On August 6 2016 the Supreme Administrative Court upheld the IP Court's decision that the trademark STOPGAP should not be registered.
The case concerned the trademark invalidation administrative litigation initiated by Gap (ITM) Inc against Huang Baicheng (a local individual in Taiwan) regarding the trademarks GAP and STOPGAP.
STOPGAP was granted registration for use on garments, boots and other relevant goods on October 16 2011. On February 1 2012 Gap cited its registered mark GAP to file an opposition with the Taiwan Intellectual Property Office (TIPO) against registering STOPGAP. TIPO held that the disputed trademark is 'stopgap' (one word) rather than 'stop gap' (two words) and that no confusion or dilution could be caused by the use of the mark since the word 'stopgap' means a temporary substitute for something else. On April 9 2014 Gap filed an administrative appeal but the Ministry of Economic Affairs rejected it. Gap went on to file an administrative litigation with the IP Court on October 3 2014.
After an investigation, hearings and a trial, the IP Court finally cancelled the registration of STOPGAP on February 12 2015. The court held that GAP is a famous trademark in Taiwan, but it also took the view that the existence of trademarks similar to GAP may cause confusion or dilution due to the similarity between the words 'gap' and 'stopgap'. Besides, 'stopgap' could be interpreted to have the defamatory meaning of 'stop Gap' and with malicious intent this would constitute unfair competition.
An appeal was filed against the IP Court judgment. The Supreme Administrative Court rejected the appeal on August 6 2015.
For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300) or email ([email protected]). The Lee and Li website can be accessed at www.leeandli.com.