經通國際智慧產權事務所

In 2005, the famous Hong Kong based company, Maxim's Catering Limited (Maxim's), filed a trademark application bearing “Hong Kong Mei Xin Pastries (Chinese characters)” in Taiwan. After the examination, the Taiwan Intellectual Property Office (TIPO) cited a prior trademark registration no. 43779 bearing “Mei Xin (Chinese characters)” (Registration Date: Nov. 1, 1970) to reject the said trademark application with the reason of likelihood of causing confusion to relevant consumers in Jan. 2008. Furthermore, the subsequent appeal filed by Maxim's was also rejected by the Committee of Appeal of the Ministry of Economic Affairs.

Not giving up, Maxim's further appealed to the Intellectual Property Court (established in Jul. 2008) with the following reasons,

1. Maxim's was founded more than 52 years ago.
2. Maxim's is famous for dining services, moon cakes and pastries.
3. According to the market survey conducted by ACNielsen, Maxim's moon cake has been the best-selling product in this category for 10 consecutive years in Hong Kong. Therefore, once seeing “Hong Kong Mei Xin Pastries (Chinese characters)”, the relevant consumers should be able to have association with Maxim's.
4. The registrant, Jellico Food Co., Ltd. (Jellico), of the said prior trademark registration is famous for the trademark “JIN JIN & Chinese characters” and mainly produces jellies and juice bars.
5. Jellico’s products are mainly distributed through the channels of grocery stores and supermarkets; the levels of brand awareness between Jellico and Maxim's are different. Thus, the confusion to relevant consumers indicated by the TIPO and the Committee of Appeal should not exist.

The Court compared the trademark “Hong Kong Mei Xin Pastries (Chinese characters)” with the prior registered “Mei Xin (Chinese characters)” and noted that the phrases of “Hong Kong” and “Pastries” contained in the appellant’s trademark are geographic name or descriptive of the products and lack distinctiveness. Thus, as the two said trademarks have similar designated goods, the Chinese characters of “Mei Xin” included in both trademarks may cause the consumers’ confusion of recognition. As a result, since Taiwan adopts first to file principle with no common law protection apply, the Court provided the ruling of rejecting the appellant’s trademark to protect the prior registration’s trademark right.

Derived from www.udn.com

Organized and translated by Tony Chen

International Affairs