經通國際智慧產權事務所

Taipei High Administrative Court has recently ruled the famous clothing label SCOTTISH HOUSE as unregistrable due to the similarity with a prior trademark registration in Taiwan.

From 2004 to 2005, Europacific Ventures Limited, the owner of the SCOTTISH HOUSE mark, had launched a series of cross industry collaborations with several companies to release products including cell phones, notebook computers and credit cards in Taiwan. In 2005, Europacific Ventures Limited filed a trademark application bearing the mark SCOTTISH HOUSE & Device (shown below) with the designated goods of cell phones, computers and computer peripherals in Taiwan. However, the owner of a similar prior trademark registration with the designated goods including telecommunication apparatuses successfully appealed the said application. This matter was then taken to the High Administrative Court but the ruling was still against Europacific Ventures Limited.

　　　　　　　　　　　　                  
Mark Owned By Europacific Ventures Limited　　　　　　Mark of Prior Registration

Taipei High Administrative Court pointed out that both the opposed mark and the mark of the prior registration are composed of a dog device and two English words. As English is not the native language of Taiwanese consumers, when comparing the two said marks for similarity, the emphasis should be placed on the two dog devices. The Court aggress with the prior registrant’s claim of that even the colors of the two devices being compared are different, as both of the devices are characterized as a standing dog facing the right, having short legs and with the tails pointing upward, the two marks are similar. According to this verdict, the TIPO (Taiwan Intellectual Property Office) has to reexamine this case.

Source from 1-apple

Organized and translated by Jenny Yu

International Affairs