Item 10, Paragraph 1, Article 30 of the Trademark Act states, "if one trademark is identical with or similar to another person’s registered trademark or earlier filed trademark and is to be applied to 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 among relevant consumers," the authority shall refuse such trademark registration.  When determining whether there exists a likelihood of confusion, the eight factors in "Examination Guidelines for Trademark Likelihood of Confusion" ("Examination Guidelines") published by the Intellectual Property Office ("IPO") are taken into consideration.  Said eight factors include (1) strength of distinctiveness; (2) similarity of trademarks and level of similarity; (3) similarity of goods or services and level of similarity; (4) former trademark applicant's diversification management (5) confusion that has been caused; (6) consumer familiarity with the trademarks; (7) the trademark applicant's good faith; and (8) other relevant factors. In determining whether a trademark is similar and the degree of similarity, the Examination Guidelines indicate that the overall appearance, phonetic characteristics and conceptual aspects of a trademark should be judged as to whether the degree of similarity has reached the level of likelihood of confusion, rather than judging based on a purely mechanical comparison.

 

In this case, MATSU LIQUOR FACTORY INDUSTRY CO., LTD. ("MATSU LIQUOR FACTORY") was granted a trademark registration ("Trademark 1") for the Chinese term "馬祖高粱酒" and the English term "MATSU KAOLIANG LIQUOR" arranged vertically. Subsequently, a third party was granted a trademark registration ("Trademark 2") for the design of "馬祖高粱啤酒" in Chinese with the patterns "round shape, with the index fingers and thumbs of both hands touching each other, with a round ball in the center." MATSU LIQUOR FACTORY filed an opposition against Trademark 2, which was dismissed by the IPO. MATSU LIQUOR FACTORY then filed an administrative appeal and a suit. In its Judgment No.: 111-Shang-475, the Intellectual Property and Commercial Court ("Court") opined that the two trademarks have the same five words "馬祖高粱酒." Trademark 2 has the additional word "啤" ("馬祖高粱啤酒"), but a difference of merely one word is not enough to constitute a significant difference. The Court also opined that although Trademark 2 has a different pattern from Trademark 1, the pattern only caused slight visual effect, and to consumers in Taiwan, the Chinese text of a trademark is still often the main part relied on for identification. The Court thus determined that the two trademarks constitute similarity.

 

In this case, the Court illustrated that when determining whether a trademark is similar, although the overall appearance of the trademark should be compared, if there is a main identifying part of the trademark and such part of the two trademarks are similar, it should be determined that the two trademarks are similar; otherwise, it would be tantamount to encouraging the later trademark applicant to use the combination of the words of the earlier trademark, and then add the design of the non-primary identifying part of the trademark, so as to mechanically reduce the degree of similarity.