The Intellectual Property Court rendered the 103-Hang-Shang-Su-48 Decision of September 3, 2014 (hereinafter, the "Decision"), holding that under Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law, which provides: "being identical with or similar to another person's earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration," the applicant in this matter had learned about the existence of another party's trademark due to relevant or competitive relations vis–a-vis other operators and is subject to "any other relationship" under such provision.
According to the facts underlying the Decision, the Plaintiff applied to the Intellectual Property Office (hereinafter, the "IPO"), the original disposition agency which is also the Defendant in this case, on July 1, 2010 to register the "DEFI Design" trademark designated for use on Class 35, which includes services such as "retail and wholesale of sports equipment and rackets." According to the IPO's examination, the application was registered as the No. 1492602 trademark (hereinafter, the "Trademark at Issue"). The Intervenor, Han Meng Sports Enterprise Co., Ltd. (hereinafter, "Han Meng Co."), filed an opposition against the trademark. The IPO believed after examination that the registration which designates the Trademark at Issue for use in certain services violated Article 23, Paragraph 1, Subparagraph 14 of the Trademark Law effective at the time of registration and Article 30, Paragraph 1, Subparagraph 12 of the current Trademark Law and decided that the registration that designates the Trademark at Issue for use on services such as the "retail and wholesale of handbags, sports pads, sports equipment, rackets, badminton poles, badminton nets, sports protective gears, racket lines, sports bags, sports balls" shall be revoked, and that the opposition against the registration that designates the Trademark at Issue for other services is not valid. Dissatisfied with the portion of the disposition that affirms the opposition as mentioned above, the Plaintiff filed an administrative appeal, which was rejected, before filing this administrative lawsuit with the Intellectual Property Court.
Under Article 30, Paragraph 1, Subparagraph 12 of the Trademark Law, a trademark shall not be registered in any of the following circumstances: being identical with or similar to another person's well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application.
It was pointed out in the Decision that the provisions of Article 23, Paragraph 1, Subparagraph 14 of the Trademark Law effective at the time of the registration of the Trademark at Issue and of Article 30, Paragraph 1, Subparagraph 12 of the current Trademark Law are made to avoid unfair competition caused by rushed registration of a trademark which copies the trademark of another party by granting the owner of an earlier used trademark with remedies when such earlier trademark is registered first by another party. The Decision also elucidated and referred to Article 6-7, Paragraph 1 of the Paris Convention and Article 8, Paragraph 3 of the European Community Trademark Regulations, which prohibit agents or representatives from rushing to register earlier used trademarks and expand the scope of application to cover the circumstances that an earlier used trademark which is learned due to contract, geographical connections, business dealings or other relationship is plagiarized and registered. In addition, the so-called "any other relationship" should refer to the circumstances where an applicant has rushed to register an earlier used trademark of others which is learned as a result of relations such as "contract, geographic connections, or business dealings," or alternatively in spite of no business dealings, the condition of "any other relationship" would still be satisfied if the existence of an earlier used trademark is learned through business management relationship with relevant or competitive companies in Taiwan (compare the 103-Pan-23 Decision of the Supreme Administrative Court).
It was held in the Decision that the Trademark at Issue is almost exactly the same as the "DEFI" trademark, which forms the basis of opposition, in terms of font, design and color, and that it should be deemed that they are similar trademarks with a high degree of similarity. In addition, a comparison of the scope of services for which the Trademark at Issue is designated with badminton shuttlecocks, badminton rackets, racket bags, and net stringing machines, for which the DEFI trademark, which forms the basis of opposition, is designated, shows that they both pertain to sports equipment, tools, implements or backpacks or sports bags that hold items and have common or associated characteristics in factors such as functions/characteristics, producers/providers, marketing channels, sales locations, consumer segments, etc. Therefore, they should be identical or similar goods or services under general social concepts and market trading circumstances.
In addition, it was concluded in the Decision that the Intervenor had used the DEFI trademark, which forms the basis of opposition, in similar goods or services before the registration application of the Trademark at Issue on July 1, 2010 based on the evidence submitted by the Intervenor to substantiate use during the opposition stage, including a product catalogue that indicates "2010 Style, Newly Born" (which shows the backpack-type multi-purpose racket bags bearing the DEFI trademark, which forms the basis of opposition); a copy of uniform invoices issued by Pai Hong Co. in 2009 and 2010 (which show the buyers Minchuan Elementary School, Chiaochen Elementary School and Tounan Senior High School had purchased racket products bearing the DEFI brand from Pai Hong Co. before the registration date of the Trademark at Issue); pictures of product tags of badminton rackets (which bear the DEFI trademark, which forms the basis of opposition, and reflect manufacturing dates during 2004 through 2010).
It was pointed out in the Decision that "badminton poles, badminton nets and tennis nets," for which the Trademark at Issue is designated, involve professional sports equipment. Without suppliers of such equipment, there is definitely no possibility to designate such services. The Plaintiff and the Intervenor both sell sports equipments and implements in the same industry and would reference the goods and product catalogues of the Intervenor. In addition, the DEFI trademark, which forms the basis of opposition, is not derived from any existing vocabulary or thing, has no meaning on its own and does not convey any relevant information about any product or service. It is obviously that such trademark was specifically designed by the Intervenor to identify and differentiate sources of goods. The Plaintiff designates the Trademark at Issue, which is almost exactly the same for use on the same or similar goods or services. This can hardly be attributed to mere coincidence. The Plaintiff also failed to provide any evidence to the Intellectual Property Court for reference to substantiate the history or creation origin of the Trademark at Issue. After the above-mentioned circumstances are considered, it can be concluded that the Plaintiff had obviously learned about the existence of the trademark which forms the basis of opposition due to its competitive relationship with the Intervenor and had rushed to register the Trademark at Issue with an intent to copy and engage in improper competition.