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TM "G FORE" Obtaining Registration by Successfully Overcoming IPO's Provisional Refusal



Trademark "G FORE" Application No. 109008557 (Classes 25 and 28) encountered a provisional refusal from the Intellectual Property Office (IPO) for the reason that "G FORE" is similar to the prior mark " " Reg. No. 01089297 and covering similar goods in Class 25; consequently, the registration of "G FORE" is likely to cause confusion or misidentification to the relevant consumers and thus, is not registrable according to Article 30-1(10) of the Trademark Act. After filing defense based on the following grounds, the applicant successfully obtains registration for "G FORE".

 

I.                 Though Article 30-1(10) of Taiwan Trademark Act has three elements, inclusive of (1) the trademarks are identical or similar, (2) the designated goods/services are identical or similar and (3) the likelihood of confusion to the related consumer, according to the Examination Guidelines on "Likelihood of Confusion" announced on 1 July 2012 by the IPO, the most important and final measure to determine whether this provision is violated is whether the relevant consumers will be confused and misidentified.

 

II.               The applicant argues that comparing the two marks, the word "FORE" contained in the applied-for TM "G FORE" is a Scots interjection used to warn anyone standing or moving in a golf game which is a common term used in golf games and golf broadcast events nowadays; nevertheless, the term "G FORCE" in red contained in the cited mark " " is of the meaning "Gravitational Force" and the term "RACING GEAR" clearly indicates the designated goods in Class 25 is used on clothing and goods in the field of racing.

 

Given the great differences of the two marks in composition, overall appearance, pronunciation, design concept and color, they are distinguishable from each other and shall not be deemed as similar marks. Consequently, the registration of TM "G FORE" in Class 25 is not likely to cause confusion or misidentification to the relevant consumers.

 

III.              Additionally, the applied-for TM "G FORE" is to be used on the colorful high-end golf clothing and accessories which is totally different in material, appearance, target consumers, selling channel from the goods "fire resistance clothing and accessories used in racing" covered by the cited mark " " registration. Besides, the applicant of TM "G FORE" is in fashion industry; however, the registrant of the cited mark in the racing industry.

 

Given that the goods designated for "G FORE" are significantly different and well distinguishable from those covered by the cited mark " " in functions, raw materials, and the ended products, target consumers as well as the marketing channel, there is no possibility that relevant consumers will be confused regarding the source of both marked goods.

 

IV.             Moreover, both the applicant of the applied-for mark and registrant of the cited mark are U.S. enterprises and have sold the marked goods in U.S. and other countries for years simultaneously; there is no confusion regarding the goods sources ever happened. Based on the fact that the coexist of the two trademarks in the U.S. market has been recognized by the relevant consumers and can be distinguished from each other, this coexistence should be taken into consideration during the examination.

 

Also, the applied-for mark and the cited mark have co-registered in U.S.A, EU, U.K., Canada and Australia, it is another proof that both parties' marks as well as the designated goods are distinguishable and no likelihood of confusion will be caused.

 

The IPO considers the above arguments and agrees that the mark "G FORE" and the cited mark " " are not similar marks and the registratoin of "G FORE" will not cause the confusion to the related consumers; thus, does not violate the Article 30-1(10) of the Trademark Act. Consequently, the IPO grants the registration to "G FORE".

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