Cats device held to be confusingly similar to dogs device

Taiwan
On October 28 2010 the Intellectual Property Court held that For the People Group Inc's 'black cat and white cat' device mark was confusingly similar to Diageo Brands BV's well-known trademarks, including BLACK & WHITE (and 'two dogs' device) and the 'two dogs' device mark. 
 
Taiwanese company People Group obtained a registration for the 'black cat and white cat' device mark (Registration 1282051) for "gold, silver, jewellery, gemstones, brooches, necklaces, bracelets, hand chains, rings, earrings, pendants, clocks, watches, timekeepers, cufflinks, tie pins, breast badges, jewellery boxes of precious metal, cigarette cases of precious metal, key rings of precious metal" in Class 14 of the Nice Classification:

Dutch company Diageo filed an opposition with the Intellectual Property Office (IPO) based on its well-known trademarks, including BLACK & WHITE (and 'two dogs' device) and the 'two dogs' device mark:
 

After examination, the IPO held that the opposed trademark was likely to cause confusion to the relevant public and cancelled the registration based on the following reasons:
  • The trademarks on which the opposition was based were well-known for whisky and apparel in Taiwan before February 2 2007 (the date on which People Group applied for the registration of its mark).
  • The opposed trademark consisted of the abstract image of two cats, one black and the other white, sitting side-by-side, within an oval background, while Diageo's marks consisted of two clearly outlined dogs, one black and the other white, sitting side-by-side. The composition of the parties' marks was thus highly similar, as the marks consisted of the image of "two animals, one being black and the other white, sitting side-by-side". Moreover, as the opposed trademark consisted of an abstract design, it would be difficult for consumers to know whether it featured cats or dogs. Therefore, the opposed trademark was confusingly similar to Diageo's trademarks as far as its overall appearance was concerned. 
  • Diageo used its marks for a variety of products, including alcoholic drinks, clothing and footwear. Considering Diageo's diversified operations, it was very likely that the co-existence of the marks at issue would cause confusion to the public.
  • People Group could not prove that the relevant consumers were also familiar with its device mark before its registration.
  • The opposed trademark covers jewellery and related goods, while Diageo's marks are used on clothing, headgear, shoes and socks, among other things. Both groups of goods are worn to match one's dress, and the relevant consumers for the parties' goods were thus connected.
People Group filed an administrative appeal with the Ministry of Economic Affairs, which upheld the IPO's decision. People Group then filed an administrative suit with the Intellectual Property Court. 
 
The Intellectual Property Court dismissed People Group's action based on almost the same reasons as those set forth by the IPO. However, the court went further, finding that the goods covered by the marks at issue were similar, because both groups of goods are worn to match one's dress and can be sold in the same outlets. Therefore, the 'black cat and white cat' device mark was likely to cause confusion to consumers and should be cancelled.
 
People Group may appeal to the Supreme Administrative Court.

Joseph S Yang, Lee and Li Attorneys at Law, Taipei

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