經通國際智慧產權事務所

The worldwide renowned clock and watch manufacturer “Seiko Holdings Corporation” (SHC) found that its famous mark “SEIKO” was registered by a Japanese company named “Seiko Advance Ltd.” (SAL) in Taiwan and filed an opposition to the Taiwan Intellectual Property Office (TIPO). The TIPO accepted SHC’s claims and canceled the opposed mark “”. SAL did not agree with the decision and filed an appeal to the Ministry of Economic Affairs (MOEA), which the appeal was also later rejected. SAL then filed an administrative lawsuit to the Intellectual Property Court (IPC).

In the administrative lawsuit, SAL stated that the company started to sell paints and building materials in 1948; two years later, the company was inaugurated under the name “” of which the Japanese pronunciation is “SEIKO”. Based on such fact, SAL alleged that as the word “SEIKO” is not the creation of SHC, which the designated goods of the marks are intrinsically dissimilar, and the appearance and pronunciation of the marks are different. Therefore, there should be no likelihood of confusion to the relevant consumers.

Furthermore, SAL pointed out that Taiwan and Japan are geographically neighboring to each other with long-established cultural and economic ties, and the people in Taiwan are familiar with the word “SEIKO” and its Japanese meanings such as “successful”, “delicate craftsmanship”, etc. Additionally, there are plenty of trademarks consist of the word “SEIKO” and have been registered and co-existed for years. Therefore, SAL petitioned the IPC to withdraw the cancellation of its mark.

On the other hand, SHC indicated that its company was established in 1881 and has started using the mark “SEIKO” on its clocks and watches for over 120 years. SHC alleged that its “SEIKO” is a famous trademark with stronger distinctiveness; in fact, the general consumers and distributors even use “”, which is the Chinese transliteration of “SEIKO”, to indicate SHC’s products. Therefore, the registration of SAL’s mark will confuse the relevant consumers and also dilute the distinctiveness of SHC’s well-known mark.

According to the ruling of the IPC, the reputation and fame of SHC’s trademark have been widely recognized by the general consumers; thus, it is considered as a famous trademark. The IPC accepted SHC’s claims and made the judgment above on June 30, 2010.

Organized and translated by Jenny Yu

International Affairs