經通國際智慧產權事務所

The Supreme Administrative Court in Taiwan recently considered the similarity of the famous Hello Kitty device trademark (shown below) registered by SANRIO COMPANY, LTD. and the device trademark (shown below) registered by SUNG KU PO ENTERPRISE CO., LTD. (Case 97SAC/No. 623, July 17 2008).

Opposed Trademark　　　　Opponent’s Trademark

The court pointed out that the similarity among the trademarks should be based on the comparison in whole. The Court further noted that as only the eyes and noses shown in the opposed and opponent’s trademarks are similar, and the said facial features are only small parts of the two trademarks, the general consumers are able to tell the differences between the two trademarks with ease when employing regular attention. Therefore, the opposed and opponent’s trademarks are not similar. In addition, the Court explained that the opponent’s claim of its trademark being well known should be based on the evidence showing the opponent’s trademark was generally recognized by the related businesses and consumers.

As for the opponent’s submission of the evidence containing various transformations (as shown below) of its trademark, the Court raised suspicion regarding the methods of actual use of the said transformations by the opponent. Concluding from the received evidence, the Court demonstrated that the opponent could only prove the use of the said transformations as cartoon pictures and product appearances instead of trademarks. Thus, no consideration should be awarded to the opponent’s claims regarding its trademark being famous or similar to the opposed trademark.

Transformations of the Opponent’s Trademark

Source from LAWBANK

Organized and translated by Jenny Yu

International Affairs