經通國際智慧產權事務所

The Taiwan Intellectual Property Office (TIPO) has rejected So-Do International Business Co., Ltd.’s “BoBo Young & Sheep device” mark in view of a prior registered mark “Butter Lion”. Manufacturing dairy products for over 20 years, So-Do International Business Co., Ltd.’s “Sheep device” has gained popularity with the younger generation. In the view of the Judges, the facial portion of the “sheep device” is identical to another trademark “Butter Lion” and a likelihood of confusion will be caused in the markets. So-Do International Business Co., Ltd. has decided to file an administrative lawsuit to the Intellectual Property Court against the decision issued as the appeal filed to the Ministry of Economic Affairs (MOEA) was rejected.

So-Do International Business Co., Ltd. claims that the “Sheep device” only consists of the head portion design of a sheep in abstract form. The trademark “Butter Lion” consists of the full body length with a tail. Further, yellow is the main color design of the “Butter Lion” and the clothing is in orange stripes. Hence, the two marks view as a whole can be easily distinguished by the consumers.

The panel of Judges points out that there is a likelihood of confusion between the two marks as the designs of the two animals are personified into cartoon characters. If the designs of the two marks use realistic portraits of the head of a lion or a sheep as the distinctive portion of the marks, a likelihood of confusion will not be caused. Further, the panel of Judges considers that the head of the sheep and the lion are the distinctive portion of each respective mark. Both head portions are made of oval shapes with wavy lines encircling on the outer side. The two designs are highly similar and both marks are used on products produced by the same manufacturer. The material, the purpose, and the function of the products are identical. The finished products also share the similar sales channels. In consideration of the aforementioned factors, the panel of Judges decided to reject the administrative lawsuit filed by So-Do International Business Co., Ltd.

Decision of the Administrative Lawsuit issued by the Intellectual Property Court on April 7, 2011.
 

Organized and translated by Dano Yi

International Affairs