JOJOBA and NATURALLY JOJO are confusingly similar, says court

Taiwan
The Supreme Administrative Court has upheld a decision of the Taipei High Administrative Court in which the latter had found that the marks JOJOBA and NATURALLY JOJO were confusingly similar (June 30 2009).

Taiwanese company Oh-Ni International Co Ltd obtained a registration for the mark JOJOBA (Registration 182521) for "import/export agencies and the distribution of clothing and accessories" in Class 35 of the Nice Classification. Gwei Ting International Fashion Corporation, which is also based in Taiwan, filed an action with the Taiwan Intellectual Property Office (TIPO) seeking the cancellation of the JOJOBA mark based on its earlier mark NATURALLY JOJO (Registration 891322) and other JOJO marks for clothing.

The TIPO found that the word 'jojoba' refers to a shrub used for its oil and is pronounced 'ho-ho-ba', which is different from the pronunciation of the earlier mark NATURALLY JOJO. Moreover, the TIPO pointed out that Oh-Ni had obtained a registration for the mark JO-JO-BA in Chinese characters in 1987 (Registration 355363) - that is, before the registration of the mark NATURALLY JOJO in 2000. According to the TIPO, it was obvious that the JOJOBA mark was not an imitation of the mark NATURALLY JOJO. Therefore, there was no likelihood of confusion between the marks. The action was thus dismissed.

Gwei Ting filed an administrative appeal with the Ministry of Economic Affairs, which ruled in its favour and found that the marks were confusingly similar. The case was remanded to the TIPO for re-examination. However, the TIPO again held that there was no likelihood of confusion among the relevant public because the marks had coexisted on the market for a long time. Gwei Ting's second administrative appeal was dismissed. Gwei Ting brought suit before the Taipei High Administrative Court.

The court held that the evidence of use of the Chinese-character mark JO-JO-BA could not serve as evidence of use of the JOJOBA mark. Therefore, the TIPO erred in finding that the marks had coexisted on the market for a long time. The court concluded that there was a likelihood of confusion among the public because:
  • the marks were confusingly similar;
  • the goods and services covered by the marks were similar; and
  • Gwei Ting's marks were well known in Taiwan before the filing date of the JOJOBA mark.
Therefore, the court revoked the decisions of the TIPO and the Ministry of Economic Affairs and ordered that the TIPO cancel the JOJOBA mark.

Oh-Ni and the TIPO both appealed to the Supreme Administrative Court. The court held that the reasoning of the Taipei High Administrative Court was not contrary to law and dismissed the appeal. The case will now be remanded to the TIPO for re-examination based on the court's decision.

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

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