JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

The National Holidays in the Year of 2017 in Taiwan

[ December 2016 ] >Back

Important Notice

The National Holidays in the Year of 2017 in Taiwan

For the Chinese Lunar New Year holidays, the Taiwan Intellectual Property Office (TIPO) and our firm will be closed on the following days:

TIPO : from January 27 (Friday) to February 01, 2017 (Wednesday)

Jaw-Hwa : from January 27 (Friday) to February 05, 2017 (Sunday)

We will resume working on February 06, 2017 (Monday). Kindly send us your orders of new patent or trademark applications or your instructions of any time-consuming work at least one week before the holidays to avoid urgent work, if at all possible. Thank you for your kind attention.

Year 2017 National Holidays in Taiwan, R.O.C.

Date		Festival and Holiday Name
Jan. 01 ~ Jan. 02	Sun. ~ Mon	Founding Anniversary
Jan. 27 ~ Feb. 01	Fri. ~ Wed.	Chinese Lunar New Year Holidays
Feb. 02 ~ Feb. 03	Thur. ~ Fri.	**Jaw-Hwa’s extra holidays
Feb. 18	Sat.	Working day
Feb. 27 ~ Feb. 28	Mon. ~ Tues.	Peace Memorial Day
Apr. 03 ~ Apr. 04	Mon. ~ Tues.	Tomb-sweeping Festival & Children’s Day
May. 01	Mon.	Labor Day
May. 29 ~ May. 30	Mon. ~ Tues.	Dragon Boat Festival
Jun. 03	Sat.	Working day
Sep. 30	Sat.	Working day
Oct. 04	Wed.	Mid-autumn Festival
Oct. 09 ~ Oct. 10	Mon. ~ Tues	National Day

Notices:

Our offices will be closed on Saturdays and Sundays except those adjusted to be working days as listed in the table above.

If you should have any instructions or require any information from us within the above holidays, please contact us in advance as soon as possible.

We would greatly appreciate if you would forward any new Schedule of Charges or Filing Forms to us as soon as they are issued or updated.

Fair Trade Act

Removing Infringement Through Fair Trade Act

RIMOWA suitcase
EASON suitcase
LEADMING suitcase

The plaintiff (Rimowa GmbH) was established in Germany in 1898 and it has been manufacturing and marketing suitcases with its unique strip pattern design all around the world since 1950, over a half century. In addition to 15 sales outlets, flagship stores are also set up in North, Middle and South Taiwan. Appearance of many sales outlets are decorated with the strip pattern design as well. Relevant industries and consumers are familiar with the strip pattern design and it has become an identification of Rimowa suitcases. Therefore, the strip pattern design is a characteristics of Rimowa suitcases which has strong distinctiveness.

The defendants sold suitcases bearing the trademarks “EASON” and “LEADMING” in their sales locations and on the web sites. The plaintiff found that the “EASON” and “LEADMING” suitcases had very similar appearance with the strip pattern design, which is the characteristics of Rimowa suitcases. The defendants’ acts confronted to the conditions of unfair competition, i.e. using the goodwill of others, plagiarism and the use of others’ efforts to promote their own goods or services . Thus, the plaintiff, Rimowa GmbH, filed a lawsuit to the Intellectual Property Court according to Subparagraph 1, Paragraph 1, Article 22 and Article 25 of the Unfair Trade Act.

The main contents of the adjudication are as follows:

By selling or importing the infringing goods, the defendants violate Subparagraph 1, Paragraph 1, Article 22, Unfair Trade Act

(1) The “strip pattern design” of the appearance of the plaintiff’s suitcases is a famous characteristics:

Although the strip pattern design of the Rimowa suitcases initially did not have a very strong concept of the characteristics, the strip pattern design has been extensively used on the suitcases from the beginning of Rimowa business. Rimowa delivers the concept continuously that its suitcases are constructed with the “strip pattern design”. Also, advertisement and media reports all widely disseminated that the “strip pattern design” is the classic characteristics of the Rimowa suitcases. As a result, the characteristics of the “strip pattern design” on the surface of the Rimowa suitcases has highly recognized by the market and become well-known to relevant industries and customers. Thus, the said design has the function to differ the source of the goods and is no doubt a famous characteristics.

(2) The application of the Subparagraph 1, Paragraph 1, Article 22, Unfair Trade Act:

“No enterprise shall have any of the following acts with respect to the goods or services it supplies: using in the same or similar manner in the same or similar category of merchandize, the personal name, business or corporate name, or trademark of another, or container, packaging, or appearance of another's goods, or any other symbol that represents such person's goods, commonly known to the public, so as to cause confusion with such person's goods; or selling, transporting, exporting, or importing goods bearing such representation.

The “confusion” defined by the Subparagraph 1, Paragraph 1, Article 22 means that there is a possibility to recognize or believe wrongly about the source of the goods or services. In general, the confusion should include the situation that the customers recognize wrongly that there is a kind of alliance, relation or supports between the counterfeit and the genuine goods besides that the characteristics of the counterfeit goods cause customers' misidentification.

The counterfeit act is not necessarily to have occurred to cause confusion. As long as there is a possibility to cause confusion, it is enough.

Since the defendants' suitcases are similar to Rimowa suitcases with the strip pattern design, relevant industries or customers would have reason to wrongly recognize the source of suitcases or deem that there is a connection between the plaintiff and the defendants. Moreover, the goods of both parties have homogeneity and are sold via the same channels. In addition, it is not only hard to judge the difference of two parties' suitcases by prices, but using the strip pattern design with the famous characteristics on low-priced or bad quality suitcases will dilute the distinctiveness or reputation of the well-known characteristics. Thus, to sell or import the defendants' suitcases will cause confusion with the plaintiff's suitcases.

The defendants' selling or importing the questionable suitcases violates the Paragraph 25, Unfair Trade Act

Paragraph 25 of Unfair Trade Act: “In addition to what is provided for in this Act, no enterprise shall otherwise have any deceptive or obviously unfair conduct that is able to affect trading order.

To determine whether an enterprise has violated Paragraph 25, Unfair Trade Act, two conditions are required: (1) deceptive or obviously unfair conduct and (2) the action is able to affect trading order. Deceptive or obviously unfair conduct means that using deceptive or obviously unfair conduct to compete or have commercial transactions, so as to exploit the fruit of others' work which includes taking unfair advantages of the goodwill of others, plagiarism and the use of others' efforts to promote their own goods or services.

The mark image of Rimowa GmbH is well-known for all relevant industries and costumers and the strip pattern design on the surface of the suitcases has a strong distinctiveness. Thus, most of the relevant suitcase industries must know the “strip pattern design” has been used for the appearance characteristics of Rimowa suitcases and it is reasonable to determine that the defendants made plagiarism and used the “strip pattern design” of the plaintiff to sell or import the goods at issue.

In other words, Rimowa claimed that by selling or importing the goods at issue and using same or similar strip pattern design of the plaintiff, the defendants violate the Paragraph 25 of Unfair Trade Act and the judgment has been considered legitimate.

Source: IP Court Civil Action No.9, 2016

(http://jirs.judicial.gov.tw/Index.htm)

Trademarks

Are The Trademarks Similar to Each Other and Likely to Cause Confusion?

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

I.C. 014

TIPO’s viewpoint: dissimilar

Reasons:
1.	Both trademarks contain the same letter “A”, which is an existing word so the distinctiveness thereof is weaker.
2.	The letter “A” of trademark B is stylized, so more emphasis should be given on the appearance of the trademarks.
3.	Trademark A contains the other word “diamond”. Although the word “diamond” is non-distinctive, when judging similarity, it still depends on a comparison of the overall appearance of the two marks.
4.	The two marks are different in appearance so they are dissimilar to each other.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

I.C. 043

I.C. 030, 032, 033

TIPO’s viewpoint: similar

Reasons:
1.	Both trademarks contain the same letters “cophil”. The minor differences are the prefix “Glu” and the capital letter “C”.
2.	Both trademarks are plan words without special designs, so the overall impressions conveyed by the two trademarks are similar.
3.	Trademark B is a coined word which has strong distinctiveness, so the registration of “Cophil” would misidentify the source of two different trademarks.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

TIPO’s viewpoint: similar

Reasons:
1.	The trademarks cited as the bases for opposition are famous marks.
2.	The devices of the trademarks cited as the bases for opposition are unique and have strong distinctiveness.
3.	3. The devices in the trademarks of two parties are similar in high degree.
4.	Relevant consumers are more familiar with the trademarks cited as the bases for opposition.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

TIPO’s viewpoint: similar

Reasons:
1.	Trademark B is a very famous mark which has distinctiveness in high degree.
2.	Trademarks A and B contain an identical word "Rover".
3.	Relevant consumers are more familiar with trademark B.
4.	Both marks designated clothing and gloves, etc. so the designated goods of two marks are similar which will likely cause consumers of goods to misidentify them as goods from the same source, or different but related sources.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

I.C. 025

TIPO’s viewpoint: dissimilar

Reasons:
1.	Although three of four letters of the two marks "woo" are identical, there have been quite a few trademarks beginning with "wo" and ends by "o" registered in the same class, such as "WOW HO", "WooHoo" and "Wowico".
2.	Evidence submitted for trademark B is not sufficient enough to prove that trademark B has become famous via extensive and long-term use.
3.	Trademarks A and B have no meaning, so both of them have distinctiveness respectively.
4.	No evidence shows that trademark A is passing off trademark B.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

I.C. 035

TIPO’s viewpoint: similar

Reasons:
1.	Trademark B is a suggestive trademark which has certain distinctiveness.
2.	Trademarks A and B both contain the same phrase "simple life" which is the main distinguishing part of each trademark respectively.
3.	The designated services are highly similar so it will likely cause consumers of services to misidentify them as services from the same source, or different but related sources.

A
(trademark at issue)

(trademark cited as the basis for refusal of registration or for opposition)

I.C. 16

I.C. 16 & 41

TIPO’s viewpoint: similar

Reasons:
1.	Trademarks A and B both contain the same word "TEDDY" which is the initial word of each trademark respectively and end by the same word "BEAR". There is only one different word "Lohas" in the middle of trademark A. Thus, the overall impressions conveyed by the two trademarks are similar.
2.	Trademark B has no direct or indirect relationship to the designated goods and services, so it has strong distinctiveness.
3.	The designated goods of trademark A are common or related in functions, use, raw materials, manufacturers or satisfying certain demands of consumers’ needs of the goods and services of trademark B, so it will likely cause consumers of services to misidentify them as services from the same source, or different but related sources.

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

10-1FL., NO.23, SEC.1, CHANG-AN E. RD., TAIPEI 10441, TAIWAN, R.O.C

TEL: 886-2-25310876 FAX: 886-2-25812761

http://www.jaw-hwa.com.tw E-mail: jawhwa@jaw-hwa.com.tw