The Intellectual Property Court rendered the 103-Hang-Shang-Su-86 Administrative Decision of October 30, 2014 (hereinafter, the "Decision"), holding that whether two trademarks are identical or similar should be determined by the likelihood of confusion and misidentification among general goods buyers with general knowledge and experience and with general care exercised at the time of purchase when the appearances, concepts or pronunciations of the main portions of the two trademarks are separately observed.
The Plaintiff in the Decision registered the "[Chinese Translation of Dr. Hu] Dr. Hu & Device" trademark (hereinafter, the "Trademark at Issue"). The Intervenor subsequently filed an opposition against the Trademark at Issue on the ground that it is similar to his "DR. WU" trademark registered earlier and is thus prone to confusion and misidentification. The original disposition agency rendered a disposition that rejected the opposition. Dissatisfied, the Intervenor filed an administrative appeal, which caused the Defendant to "set aside the original disposition and to request the original disposition agency to render another lawful disposition." Dissatisfied with decision on administrative appeal, the Plaintiff brought administrative action with the Court to set aside the decision on administrative appeal.
Under Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law, a trademark identical or similar to a registered trademark or a trademark whose registration application is filed earlier for the same or similar classes of goods or services to the extent that relevant consumers are likely to be confused or misidentify shall not be registered. It was pointed out in the Decision that the so-called "identical or similar trademarks" shall be determined by the likelihood of confusion or misidentification among general goods buyers with general knowledge and experience and with general care exercised at the time of purchase when the appearances, concepts or pronunciations of the two trademarks are observed separately. It was further indicated in the Decision that the likelihood of confusion or misidentification in the appearances or concepts of trademarks should be determined based on objective facts pursuant to the following principles: (1) The general care exercised by buyers with general knowledge and experience should be a standard; (2) separate and general observations of the texts, devices or symbols of trademarks at different times and in different places should be a standard; and (3) in case of trademarks consisting of texts, devices or symbols, each component should be observed and the main constituting portion should serve as the standard. Therefore, to determine if two trademarks are similar, the main portions of the trademarks which are specifically distinctive in appearances, concepts and pronunciations and sufficient to form core impressions on the entirety of the marks should be separately observed at different times and in different places to determine if it is likely to cause confusion or misidentification.
It was held in the Decision that the Trademark at Issue is likely to cause confusion and misidentification vis-à-vis the trademark which forms the basis of opposition and thus should not be registered for the following reasons:
- The Trademark at Issue also includes three Chinese characters denoting "Dr. Hu." However, this is a direct translation from foreign language "DR. HU." Depicted with a smaller and thinner font in a highlighted fashion, general consumers will simply consider it to have the same meaning as the direct translation of the foreign language portion. Therefore, the foreign language "DR. HU" portion in the Trademark at Issue becomes the main constituting portion when it gains primary importance as the trademark is observed in its entirety. As a result, the foreign language "DR. HU" portion in the Trademark at Issue shares is similar in terms of appearances, concepts and pronunciations to the foreign language "DR. WU" portion of the trademark which forms the basis of opposition, making it likely for general consumers to be confused and misidentify.
- The Trademark at Issue and the trademark which forms the basis of opposition both represent relevant beauty and skincare products in aspects relating to the cleaning, care and toning of skin with common or associated characteristics in functions, materials, producers or applications. They should certainly constitute the same or similar goods according to general social concepts and market trading circumstances.
- Goods produced by producers may include products with higher and relatively more affordable prices. It is inappropriate to jump to the conclusion that the consumer segments will not overlap with no likelihood of confusion and misidentification simply on the ground that the two trademarks represent goods of different price levels.
Although the foreign language "WU" in the trademark which forms the basis of opposition is a transliteration of the Chinese surname "Wu" and it is indeed true that Wu is a common surname in the Chinese society, still it should be protected since it has become famous due to the Intervenor's marketing efforts. Moreover, administrative trademark action seeks to protect the consumers. When the degree of similarity between the two trademarks which are used for the same or similar goods or services will lead to confusion and misidentification among relevant consumers, although the Plaintiff also uses great efforts to use the trademark, the trademark which is registered first should still be protected and the trademark for which registration application is filed later should not be registered if facts of co-existence of the trademarks are not yet established in the market.