The Intellectual Property Court rendered the 103-Hang-Shang-Su-24 Administrative Decision of June 25, 2014 (hereinafter, the "Decision"), pointing out that to determine if a trademark is distinctive, the bases should be the legal regime for trademark examination in this nation and the impression left by the trademark upon the consumers and the trading market.
According to the facts underlying the Decision, Defendant Lin Chih Lin Technology Co. applied to the Intellectual Property Office (hereinafter, the "IPO") for the registration of "DR. HU Miracle & Device," which became a registered trademark (hereinafter, the "Trademark at issue") when the approval was granted. However, Tien Yi Biotech Co. filed an opposition on the ground that the Trademark at issue violates the Trademark Law. The IPO cancelled the registration of the Trademark at Issue after its examination, since the IPO believed that the Trademark at Issue is likely to confuse relevant consumers into misidentification due to its structural similarity to the "DR. WU & DESIGN," "DR.WU & Device" and "DR. WU" trademarks, which form the basis of the opposition.
Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law provides that a trademark shall not be registered if it "is identical with or similar to another person's registered trademark or earlier filed trademark to the extent that it is likely to confuse relevant consumers into misidentification." According to the Decision, the likelihood of confusions and misidentification should be generally determined by considering the strength of trademarks in terms of distinctiveness, similarity or degree of similarity of trademarks, similarity or degree of similarity in goods or services, the status of diversified operations of earlier rights holders, actual circumstances of confusions or misidentification, degree of familiarity with various trademarks among relevant consumers, and the good faith or bad faith of the applicant of the Trademark at Issue and other factors for confusions or misidentification.
It was further pointed out in the Decision that the Trademark at Issue is similar to the trademarks forming the basis of invalidation in the appearance of the overall texts and pronunciations. Therefore, the trademarks are similar and the goods designated for use for the trademarks are similar or highly similar. In addition, the trademarks forming the basis of invalidation should be accorded more protection because they are famous marks. Therefore, it was generally concluded that relevant consumers are very likely to be confused into misidentification at the time of purchase.
Moreover, although Lin Chih Lin Technology Co. argued that it had no bad faith when registering the Trademark at Issue and that there are also many trademarks featuring a combination of a doctor's title plus an English name registered with the IPO and contained in the trademark databases of mainland China. However, it was stressed in the Decision that whether a trademark application is approved or invalidation is valid is subject to the principle of case-by-case trademark examination, and that whether an individual case should be found legal or appropriate during its examination should not be bound by other cases. In addition, trademark rights are territorial in nature due to the principle of territoriality. With the exception of famous trademarks or marks, a trademark registered and obtained in one country entails exclusive rights within the territories of such country and such rights do not extend beyond the territories. Therefore, the distinctiveness of a trademark should be determined based on the legal regime for trademark examination in this nation and on the impression left by the trademark upon the consumers and the trading market. Although there are several trademarks featuring a combination of a doctor's title and an English surname or surname initials, still no reference or analogy can be appropriately made among different cases, not to mention that the legal regime for trademark examination varies by country with different examination standards. Therefore, cases of coexistent registration of different trademarks in other countries cannot be cited for reference.
Based on the foregoing reasons, it was also held in the Decision that the Trademark at Issue should not be registered since it is likely to cause confusions and misidentification.