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Trademark Similarity should be Measured Based on Consumer Perceptions, Not Merely on the Meaning Associated with the Trademarks
As a principle, when conducting a similarity of marks analysis, the comparison of the conflicting marks must be based on the overall impression of the marks, rather than the individual elements of the marks to the exclusion of other elements. However, it is possible that consumers in fact give some elements more attention than others when actually encountering the marks. Terms with higher distinctiveness, also known as the "dominant portion" of a mark, usually makes higher impression to consumers. On the other hand, terms describing the quality or features of the underlying products, or terms are regularly used in a specific goods or service, such as GARDEN or ROYAL in restaurant service, are often considered to have lower distinctiveness. Since consumers generally pay little attention to these terms, the courts or the Intellectual Property Office in Taiwan usually give less weight to these terms in their analysis.
When naming their trademarks, businesses often use foreign language terms describing the quality or features of their products as part of their trademarks. Since the meaning of these foreign language terms are not always known by the consumers in Taiwan, when determining trademark similarity, how to give weight to these terms is still an issue to be evaluated on a case-by-case basis. In a recent administrative litigation case regarding a trademark opposition, the Intellectual Property Court of Taiwan gave a good demonstration of how to approach this issue.
In this case, the opposed mark HYVSIC designated in Class 10 is used for synovial fluid supplements which are primarily composed of Hyaluronic Acid. The mark cited as the basis of the opposition SYNVISC is also used for the same kind of product. The trademark owner of SYNVISC claimed that the two marks are confusingly similar to each other because both marks contained the term VISC. However, the owner of the opposed mark HYVSIC argued that VISC is the abbreviation for VISCOSITY, which is the main characteristic of Hyaluronic Acid, therefore the Court should give the term little weight in rendering its similarity of marks determination.
The Intellectual Property Court pointed out that, the consumers in Taiwan might not understand that VISC is the abbreviation for VISCOSITY by its appearance. The Court further stated that the assessment of mark similarity should be in light of the way which the marks are actually displayed in their purchasing context. When actually encountering with the marks, the consumers usually would not be able to compare two marks side by side in different locations and time. Since both of the marks at issue contained the term VISC, the two marks were similar on the appearance therefore there is a likelihood of confusion.