The relationship between retail services and identified goods on trademark applications

In Taiwan, trademarks for retail services were not recognised until 1997. According to the Examination Guidelines published by the Taiwan IP Office (TIPO), retail services in Class 35 may be defined as follows:

  • “retail of [identified goods]” (eg, cosmetics, clothing and clocks); or
  • “department store, supermarket, convenience store, shopping centre, and online shopping, etc.”, which suggests a wide variety of goods.

In general, “retail of [identified goods]” is deemed to be related to the identified goods, possibly falling into various classes. On the other hand, since a variety of goods are carried by department stores, supermarkets, convenience stores and shopping centres, and since a department store is remote in nature from any identified goods, during examination of an applied-for mark designated for use in “department store, supermarket, convenience store, and shopping centre”, the registrar would not conduct cross-searches into prior registered/filed trademarks in respect of any identified goods. However, this principle is not necessarily absolute.

A trademark owner filed an opposition against the trademark (‘吳萬春’WU WAN CHUN and device) registered in Class 35 in respect of “department store, convenience store, supermarket, shopping centre, online shopping”, among others, in view of its prior mark  (‘台灣漢香府城吳萬春香行’ and device) registered in respect of “incense sticks, incense powder” in Class 3 (Wu vs Wu, Zhong-Tai-Yi G01070712, TIPO, September 2020).

One of the key questions raised was whether the services designated by the opposed mark were related to “incense sticks, and incense powder”, as designated by the opposer’s mark. 

The examiner, notwithstanding the principle described above, decided in favour of the opposer. The registrant of the opposed mark responded by initiating an administration litigation with the Intellectual Property and Commercial (IPC) Court, resulting in a judgment that upheld the TIPO’s decision.

According to the IPC Court, thanks to today’s diversified sales channels and marketing strategies, there is a possibility that the goods designated by the opposer’s mark are sold in department stores, convenience stores, supermarkets, hypermarkets and shopping centres. Moreover, the emergence of e-commerce in which a wide range of goods are readily accessible, means that the sales channels and target consumers of the goods or services designated by the two parties’ marks are more likely to overlap. At the same time, suppliers of the relevant goods or services may possibly be recognised by consumers as one and the same party or as related to one another.  As such, the IPC Court held that the class of “department store, supermarket, convenience store, online shopping”, which suggests a wide variety of goods, was related to the goods designated by the opposer’s mark. 

Based upon this decision it is worth drawing attention to the following:

When filing a trademark application in respect of identified goods, an applicant should bear in mind that a prior filed/registered similar mark designated for use upon such retail services as department stores, supermarkets, convenience stores and online shopping might be a block to registration.

The owner of a trademark registered in respect of identified goods should conduct a watch over any junior mark filed or registered in respect of such retail services as department stores, supermarkets, convenience stores and online shopping. If any such trademark is found to be identical or highly similar, the owner is advised to take counter-measures in a timely fashion.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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