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Similarity of Device Trademark Determined by Appearance and Consumer Perceptions
According to the Examination Guidelines on Likelihood of Confusion of Trademarks issue by the Intellectual Property Office (IPO), there are eight factors should be taken into account when analyzing the likelihood of confusion between trademarks: (1) The strength of the distinctiveness of the marks (2) The similarity of the marks (3) The Relatedness of the goods/services (4) The diversification of the prior trademark owner's business (5) Actual confusion (6) The level of familiarity of each trademark owner (7) The intent (good faith/bad faith) of the applicants (8) Other related factors. In practice, the IPO might weight each of the above factors differently on a case-by-case basis. Among the above eight factors, "the similarity of the marks" is one of the most common and important issue in trademark disputes.
In general, the similarity of marks is tested on three levels: sight, sound, and meaning. According to the Guidelines, when assessing the similarity between device marks, the sight, namely the appearance of the marks should be given predominant weight. In a recent administrative litigation regarding a trademark opposition, the Intellectual Property Court gave a good demonstration of how the Courts would apply the test.
In the case, the opposed mark was a device mark containing a tilted round fruit with two detached leaves. On the other hand, the based mark of the opposition was a device mark containing an apple with one detached leaf and a bite taken out. Both of the marks were designated on the goods such as computer software, computer hardware in Class 9 and services such as a computer accessary distribution, computer software design in Class 42.
The Opposer claimed that, the detached leaves design in the opposed mark was extremely similar to the design of the based mark. In addition, the Opposer pointed out the detached leaf design was an important element of its trademark based on the survey conducted by the Opposer recently in the United States. Furthermore, the Opposer stated that the based mark was considered as a well-known mark in Taiwan therefore should be given a boarder protection. However, the IPO, who made an unfavorable decision against the Opposer, argued that the opposed mark was a citrus fruit with two detached leaves and without any part taken out. Therefore, according to the IPO, the meaning and the overall impression of the opposed mark are distinguishable from the base mark.
First of all, the Intellectual Property Court clarified that, the based mark of the opposition had been deemed as highly well-known in past court decisions, therefore the strength of the distinctiveness of the based mark was strong. As for the similarity between the two conflicting trademarks, the Intellectual Property Court explained that, the overall appearance of the two marks are still similar given that both of the marks contained a round fruit and detached leaf. In addition, the Intellectual Property Court questioned that, even though the IPO claimed the opposed mark to be a citrus fruit, the relevant consumers might not be able to identify that the opposed mark was a citrus fruit only based on the elements such as the silhouette of the fruit and detached leaves.
What is worth noting is that, the Intellectual Property Court pointed out that, according to the past opposition cases filed by the Opposer with the based mark, the IPO had given favorable decisions to the Opposer against other marks containing round apple fruit without bite taken out, with or without detached leaves. As a result, the Intellectual Property Court held that there should be a likelihood of confusion between the opposed mark and the based mark, and then requested that the IPO cancel the opposed mark.