Leopard device for cars held to be confusingly similar to Jaguar's device mark

Taiwan

The Supreme Administrative Court has dismissed an appeal against a decision of the Intellectual Property Court in a case involving Jaguar Cars Limited's jaguar device mark.

On September 27 2012 the Intellectual Property Court upheld the decisions of the Intellectual Property Office (IPO) and the Ministry of Economic Affairs (the administrative appeal authority), and found that a leopard device (Registration 1400195), filed by local company Shen's Glory Inc for goods in Class 12, was confusingly similar to Jaguar's earlier registered jaguar device (Registration 350564) in Class 12. The court found that, as the goods covered by the trademarks were the same or similar, the opposed trademark was likely to cause confusion among the relevant consumers in Taiwan and should be cancelled.

Shen's leopard device:

Jaguar's jaguar device:

 

Taiwanese company Shen's obtained the registration of the leopard device for "cars and parts thereof; car horsepower accelerator" in Class 12. Jaguar, a British company, filed an opposition with the IPO based on its prior registration for a jaguar device. Following examination, the IPO held that the opposed trademark was likely to cause confusion among the relevant consumers and cancelled the registration.  

Shen's filed an administrative appeal with the Ministry of Economic Affairs, but the latter upheld the IPO's decision. The plaintiff then filed an administrative suit with the Intellectual Property Court. 

The Intellectual Property Court ruled in favour of the IPO, holding that the opposed trademark was likely to cause confusion among consumers and, therefore, the cancellation of the mark was reasonable. The court explained in the judgment how it had reached its decision:

  1. A comparison between the two marks showed that they both featured the abstract image of a leopard or jaguar running/jumping towards the left. Even though one of the trademarks contained an English word ('jaguar') while the other did not, the two marks were similar in overall composition.
  2. The goods covered by the trademarks were the same or similar.
  3. The leopard is an animal that has commonly been used in trademark designs; however, the leopard is not descriptive of, or related to, the goods at issue and, therefore, consumers will perceive the leopard design as an indication of the source of the goods. 
  4. The jaguar device mark has been used extensively by Jaguar on the designated goods over a long period of time; the mark has thus achieved fame in the market. The relevant consumers were likely to misidentify the goods bearing the trademarks at issue as being from the same source, or to wrongly believe that the owners of the trademarks were affiliates, licensees, franchisees or other similar relations, thus creating confusion.
  5. The market survey submitted by Shen's showing that the members of the public who are likely to use the goods have not been confused by the two trademarks was not taken into consideration in this case. The method of the survey violated the principle of "separate observation at different times and places", because the researchers showed the respondents the two trademarks at the same time.

Shen's appealed to the Supreme Administrative Court. On December 27 2012 the Supreme Administrative Court dismissed the appeal and the judgment of the Intellectual Property Court was affirmed.

Joseph S Yang, Lee and Li, Taipei

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