經通國際智慧產權事務所

The Supreme Administrative Court has dismissed the appeal filed by ALOE VERA of America, Inc.; therefore, ALOE VERA is not allowed to register its “flying eagle” trademark in Taiwan.

ALOE VERA of America, Inc, a subsidiary of Forever Living Products International, Inc., filed a trademark application to the TIPO in December 2005 to register the mark  in class 3 for cosmetics and other female oriented products.

After examination, the TIPO cited the prior registration,  (no.1288666), to reject ALOE VERA’s application. The decision was made based on the fact that the mark of the junior application is confusingly similar to that of the prior registration. In addition, the goods designated by the junior application are either similar or identical to those designated by the prior registration in class 3. Such an application is very likely to cause confusion to the general consumers, and give them the impression that the sources of different goods are of the same or related.

Upon receipt of the rejection, ALOE VERA of America, Inc. filed an appeal to the Taipei High Administrative Court, requesting the Court to withdraw the TIPO’s former ruling. ALOE VERA of America, Inc. argued that the appearance, the connotation and the pronunciation of its trademark are significantly different from those of the cited trademark. The TIPO’s decision, however, was made without taking these differences into consideration; instead, the TIPO only compared the “flying eagle design” of the two trademarks and determined that the two trademarks are confusingly similar. Consequently, the TIPO’s decision was not justified.

Even though the drawings of the two trademarks contain minor differences, in that the trademark of the rejected application is composed of the English word “FOREVER” and depicted an eagle with its claws grabbing an aloe while that of the cited registration contains the English words “Complices Eagle” and an eagle, the TIPO argued that both trademarks depicted an eagle with its wings spread to form a V-shape, head lowered and claws wide opening, signifying a landing/grabbing action. Although the two eagles are flying towards different directions, when observed in isolation non-concurrently, the general consumers, without paying close attention to the marks, are very likely to believe that the sources of different goods are the same or related. Consequently, the TIPO determined that the two trademarks are confusingly similar.

After the trial, the Taipei High Administrative Court commented that judging whether or not two trademarks are confusingly similar is not conducted by examining side by side how the detail of one trademark is different from that of the other. Instead, the trademark should be treated as a whole and observed in isolation. Both of the trademarks contain an eagle with its head lowered and wings spread to a form a V-shape. These are the most distinctive features of both trademarks, and will also be the focal points that draw the general consumers’ immediate attention. Consequently, these two distinctive features, rather than the object grabbed by the claws and the words contain in the trademarks as claimed by the plaintiff, should be the main points being compared for their similarity.

Furthermore, the Taipei High Administrative Court reasoned that having various bases in operations in Taiwan does not necessarily prove that the trademark has been used as claimed by Forever Living Products International, Inc. In addition, the company focused on comparing the sales of the clothing bearing its trademark. Such a comparison, in the Court’s opinion, is biased, and, therefore, cannot be considered as valid. Consequently, the Court rejected the appeal on November 20, 2008.

Following the defeat, ALOE VERA of America, Inc. appealed to the Supreme Administrative Court. The Court, however, dismissed the appeal and sustained the original judgment. The trademark application filed by ALOE VERA of America, Inc. is, therefore, rejected for registration.

“COMPLICES EAGEL & Design”Reg. No. 1288666

“FOREVER LIVING PRODUCTS & Design” No claim is made to the exclusive right to use “FOREVER” apart from the mark as shown.

Organized and translated by Akina Pan

International Affairs