經通國際智慧產權事務所

On August 6, 2009, the Taiwan Intellectual Property Office’s (TIPO) decision of accepting the trademark cancellation filed by WOWPRIME CORP. (WOWPRIME) against the trademark registration number 01195354 bearing “” (pronunciations of the Chinese characters: xi ti) 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 the disputed trademark was concluded to be not similar to WOWPRIME’s trademark bearing “” (pronunciations of the Chinese characters: xi ti), regardless of the highly similar services designated under the two said trademarks, confusion of recognition among the consumers was unlikely to arise.

The appellant, Ms. Yue-Xia Jiang, provided the claims of that the opposed trademark was created based on the fact that her café bearing the disputed trademark is located on the dike (pronunciations of dike in Chinese: ti) of a river (pronunciations of river in Chinese: xi), and the Chinese/English characters and device included in the appellant’s trademark were all different from those of WOWPRIME’s trademark. However, the defendant, TIPO, claimed that the two said trademarks have the same pronunciations and both designated the services related to restaurant. The Court examined the similarity between the disputed trademark and WOWPRIME’s trademark based on the following points:

1. Despite the same pronunciations of the Chinese characters included in the two said trademarks, the two said trademarks contained different Chinese characters, English words and devices forming different overall appearances.
2. For the concepts of the two said trademarks, the Chinese characters of the disputed trademark represent the location of the appellant’s café being on the dike of a river, and the Chinese characters of WOWPRIME’s trademark represent the meaning of and is derived from the partial transliteration of “TASTY”. Thus, the two said trademarks are conceptually different.
3. Despite the same pronunciations of the Chinese characters included in the two said trademarks, the two said trademarks contained different English words forming different overall pronunciations.
4. Even though the two said trademarks designate highly similar services of restaurants and dining related services, the aforementioned differences between the two said trademarks prevented the likelihood of confusing the relevant public.

Based on the reasons above, the Court accepted the appellant’s claims. The said Court decision was subject to further appeal; however, WOWPRIME has made the announcement of accepting the Court’s said decision without further filing an appeal.

Organized and translated by Eunice Yang

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