IPO Gives a Guideline of Examination Standards for the Condition of “Likely to Cause Confusion” of Trademarks.

“Miffy” and “My Melody”, which both use a bunny image, are siblings or strangers? Pursuant to the Trademark Law promulgated on November 28, 2003, Intellectual Property Office (IPO) announced the enactment of the Examination Standards to Clarify “Likely to cause confusion” on May 1, 2004, to give patent examiners a guideline for determining the “likely to cause confusion” of trademarks based on practical examination experiences through years for every field’s reference.

 

In the said Standards, trademark examiners are to take the actual usage of the trademark and the degree of its distinctiveness into consideration when determining whether the mark is likely to cause confusion or not, instead of applying a set formula for the examination procedure. For example, it is not advisable to conclude that the Dutch “Miffy” and the Japanese “My Melody” will cause confusion simply because both trademarks use a bunny image. They are renowned individually, and are unlikely to cause confusion to the public.

 

Besides, if a trademark is found to have caused confusion with another trademark at the time of registration or after it is registered, the said Standards provide a few remedies to solve such problem. These might include reducing the goods or the services in dispute to eliminate the confusion causing factor, or dividing the mark so as to allow the part that is not under dispute to be accepted, or to reach an agreement with the right holder to allow for coexistence. (2004.06)

CYJ/CCS