'Knight riding a horse’ marks held to be confusingly similar
The Intellectual Property Court has upheld decisions of the Taiwan Intellectual Property Office (TIPO) and the Ministry of Economic Affairs - the administrative appeal authority - finding that the trademark BAO MA in Chinese characters (and 'knight riding a horse' device) (Registration 1403095) for goods in Class 18 of the Nice Classification was confusingly similar to an earlier trademark consisting of a 'knight riding a horse' device (Registration 892313), also for goods in Class 18.
Plaintiff Lin Yin-Ting, a Taiwanese individual, obtained the registration of the trademark BAO MA in Chinese characters (and 'knight riding a horse' device) for "pocket wallets, wallets, purses, backpacks, school bags, belt pouches, trunks, shoe bags, suitcases, travelling cases, handbags, shopping bags, briefcases, luggage, bags for climbers, gym bags, bags for carrying infants' products, name card wallets, bags for carrying pet products, yoga bags" in Class 18:
Taiwanese company For The People Group Inc filed an opposition with the TIPO based on its prior registration for a 'knight riding a horse' device:
The TIPO held that the opposed trademark was likely to cause confusion among the relevant consumers and cancelled the registration based on the following grounds:
- The opposed trademark consisted of "a device of a knight on a horse galloping left" and 'Bao Ma' in Chinese characters, while the cited trademark consisted of the device of a knight on a horse galloping right. Although the marks differed in that the horses were not galloping in the same direction, both marks featured a knight holding a torch, riding on a galloping horse. The marks were thus extremely similar in their overall composition.
- The goods covered by the marks were the same or similar.
- A number of local and foreign companies have acquired registrations consisting of, or containing, a similar 'knight riding a horse' device in connection with different classes of goods or services. However, as the device was not descriptive of, or related to, the goods designated by the cited trademark, consumers would still perceive it as indicating the source of the goods. The cited trademark was sufficiently distinctive to serve as a badge of origin. Therefore, the opposed trademark, which uses a similar device, was substantially similar to the cited trademark, and was likely to confuse consumers.
- Although the cited trademark was not highly distinctive, the degree of similarity between the marks was not low and the goods were confusingly similar. The relevant consumers were thus likely to believe that the goods bearing the marks originated from the same source, or that the users of the marks were affiliates, licensees, franchisees or other similar relations, thus creating confusion.
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 January 19 2012 the court dismissed the action based on reasons similar to those set forth in the TIPO’s decision. However, the court further found that, although there were several earlier registrations consisting of, or containing, the 'knight riding a horse' device, they did not incorporate two important features of the cited mark: the torch and the galloping horse. These two features enhanced the distinctiveness of the cited trademark and, therefore, the co-existence of the marks at issue would be likely to cause confusion.
The plaintiff may file an appeal to the Supreme Administrative Court.
Joseph S Yang, Lee and Li, Taipei
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