Trademark | |||||
Revocation Against the Trademark “Angelina and Device” | |||||
Facts: | |||||
The plaintiff filed an application for the trademark “Angelina and Device” to the defendant (the Intellectual Property Office of the Ministry of Economy) and was approved with Registration No. 00650036 (hereinafter referred to as “the disputed trademark”). The participant filed the revocation against the disputed trademark on the ground of the violation of Trademark Act Article 63 I (ii). After examination, the defendant judged that the disputed trademark should be revoked. The plaintiff refused to accept it and filed a petition of Appeal. After the dismissal of the Appeal, the plaintiff still refused to accept it, and then filed an administrative lawsuit. The court revoked the appeal decision and the original administrative action, and the defendant and the participant filed an appeal. The Supreme Administrative Court decided that there were no mistakes in the previous trial decision that the disputed trademark has been used on "cakes" within three years before the application for revocation. Therefore, the previous trial decision to overrule the appeal decision and the original administrative action that “ the registration of the disputed mark on “cakes” shall be revoked" will be maintained. The appeal of the defendants and participants has been rejected. | |||||
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Defining the issues in this case: | |||||
ISSUE: The plaintiff has used the disputed trademark on "cakes" within 3 years before the participant filed the revocation on September 25, 2014. Whether the use of the disputed trademark on “cakes” can also be regarded as the use of the disputed trademark on “Crystallized fruits, Candy, Biscuits, muesli, Bread”? | |||||
1. | The actual mark in use and the disputed mark have the same identity | ||||
The disputed trademark is a slightly designed English word, Angelina, and the letter "A" is composed of the side view of a lady in a hat with a hollow design as shown in Figure 1. The plaintiff actually used the mark Angelina with the letter “A” consisting of the side view of a lady wearing a hat with a hollow design that further outlines the decoration of the hat and the hair in detail, as shown in Fig. 2. When observing the overall impression of the disputed trademark, the slightly designed Angelina word is impressive to become the main identifying feature so that it is the focus to attract consumers’ attention. The plaintiff did not substantively change the main feature in the actual use of the mark and thus will not affect the identity of the disputed trademark according to the general concepts in the society. Therefore, the disputed trademark should still be deemed to be used. | |||||
2. | When the trademark owner has provided evidence of use of some goods or services, although evidence of other goods or services with the same nature has not been submitted, they should also be regarded as having been used. | ||||
If the trademark owner has submitted evidence of use of some goods or services, the other goods or services with the "same nature" may be deemed to have been used even if the owner has not submitted related evidence.
The so-called "same nature" goods or services can refer to the goods or services classified by the TIPO's 6-digit classification of the goods or services (for the groups that do not contain 6 digits, it should be based on the 4 digits instead). The designated goods/services with the same 6 digits should be regarded as the same nature of goods/services. However, if the judgement based on the 6 digits is not appropriate in specific case, it can be determined after considering the objective facts such as the use, function, material, process, or production of the goods or services and the type of production and marketing actually operated by the trademark owner. If the nature of the goods or services is determined to be different, the goods or services may still be considered unused and the trademark should be revoked.
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3. | Whether the goods or services of the "same nature" should be determined according to the general concepts in the society and the market transactions. | ||||
The disputed trademark is used on "cakes". “Cakes” and "biscuits, muesli, bread" are both classified under the "300602" subgroup. Also, "biscuits, muesli, bread" and "cakes" are both produced by the pastry baking industry. The materials are all flour (rice) and the making processes are very similar. Also, "biscuits, muesli, bread" and "cakes" in the business trade practices are highly overlapping. For the same trader, these goods can be produced from existing materials at any time to supply to relevant consumers. The needs of relevant consumers are also the same. According to the general concepts of society and market transactions, these goods should be regarded as goods of the same nature.
As for “crystallized fruits", it is classified under the "290802" subgroup, and "candy" is classified under the "300601" subgroup, which are all different from “cakes” that is classified under "300602" subgroup. “Crystallized fruits" are made from the raw materials like plums, peaches, apricots, pears, dates, white gourds, ginger or nuts, etc., which are processed by pickling with sugar or honey. Sugar is the main ingredient of “candy” and it is made by boiling sugar at a high temperature. Comparing "cake" with “crystallized fruits" and “candy”, they are different in raw materials, making processes or actual production and sales types and suppliers. Thus, they are not goods of the same nature with “cakes”.
To sum up, the plaintiff used the disputed trademark on "cakes" within 3 years before the filing date of the revocation. It should be considered that the disputed trademark was also used on "biscuits, muesli, bread", which are of the same nature with “cakes”, but not on “crystallized fruits” and “candy", which are of different nature. Thus, the disputed trademark was used on "biscuits, muesli, bread", and there is no reason to revoke on the ground that “the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use". However, as to the designated goods “crystallized fruits” and “candy”, the disputed trademark should be revoked on the ground that “the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use”.
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Except for the definite part of the appeal decision and the original sanction, the part that " “Angelina and device” Registration No. 00650036" used on the "biscuits, muesli, bread" should be revoked” should be overruled. | |||||
Source: https://www.tipo.gov.tw/tw/cp-85-803408-0ff13-1.html |
IP FAQs | |||||||||||||||||||||||||||||||||||||||||||||||
※ Differences Between “NICE Classification” and “the Practice of TIPO” in Class 11 | |||||||||||||||||||||||||||||||||||||||||||||||
TIPO generally follows NICE classification of the designated goods and services. However, some descriptions of the designated goods and services in NICE classification are not acceptable in Taiwan because some of them are not definite enough under the present practice in Taiwan. We will continuously provide the list of descriptions in NICE classification which are not acceptable along with our suggestions of how to amend these descriptions in accordance with the regulation in Taiwan.
In our previous issues, we have introduced examples in Classes 1~9 NICE classification. Please be informed that all the descriptions of the designated goods in Class 10 of NICE classification are acceptable in Taiwan. Thus, in this issue, we provide the list of some examples in Class 11 as below for your reference.
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