Under the Circumstance that a Trademark Is Identical to Another’s Company Name, Whether Such Company Name is Well-Known and Whether Such Identical Trademark Causes Confusion to Relevant Consumers Will Serve as the Determinants.

It is common in practice that a dispute arises from the similarity between a trademark that represents the source of products or service and a company name that identifies a business body. Whether a trademark application for a proposed trademark identical to a part of another’s registered company name will definitely violate the regulations related to the Trademark Law and be rejected accordingly?

It occurred that ‘company A’ took a well-known and registered company name “XX” as its trademark and applied for trademark registration; the said well-known company then raised objection, and the registration for this trademark was revoked accordingly. For example, ‘company A’ takes “XX” as a trademark designated to be used on the products of hand wash lotion, hand wash cream, fabric softner, and dish washing liquid, etc. and applies for trademark registration. ‘XX company’ thus claims that “XX” trademark is its mark and name that posseses uniqueness and has been well-known to the industry and relevant consumers due to its use for several decades. In this circumstance, ‘company A’ violates the Trademark Law by applying for trademark registration for this trademark “XX”. After IPO’s examination, since part of XX company’s name, “XX”, has been well-recognized by relevant enterprises and consumers, company A’s trademark registration application for the trademark “XX” and its designation of trademark “XX” to be used on the products covered under XX company’s products will cause consumers’ confusion for the source of products or marketing business body and such registration application for “XX” trademark shall be revoked in accordance with Item 16, Paragraph 1, Article 23 of the Trademark Law. (2004.12)

CYJ/CCS