituted trademark infringements since such matters were unrelated to the case being tried.

The French cosmetic company then took this matter to the Supreme Administrative Court. The Supreme Administrative Court pointed out that the opposed mark was similar to the trademarks registered by the appellant, and took the position that the core decisive factor of this case should be whether or not the appellant’s trademarks were already famous prior to the application date of the opposed mark. The court provided the analysis of that, according to the “Main Points for Determining a Well-known Trademark or Mark” constituted by the TIPO, the evidences submitted to establish the fame of a mark was not limited to domestic documents and the fame of a mark should not be disaffirmed because the evidences originated from foreign countries, or the mark lacked of domestic use. Moreover, the identification of a well-known trademark should be based on that if the mark was generally recognized among the related businesses or consumers instead of the evidences of that whether or not the general consumers were able to have direct contact with the mark. Therefore, it was inadequate of the Taipei High Administrative Court to:

1.Disregard the foreign evidences submitted by the appellant;

2.Judge the appellant’s trademarks to be unknown by the related businesses and consumers in Taiwan without explanation; and

3.Ignore the fact that consumers might gain recognition of the appellant’s trademarks through the submitted evidence of the introduction to HR series trademarks contained in a book published in Taiwan.

The Supreme Administrative Court in Taiwan had ordered this case to be reissued back to the Supreme Administrative Court.

Source from Taiwan High Administrative Court

Decision made on Mar. 24, 2005

Organized and translated by Akina Pan

International Affairs