Trademark Similarity
Summer, 1999

      Sunstar Inc., a Japanese manufacturer and merchant, filed on May 18, 1988 a mark, Ora2, designated to be used on goods classified in international class 30 and got a notice of allowance dated November 13, 1988. On January 7, 1999, the Trademark Office (i.e., NBS before January 23, 1999 and IPO thereafter) notified that Orkam Asia Trademark AG, a Swiss company, has opposed said mark on the basis of a cited mark, aro, having an exclusive right from June 16, 1980 to June 15, 2000 according to Articles 37(1)(7) and 37(1)(12) of the ROC Trademark Law during the three-month publication period ending on February 15, 1999.

¡@¡@Article 37(1) stipulates that ¡§a trademark having any of the following cases shall not be applied for registration:

(7) identical with or similar to a famous trade mark or service mark of another person so as to likely cause confusion or mistake to the public provided that this shall be inapplicable if the applicant applies for registration with consent of owner or licensor of the trade mark or service mark;

(12) identical with or similar to another person¡¦s registered trademark on the same or similar goods.

¡@¡@With respect to the former article, the opponent asserts that its share-holding company, Makro International AG, is a worldwide famous stock wholesaler and creates the cited mark to be registered in various countries and transferred to the opponent. The opponent further alleges that through the extensive operation of the Taiwan Makro Co., Ltd., the cited mark has become a well-known mark. The opponent further adds that it has been repetitively ruled by the Administrative Court that whether there is similarity between two marks shall be determined by separately judging whether their major parts are likely to cause confusion or mistake, and that trademarks are similar if their devices are similar in any aspect of appearance, concept and pronunciation.

¡@¡@In the response, Sunstar Inc. has strenuously clarified and submitted to IPO the following viewpoints:

  1. The opposed mark has a first English letter thereof capitalized and is post-annexed with a square symbol, in contrast with the cited mark having three plain, small and hollowed letter;
  2. The two marks have totally different pronunciations and concepts;
  3. The two marks coexist in many countries; and
  4. It is true that Makro International AG is a famous company in respect of stock wholesaler but it is not true the cited mark is famous in international class 30.

¡@¡@Regretfully, the IPO issued on March 17, 1999 an office action withdrawing the notice of allowance by reasoning that the two concerned marks are both composed of the same three English words, i.e., a, r, o and that a and o are similar in appearance.

¡@¡@On April 17, 1999, Sunstar Inc. further argued hardly from different angles with respect to the above-mentioned viewpoints in the appeal briefs, and presented inter alia before the board of appeals in the Ministry of Economic Affairs (MOEA) that the people in Taiwan is well educated in respect of English letters as evidenced from the fact that the English being a common world language at the present time has been a compulsory course for kids in the preliminary school. It is out of question for the general public here to tell apart the two marks especially because the present mark has a capitalized first letter and a last exponent while the cited mark is plain with hollowed stroke or writing.

¡@¡@On May 29, 1999, MOEA issued a decision dismissing the appeal with substantially the same reasons with the later action of IPO, added with comments that the appeal has nothing to do with whether the cited trademark is famous (see Article 37(1)(7) above-quoted) and that it is irrelevant to address the two marks coexist in many countries.

¡@¡@Carefully analyzing the present mark ¡§Ora2¡§ and the cited mark ¡¥aro¡¦ coolly, it can be found:

  1. It appears that the capitalized ¡§O¡¨ is not simulate with the small letter ¡¥a¡¦;
  2. It is true that sometimes, an annexed symbol contributes no element for the distinguishing characteristic of a mark sought registered from a cited mark. Nevertheless, the annexed symbol will invert the situation or tip the balance from a critical level. It would seem that the present situation is the case;
  3. Conventionally, the Chinese word is to be read from the right side to the left side while nowadays, it is more common or has even been standardized to read from the left side to the right side as in the case for reading the English. For Chinese words, it is possible for the general public to confuse between two words having identical letters in inverse orders. For English words, it is impossible to confuse such confusion since from the English-evolving history, words have never been read from the right side to the left side. It thus appears to be improper to take that the general public will confuse between the two marks in question, especially in view of the facts that the two marks are not barely identical words with inverse letter orders and that there remains controversial whether it can be concluded that one is the inverse order of the other so far as English letters are concerned; and
  4. From the configurations of the two marks in concern, it seems difficult for us to comfortably accept that the two marks are similar in view of all of above-mentioned reasons.

¡@¡@Curiously, we ask informal opinions of some attorneys in many countries whether the two marks are similar? Till now, without exception, we were advised they are dissimilar.

¡@¡@Officials in the governmental agencies have two trends, one of which is pliability to cope with the fast change in the world. The other of which is stagnant as they are. We attribute formation of the later trend to the fact that Taiwan has reaped so many number 1s in recent decades by which officials in the government take the efforts of private enterprises as their nutrition for making their bold to insist on their might-be erroneous position.(1999, 6, 15)