Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law provides: "A trademark which is identical with or similar to another person's registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated to the extent that relevant consumers may be confused" shall not be registered. The Intellectual Property Court rendered the 103-Hang-Shang-Su-33 Administrative Decision of August 27, 2014 (hereinafter, the "Decision"), holding that whether the relevant consumers are likely to be confused and misidentify is still the weighing criterion in order to determine if the subparagraph is violated, and whether trademarks or goods or services are similar is just a reference factor for the "likelihood of confusion and misidentification."

According to the facts underlying this Decision, Valentino Co. is an Italian company that registered the VALENTINO & Vinellipse trademark (hereinafter, the "Trademark at Issue"), which Yunix International Corp. believed violates Article 23, Paragraph 1, Subparagraphs 12, 13 and 14 of the Trademark Law and thus applied for invalidation against it. The Intellectual Property Office determined as a result of its review that the invalidation was not valid. Dissatisfied, Yunix International Corp. filed administrative appeal, which was also rejected. Thus, it filed this lawsuit.

The issue in this Decision lies in whether the registration of the Trademark at Issue violates the requirement under Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law, which provides that "a trademark which is identical with or similar to another person's registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated to the extent that relevant consumers may be confused" shall not be registered. It was first pointed out in this Decision that when the court is considering if "relevant consumers are likely to be confused and misidentify," the distinctiveness of trademarks, the similarities of trademarks and the extent of such similarities, the similarities of goods or services and the extent of such similarities, the circumstances of diversified operation of the earlier rights holder, actual incidents of confusion and misidentification, degree of the relevant consumers' familiarity with all trademarks, the good faith or bad faith of the applicant of the Trademark at Issue, and other factors of confusion and misidentification should be generally considered. Meanwhile, all factors have interactive relations. If one factor is particularly matched, the requirements for other factors can be reduced. However, the ultimate weighing criterion is still whether relevant consumers will be confused and misidentify, and whether trademarks or goods or services are similar is just a reference factor for determining "the likelihood of confusion and misidentification." To wit, the "likelihood of confusion and misidentification" and the similarities of trademarks and goods/services are two factors that should be matched when determining "the likelihood of confusion and misidentification." Conversely under the circumstances that the criteria for similarities in trademarks and goods/service are satisfied, though this is very likely to lead to confusion and misidentification, still this probability is not absolute, since confusion and misidentification may be prevented probably due to other important factors 

According to the Decision, the Trademark at Issue and the trademarks relied on for the purpose of invalidation are similar in terms of appearances, composition and meaning. Relevant consumers with general knowledge and experience may erroneously believe that the two goods or services are derived from the same source or that there are associations between different sources. Therefore, they are similar trademarks. The goods and services represented by the two also have similar circumstances. However, the Trademark at Issue, which has been extensively used for a long time, has become a famous mark and is relatively more familiar to relevant consumers. Therefore, it should enjoy more protection. In addition, relevant consumers objectively will not be confused or misidentify out of the misbelief that the two trademarks are derived from the same source or that they are derived from different but connected sources. Therefore, Article 30, Paragraph 1, Subparagraph 10 of the Trademark Law is not violated.