Before Filing an Administration Suit, an Appeal Should Have Been Filed First (a written judgment No.126 made by IP Court in 2013)
[ November 2014 ] >Back
| Trademarks | |||||||
| I. | The Trademark “立脂妥Atorva＂vs “立普妥” (a written judgment No.49 made by IP Court in 2014) | ||||||
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The trademark at issue was allowed for registration by the TIPO in 2007. In 2011, an Invalidation was filed against the said trademark by the reason of being similar to the cited mark which was more famous before the filing date of the trademark at issue and using on the same business field of pharmaceuticals. The TIPO rejected the Invalidation by the reason of being dissimilar. The proprietor of the cited mark filed an Appeal up to the MOEA (Ministry of Economic Affairs, R.O.C.) against the TIPO’s decision. The committees of the Appeal held the different opinions from the TIPO’s and deemed that two marks were similar. The registrant of the trademark at issue filed an Administration Suit up to the IP Court against the MOEA’s decision. The IP Court held the same opinion as the MOEA’s and deemed that two marks were similar. We herewith summarize the viewpoints of the IP Court: |
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| 1. | Two trademarks are similar: | ||||||
| (1) | Similar appearance: The English part of the trademark at issue “Atorva” is a commonly known abbreviation of a pharmaceutical ingredient “atorvastatin”. Since “Atorva” is a direct description of the related goods, it is an indistinctive part of the trademark. The distinctive parts of two trademarks are the Chinese characters, “立脂妥” and “立普妥”. They have the same prefix and suffix which are more distinctive than the middle characters in trademarks with three characters. | ||||||
| (2) | Similar pronunciation: “立脂妥” is pronounced as “li chi tuo” and “立普妥” is pronounced as “li pu tuo”. When calling the trademarks quickly, the middle character is usually not sounded clearer than the prefix and suffix, so the two trademarks with the same prefix and suffix sound similar. | ||||||
| (3) |
Similar meaning: The prefix “立” means “immediately” and the suffix “妥” means “well-managed”. The two trademarks with the same prefix and suffix have the same meaning of “making some symptoms get better immediately”. |
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| 2. | The cited mark “立普妥” is highly inherent distinctiveness: | ||||||
| (1) | There is high relationship between the distinctiveness of a trademark and the chance of causing confusion. The higher degree of distinctiveness of a trademark is, the deeper impression of the consumers on the relevant goods/services will be. When a distinctive trademark is imitated by a third party, the chance of causing confusion among the related consumers will be higher. Trademarks having inherent distinctiveness may be divided into coined trademarks, arbitrary trademarks and suggestive trademarks according to the degree of distinctiveness. The coined trademarks and arbitrary trademarks are more distinctive and easily cause confusion among consumers. | ||||||
| (2) |
The cited mark “立普妥” is the transliteration of “Lipitor” which is the brand name of the medicine mainly containing the ingredient “atorvastatin”. Therefore, the cited mark “立普妥” is a "coined trademark" with original creation. It has no specific, existing meaning, and is created to distinguish the source of relevant goods. Because of the originality, the cited mark does not convey to consumers any information about the goods, but only serves to identify and distinguish the source. Therefore, the cited mark “立普妥” has the strong distinctiveness. The trademark at issue “立脂妥” with high degree of similarity to the cited mark in Chinese characters is easy to cause confusion among consumers. |
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| 3. |
Two trademarks have the same marketing channels and sales locations:
The products of two trademarks are professional pharmaceuticals. The related consumers or medical care personnel have to get the products from pharmaceutical factories, pharmacists, pharmacies or hospitals. Thus, the marketing channels or sales locations of two products are highly overlapping. It is more likely that the two trademarks will cause confusion as there exists a higher probability that relevant consumers will come across these two kinds of products simultaneously.
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| 4. |
1. The trademark at issue was filed with bad intention:
Two parties are companies in Taiwan running pharmaceutical business. The registrant of the trademark at issue should have known the cited mark early because of the same business field.
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| 5. |
1. Two trademarks are likely to cause confusion by the relevant consumers:
The Judge checked with two medical institutes in Taiwan and found that one felt confusion about two trademarks while the other did not. The Judge made the decision that two trademarks are likely to cause confusion by the relevant consumers because, as mentioned by the medical institutes, they would be confused and may have a wrong judgment to take the wrong products if there are no apparent differences in the designs and colors of the packages of two products.
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| 6. | The plaintiff argued that there are lots of three-word trademarks with only one word difference and have been allowed for registration without problem. The Judge pointed out that the system of Invalidation is for making up the insufficiency of the examination at the filing stage in the TIPO in order to have the legality of re-examination under the public examination system. So, when a trademark is allowed for registration by the TIPO, it does not mean that the trademark will not cause confusion with others. The relevant evidence cited by the plaintiff cannot apply to this case. | ||||||
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