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Determination of Trademark Similarity Based on English Pronunciation-Derived Suggestive Trademarks
The central purpose of the trademark protection system is the safeguarding of the rights and interests of trademark owners as well as consumers, while maintaining fairness of competition in the market. As global competition intensifies and new commercial practices emerge, the importance of trademark protection has increased. The Administrative Judgment (113) Sing-Shang-Su-Zi No. 36, recently issued by the Intellectual Property and Commercial Court (hereinafter the "IP Court"), considered whether English-pronunciation-derived suggestive trademarks can be determined to be sufficiently similar to cause consumer confusion misidentification. Such Judgment further considered the legality of the new trademark application.
"百靈" is a trademark registered in Taiwan by the German company Braun GmbH (hereinafter referred to as the "Cited Trademark"), designating its use for advertising-related services under Class 35 of the Taiwan Intellectual Property Office's (hereinafter the "TIPO") goods and services classification. Braun GmbH is well known for selling consumer electrical products such as electric shavers, epilators, and ear thermometers. "百靈果" is a well-known social media platform jointly hosted by two presenters, Kelly and Ken, who primarily conduct their conversations in both Chinese and English. They frequently present current affairs, discuss international news, and explore social issues. The term "百靈果" is frequently used in phrases such as "百靈果 News" and "百靈果 Book Club."
Seeking protection for the "百靈果" trademark, the plaintiff, Moral Oasis Co., Ltd., had previously filed an application with the TIPO to register "百靈果" as a trademark (hereinafter the "Disputed Trademark"), designating its use for advertising-related services under Class 35 of the TIPO's goods and services classification. (Authors' note: The Judgment does not specify the relationship between the plaintiff and the 百靈果-related programs; it is presumed that the plaintiff may be an investor or a production company.) After review by the TIPO, it was determined that the Disputed Trademark constitutes a case under Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act: "being identical to or similar to another person’s registered trademark or previously-filed trademark and to be applied for goods or services identical to or similar to those for which the registered trademark is protected or the previously-filed trademark is designated, and hence there exists a likelihood of confusion of relevant consumers." Based on such determination, the plaintiff's application was rejected. The plaintiff, dissatisfied with such decision, filed an administrative appeal, which was also dismissed. Subsequently, the plaintiff filed an administrative lawsuit with the IP Court. The IP Court upheld the decision of the TIPO and dismissed the plaintiff's lawsuit for the following reasons:
1. The Disputed Trademark "百靈果" and the Cited Trademark "百靈" are similar, with a high degree of similarity.
The IP Court indicated that the determination of whether trademarks are similar and the degree of such similarity should be based on an overall observation of the entire trademark. Within such principle of overall observation, there is also the consideration of the main or dominant parts. These two concepts are not opposed to each other but are complementary and mutually reinforcing. After careful consideration of the Disputed Trademark "百靈果," the IP Court held that the main distinctive element of the Disputed Trademark is the two characters "百靈." These two characters are identical in appearance, pronunciation, and meaning to the main distinctive element "百靈" of the Cited Trademark. Although the plaintiff argued that the concept behind the Disputed Trademark was derived from the English pronunciation of the word "bilingual," making the overall expression "百靈果" rather than just "百靈," the IP Court found that, without further explanation, ordinary consumers would find it difficult to directly associate "百靈果" with the English word "bilingual," and thus would not perceive a significant difference between the Disputed Trademark and the Cited Trademark. Thus, the IP Court concluded that the main distinctive elements of the Disputed Trademark and the Cited Trademark are highly similar, which is likely to cause confusion or mistaken recognition among relevant consumers.
2. The services designated by the Disputed Trademark "百靈果" and the Cited Trademark "百靈" are highly similar:
The plaintiff contends that the services actually provided under the Cited Trademark are primarily promoted through physical channels or traditional media, with an emphasis on explaining product functions, which differs from the promotion of the services actually provided under the Disputed Trademark, which involve new media advertising services. Therefore, the goods and services designated by the two trademarks should be considered different. The IP Court clarified that the determination of whether the services provided under two trademarks are similar should be based on the goods and services specified in the trademark registration applications, rather than on the services actually provided in practice. Given that both the Disputed Trademark and the Cited Trademark designate goods and services under Class 35, the IP Court held that the services designated by both trademarks are highly similar, and thus the plaintiff’s claim should not be accepted.
3. Familiarity of Relevant Consumers with the Two Trademarks:
The IP Court first acknowledged that Braun GmbH had obtained trademark right of the Cited Trademark as early as 2002, and that the consumer products sold by Braun GmbH are common products familiar to relevant consumers. Therefore, the IP Court recognized that the Cited Trademark "百靈" is undoubtedly the trademark owned by Braun GmbH in the eyes of relevant consumers. Although the plaintiff, claimed that the Disputed Trademark application had been used on channels such as Podcast and YouTube, and the result of an online questionnaire survey they commissioned is sufficient to demonstrate that relevant consumers should clearly recognize that the Disputed Trademark "百靈果" is used by the plaintiff as a trademark and thus there should be no risk of confusion or misidentification, the IP Court held that the evidence presented by the plaintiff was insufficient to support such claim. It was unable to prove that the two trademarks would not cause confusion or misidentification among relevant consumers. Therefore, the IP court found the plaintiff’s claim to be untenable.
This case involves the determination of the distinctive elements of a suggestive trademark based on English pronunciation. When rights holders design and apply for suggestive trademarks, in addition to considering the novelty, uniqueness and double entendre that the phonetic similarity may convey to consumers, they should also take into account the degree of recognition that Taiwanese consumers have of the main components of the Chinese characters corresponding to the phonetic similarity. In particular, when the Chinese characters involved in the phonetic similarity overlap with existing trademarks, this may affect the determination of whether the trademark is confusingly similar to the existing trademark, thus influencing whether the new trademark application shall be approved.