FEDEREX is not confusingly similar to FEDEX, says court

Taiwan

On October 29 2009 the Supreme Administrative Court affirmed the judgment of the Taipei High Administrative Court in which the latter had found that the stylized trademark FEDEREX was not confusingly similar to the well-known FEDEX marks.

On December 1 2004 Federex Marketing Corp, a Taiwanese company, obtained a registration for the stylized trademark FEDEREX (Registration 1130510) in Classes 1, 4, 9, 12 and 35 of the Nice Classification. Federal Express Corporation (FedEx) filed an opposition against the registration of the mark in respect of the goods and services in Classes 12 and 35 based on its well-known FEDEX marks (Registrations 41635, 464817 and 464898), which are used for courier services. FedEx claimed as follows:

  • The trademarks at issue are confusingly similar. 
  • The goods in Class 12 ("wheels, steering wheels for automobiles, shock absorber for automobiles, aluminium rim for automobiles, sunshades for automobiles") and the services in Class 35 ("the retail of automobile and parts and accessories thereof") covered by the opposed mark are closely related to the transportation business.
  • As the FEDEX marks are well known for courier services, which are also closely related to the transportation business, the goods and services covered by the trademarks at issue are similar.
  • The co-existence of the marks at issue may either cause confusion to the relevant consumers, or dilute the distinctiveness or reputation of the FEDEX marks.

The Intellectual Property Office (TIPO) disagreed, holding as follows: 

  • The goods and services covered by the marks at issue are not similar or related.
  • The similarities between FEDEREX and FEDEX are outweighed by the fact that FEDEREX includes a device and that the marks have a different number of letters. In addition, FEDEREX is not similar to the trademarks FEDEX EXPRESS and FEDERAL EXPRESS, which are in actual use in the marketplace.
  • Federex is a well-known distributor of FEDERAL-branded tires in Taiwan and obtained a trademark registration for the word mark FEDEREX for "import/export agency and agency of foreign companies to provide quotation, tender, distribution for various products" in Class 35 in 1996. The FEDEREX mark for "tires" in Class 12 was registered in 1998 and was subsequently acquired by Federex from its parent company, Federal Corporation. Since the goods and services covered by the FEDEREX mark are all related to those covered by Federex's other registrations, the latter did not plagiarize FedEx's trademarks.

FedEx filed an administrative appeal with the Ministry of Economic Affairs, but the ministry affirmed TIPO's decision. FedEx filed an administrative suit before the Taipei High Administrative Court, which dismissed the case for reasons similar to those set forth by TIPO.

The Supreme Administrative Court subsequently held that the reasoning of the lower court was not contrary to the laws or regulations of Taiwan, and thus dismissed FedEx's appeal.

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

Unlock unlimited access to all WTR content