經通國際智慧產權事務所

President Chain Store Corporation’s trademark “ifoto” registration was cancelled by the Taiwan Intellectual Property office (TIPO), as it is similar to Apple Computer Inc.’s “iphoto” trademark. President Chain Corporation had further filed an Appeal to the Intellectual Property Court (IP court); however, the Court maintained the unfavorable Decision on April 22, 2010. President Chain Store Corporation can file a further appeal against the Decision issued.

In March 2007, President Chain Store Corporation filed the trademark application “ifoto and device” mark under classes 9, 16, 35 and 40 in accordance to the Enforcement Rules of the Trademark Act in Taiwan and the application was later granted for registration. However, the mark “ifoto” was cancelled in June 2009 by the TIPO as it was regarded as a similar mark to Apple Computer Inc.’s “iphoto” when an opposition was filed by Apple Computer Inc.

The IP Court pointed out that “ifoto” and “iphoto” are identical in pronunciation and appearance; hence, they are considered as similar trademarks. Apple Computer Inc. is a world-wide known company which has been developing products such as iMac, iphoto, iBook and other computer software/hardware and electronic products bearing the “i” series trademarks. The trademark “iphoto” is the trademark used in association with software with photo management and editing functions, and other digital image services. Apple Computer has not only obtained various trademark registrations of “iphoto” around the world, the said mark has also been granted for registration in Taiwan since 1994. The relevant consumers are familiar with the mark “iphoto” and it is considered as a well-known mark in association with computer products/services and digital image services provided through the Internet.

The IP Court’s Decision stated that there is not enough information from various sources such as Google, Yahoo or even the applicant’s own 7-Elven website to evidence that President Chain Store Corporation’s trademark “ifoto” is a well-known mark and the relevant consumers are familiar with the said mark prior to March 13, 2007 when the application was filed.

Organized and translated by James Tsai

International Affairs