Our firm represented Dentsply International Inc., to successfully revoke Tomy Incorporated's registration of Omniarch trademark used in orthodontic appliances, by citing the petitioner’s OMNIARCH mark, used earlier in similar goods. In revoking the registration of the opposed mark, TIPO adopted the following arguments:
- The letters as used by the marks in dispute and the arrangement thereof were identical. Such marks could be deemed highly similar to each other.
- For the goods "orthodontic appliances" as used, the cited mark bore a strong distinctiveness.
- Both parties' marks were for use on orthodontic appliances. They were obviously identical or highly similar.
- The petitioner's subsidiary, GAC, had assigned the trademark rights of the cited mark to the petitioner. By which assignment, all of the rights of the mark were generally taken over by the Opposing Party. As a result, the petitioner was qualified to claim the privilege from the prior use of the cited mark.
- The respondent admitted that the cited mark was first created by GAC. According to the Agreement signed between the respondent and GAC, it was certain that the parties had already had contractual and business connection before.
- Based on the evidences submitted by the respondent, the opposed mark was used later than GAC's use of the cited mark. Such evidences could not support respondent’s position.
In lights of the above, it was concluded that the respondent’s filing for registration of the opposed mark in Taiwan was from the result of its prior awareness of the existence of the cited mark. Therefore, the registration of the opposed mark should be revoked.