Dog device held to be confusingly similar to famous cartoon character
The Intellectual Property Court has held that a trademark consisting of a dog device was confusingly similar to the well-known SNOOPY marks (February 11 2010).
Wang-Wang-Bao-Bay Pet Products Ltd, a Taiwanese company, obtained a registration for a trademark consisting of a dog device (Registration 1297087) for "animal washes containing pharmaceutical preparations, dog collars containing pesticides, repellents for dogs, veterinary preparations" in Class 5 of the Nice Classification.
The intervening party, United Feature Syndicate Inc, a US company, filed an opposition with the Taiwan Intellectual Property Office (TIPO) based on its well-known SNOOPY marks, including a Snoopy dog device (Registration 239068), SNOOPY and design (Registration 429210) and SNOOPY in Chinese characters (Registrations 248610 and 433126), and other trademarks in actual use.
TIPO found that Wang-Wang-Bao-Bay's dog device was likely to cause confusion among the relevant public and ordered the cancellation of the registration based mainly on the following reasons:
- The cited trademarks enjoyed well-known status in Taiwan before the filing date of the opposed trademark.
- The trademark SNOOPY (and design) and the dog device were created by Charles M Schulz in 1950 and are quite distinctive.
- The opposed trademark derives from the SNOOPY mark in Chinese characters. Wang-Wang-Bao-Bay's dog device has no eyes, ears or nose, but features a big head, protrusive nose and small body, which resemble the Snoopy dog device. The opposed trademark is thus confusingly similar to the cited trademarks from a visual, phonetic and conceptual point of view.
- The SNOOPY marks have been used on a variety of products, including stationery, clothing, toys, gifts, watches, pet food, pet toys, and products for pet. Among these products, pet foods, pet toys and products for pets are related to the goods covered by the opposed trademark.
- Wang-Wang-Bao-Bay failed to prove that the relevant consumers were familiar with its dog device before the filing date.
Wang-Wang-Bao-Bay filed an administrative appeal with the Ministry of Economic Affairs, which upheld TIPO's decision. Wang-Wang-Bao-Bay subsequently filed an administrative suit with the Intellectual Property Court. However, the court dismissed the action based on reasons similar to those set forth by TIPO.
Wang-Wang-Bao-Bay may appeal to the Supreme Administrative Court.
Joseph S Yang, Lee and Li Attorneys at Law, Taipei
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