經通國際智慧產權事務所

A judgment was reached by the Intellectual Property Court (IPC) on Nov. 26, 2009, which ruled the cancellation of a trademark “button crocodile device”  (reg. no. 1261093). The decision was ruled based on the fact that the opposed mark was similar/identical to 15 trademarks registered by a French company, “LACOSTE”. The “button crocodile device” mark was owned and used for over 3 years by a Taiwanese company named “Long-qiao International Co. Ltd.”.

According to the examination principles of trademark disputes in Taiwan, under the circumstances in which a litigation participant’s trademark was considered in violation of the statues and thus should be cancelled, the IPC generally will not directly grant the pleading for canceling the opposed mark but instead respect the administrative authority of the Trademark Office and indicate the agency to make another proper decision.

Therefore, the judgment might be the first case since the establishment of the IPC that directly grants a trademark cancellation. Whether the judicial decision has invaded the administrative power is yet to be examined.
 

After the trademark “button crocodile device” was approved for registration by the Taiwan Intellectual Property Office (TIPO) in 2008, LACOSTE found out that the mark was similar/identical to its 15 trademark registrations in Taiwan and then filed an opposition to the TIPO. However, the opposition was rejected by the TIPO, and the following appeal was as well overruled by the Committee of Appeal of the Ministry of Economic Affairs.

In disapproval of the unfavorable judgments, LACOSTE filed an administrative lawsuit to the IPC. After reviewing the facts, the IPC indicated that the marks are similar/identical to each other, and such similarity is likely to mislead the relevant consumers to interpret the products bearing the two marks are from the same source or from its authorized distributors/affiliates. Hence, LACOSTE alleged that the decisions of the TIPO and the Committee of Appeal of the Ministry of Economic Affairs were erroneous and thus should be rebutted.

Based on the reasons above, the IPC made the judgment notwithstanding the decisions of the TIPO and the Committee of Appeal of the Ministry of Economic Affairs and provided in the reasoning that the opposer’s motion for canceling the opposed mark should be granted.

Organized and translated by Eunice Yang

International Affairs