Common word held to be distinctive for Class 18 goods

Taiwan
The Intellectual Property Court has dismissed an administrative suit filed by plaintiff Wang Rui Xi and upheld the decisions of the Taiwan Intellectual Property Office (TIPO) and the Ministry of Economic Affairs (the administrative appeal authority). The court held that the plaintiff's trademark HEAD PORTER (and design), which covers goods in Class 18 of the Nice Classification, was confusingly similar to Porter International Co Ltd's earlier trademarks PORTER (and design).  
 
On November 16 2007 the plaintiff, a local individual, obtained the registration of the trademark HEAD PORTER (and design) for "wallets; leather bags; purses; backpacks; school bags; waist bags; shoulder bags; shoe bags; travelling trunks; tote bags; shopping bags; briefcases; attaché cases; luggage; key cases; cosmetic bags; beauty cases; handbags; travelling bags; gym bags" in Class 18:

     Registration 1287550
 
Porter International, a local company, filed an opposition with the TIPO based on its famous earlier trademarks, including the marks PORTER (and design):
 
     Registration 730178
 
     Registration 1101637
 
After examination, the TIPO held that the opposed trademark was likely to cause confusion among the relevant public and cancelled the registration under Article 23-1(13) of the Trademark Act.  The TIPO's reasoning was as follows:
  • Both parties' trademarks contained the word 'porter'. Although the degree of similarity between the trademarks was not high, the TIPO still deemed the marks to be similar.
  • The goods covered by the trademarks were the same or highly similar.
  • Considering the long-term and continued use of the earlier trademarks in Taiwan, the relevant consumers would be familiar with them. However, the plaintiff could not prove that the relevant consumers were also familiar with the opposed trademark before its registration date (November 16 2007).
  • Although 'porter' is a common word, it is not descriptive of the designated goods. Therefore, trademarks which contain the word 'porter' and cover the aforesaid goods are arbitrary and distinctive. 
The plaintiff filed an administrative appeal with the Ministry of Economic Affairs, but the latter upheld the TIPO's decision. The plaintiff then filed an administrative suit with the Intellectual Property Court. 
 
On August 4 2011 the Intellectual Property Court dismissed the administrative suit for almost the same reasons as those set forth in the TIPO’s decision. However, the court also found that there were no other valid trademark registrations containing the word 'porter' in the Trademark Register, except those owned by the parties. The court concluded that the earlier trademarks were distinctive for the goods at issue. The court thus held that, since the opposed trademark was likely to cause confusion among the relevant consumers in Taiwan, it should be cancelled.
 
The plaintiff may appeal to the Supreme Administrative Court.

Joseph S Yang, Lee and Li, Taipei

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