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Supreme Administrative Court Reveals Principles of Determining Similarity of Trademarks
Subparagraph 10 of Paragraph 1 of Article 30 of the Trademark Act stipulates: A trademark shall not be registered under any of the following circumstances: … 10. being identical with or similar to another person's registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper.
The constituent elements of this clause are "identical or similar trademarks", "identical or similar goods or services" and "likelihood of causing confusion to relevant consumers".
How to determine whether trademarks are similar and the degree of similarity is an important issue in trademark disputes.
The Supreme Administrative Court revealed the principle of determining similarity of trademarks in the appeal case of the administrative litigation on a specific trademark opposition case in 2022. The Supreme Administrative Court stated that the judgment on whether trademarks are similar to each other and the degree of similarity should be based on the overall design of the trademark, which is presented to consumers of goods or services. However, in the principle of overall observation, there is still the so-called main part observation. Although the trademark is presented in the overall design, once consumers of goods or services pay more attention to a certain portion of the designs as the source of its identification, such a portion is the main part of the trademark design. The observation of the main part is not contradictory to the overall observation, and the main part ultimately affects the overall impression of the trademark on consumers of goods or services.
The Supreme Administrative Court took the same view as the Intellectual Property Office and the Ministry of Economic Affairs as well as the Intellectual Property and Commercial Court in this specific trademark opposition case that the trademark "GIOVANNI VALENTINO" is confusingly similar to the cited trademark "giovanni".