Massachusetts Institute of Technology wins fight over MIT mark

Taiwan

The Taipei High Administrative Court has dismissed an appeal against a decision of the Taiwan Intellectual Property Office (TIPO) which upheld an opposition against the registration of the trademark MIT EDUCATION GROUP MULTIPLE INTELLIGENCE TECHNOLOGY, MULTIPLE INTELLIGENCE EDUCATION on the grounds that there was a likelihood of confusion with the Massachusetts Institute of Technology's famous mark MIT (February 21 2008).

On September 16 2005 MIT Education Group applied for the registration of the mark MIT EDUCATION GROUP MULTIPLE INTELLIGENCE TECHNOLOGY, MULTIPLE INTELLIGENCE EDUCATION (and design) in Chinese characters (Registration 1174415) for services in Class 41 of the Nice Classification (including "publication, inquiry, subscription and translation of various books, periodicals, magazines and literature; cram schools; educational competitions"). The Massachusetts Institute of Technology opposed the application on the grounds that there was a likelihood of confusion with its well-known mark MIT (Registration 92723) for education services.

The TIPO upheld the opposition. MIT Education Group filed an administrative appeal, which was dismissed by the Ministry of Economic Affairs. MIT Education Group subsequently filed suit before the Taipei High Administrative Court, arguing that there was no likelihood of confusion between the marks. MIT Education Group raised the following arguments:

  • the term 'MIT' in its mark represents the abbreviation of the expression 'Multiple Intelligence Technology' and is part of its English trade name;

  • its mark has been used extensively in Taiwan and is associated with MIT Education Group in the mind of consumers;

  • the target consumers of both marks are different; and

  • the term 'MIT' may correspond to the abbreviation of several other terms, including 'Made in Taiwan'.

However, the court agreed with the TIPO's argument that the words 'education group', 'multiple intelligence technology' and 'multiple intelligence education' should be disclaimed. Therefore, the dominant element of the mark is 'MIT', which is identical to the Massachusetts Institute of Technology's famous mark. The court thus concluded that there was a likelihood of confusion between the marks and dismissed the action.

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

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