Local famous restaurant’s registration application for “宜蘭渡小月” mark denied
E170107Y2．E170106Y2 | Feb. 2017（E207）
A well-known restaurant in Yilan Taiwan, known for its state banquet dishes, filed an application with Taiwan IPO for registering its five-character Chinese mark, “宜蘭渡小月” (hereinafter the “proposed mark”) in November 2013 and further filed for division of the said application into two in October 2014 with the proposed mark being designated for use in services of restaurants and hotels. Taiwan IPO examined the application and decided that the proposed mark is unregistrable on the grounds that the proposed mark is similar to the registered mark “度小月” owned by a restaurant in Tainan (hereinafter the “度小月” mark and the “Tainan restaurant”) and the two marks in dispute are designated to be used on similar services, and that such similarity will cause confusion. The restaurant applicant filed an appeal with the Ministry of Economic Affairs (MOEA) out of the dissatisfaction with Taiwan IPO’s denial of its application and this appeal also turned unsuccessful. To seek a reverse result, the restaurant applicant instituted administrative proceedings, and the IP Court rendered a judgment unfavorable to the restaurant applicant. This case is still appealable.
According to the restaurant applicant, the restaurant name “宜蘭渡小月” has been used since the restaurant was opened in 1968 which is earlier than the registration time of the “度小月” mark owned by the Tainan restaurant, and the long-term use of the restaurant name “宜蘭渡小月” can substantiate its bona fide use and the absence of its intentional imitation. In addition, the proposed mark consists of the first two Chinese characters “宜蘭” which is a geographical name of Yilan of Taiwan and the other three Chinese characters, “渡小月”, and the part of “宜蘭” is to carry a message that the restaurant applicant provides dishes or services characterized by the local flavor of Yilan, Taiwan. Also, the restaurant applicant indicated the differences between their restaurant and the Tainan restaurant in their respective market position and pricing that the restaurant applicant serves mainly middle and high-priced Taiwanese set meals as opposed to the traditional Tainan local dishes or street food of fair prices offered by the Tainan restaurant. Besides, in the activity held by the Department of Commerce under MOEA, the restaurant applicant, 宜蘭渡小月and the Tainan restaurant were respectively described as the must-visit restaurant located in the eastern and southern part of Taiwan. The fact of the long-term coexistence of the proposed mark “宜蘭渡小月” and the Tainan restaurant’s “度小月” mark should affirm the unlikelihood of confusion on the market.
The IP Court, however, did not side with the restaurant applicant with respect the foregoing alleged differences but shed light on the similar appearance and pronunciation shared by and also the similar literal meaning and concept carried by the three Chinese characters of two marks in dispute, namely “渡小月” and “度小月” (the part of the two marks in dispute that impresses consumers most, whose Chinese literal meaning is enduring the slack months or off seasons). Another similarity lies in the fact that the two marks in dispute are both designated for use in the services of restaurants and catering stores, which is likely to form a mistaken belief among consumers that the two marks are of the same source. Also, the IP Court negated the alleged long-term coexistence of two marks in dispute because the store signboard of the restaurant applicant carries the three Chinese characters “渡小月”, instead of the proposed mark “宜蘭渡小月”. Moreover, the time of application and grant of filing of the Tainan restaurant’s “度小月” mark is much earlier than that of the proposed mark. Based on the foregoing holding, IP Court dismissed the restaurant applicant’s proceedings. (January 2017)