Administrative Court Judges That the Trademark Identical to That of Other Manufacturers Shall Not Apply for Registration. Taiwan SHISEIDO’s Trademark “Huang Jia” Will Be Dismissed.

Though there is the regulation of the priority of trademark, the trademark which is identical to the names of other corporations, groups, or enterprise known nation-wide and is used in the same or similar products, shall not apply for registration. Taipei High Administrative Court dismissed the administrative complaint filed by Taiwan SHISEIDO based on the preceding regulation.

Taiwan SHISEIDO Co., Ltd. applied for trademark registration with Intellectual Property Office for the trademark “Huang Jia” (transliterated from “皇家”) and was approved in 2000. The trademark “Huang Jia” was designated to be used on the products, such as makeup, pomade, shampoo, etc. After that, Huang Jia Daily Use Paper Products Factory (皇家日用衛生品廠公司) raised an objection to the effect that the trademark “Huang Jia” should be subject to the ruling of trademark cancellation by Intellectual Property Office since it was identical to the chartered name of Huang Jia Daily Use Paper Products Factory, and violated the regulations of the Trademark Law. Taiwan SHISEIDO refused such ruling and filed an appeal.

According to the Trademark Law, trademark registration shall be approved through examination. Taiwan SHISEIDO expressed that it was an improper procedure since the Intellectual Property Office did not examine whether the trademark “Huang Jia” was other corporations’ registered name beforehand, but then cancelled the registration of the said trademark after the registration of the said trademark had been approved. Taiwan SHISEIDO also questioned that Huang Jia Daily Use Paper Products Factory had never applied for registration for forty years, but instead raised an objection insisting that Taiwan SHISEIDO took a free ride of its goodwill after Taiwan SHISEIDO had invested money in advertisement. Such an objection was unjustified.

The Intellectual Property Office indicated that an application for registration of a trademark is not approved according to the law if the name of a trademark repeats that of other trademarks and is used in the same or similar products and whether a trademark is used earlier than other trademark did not fall into the scope of its examination. The trademark registration and examination announcement are the procedure of the preparation for registration so as to make up the deficiency of examination. Anyone who thinks that the examination of trademark violates the law can raise an objection within three months of the announcement period.