Taipei High Administrative Court Finds In Favor Of Yang Jung (楊榮) and Against CITIBANK By Reasoning That There Is No Likelihood of Confusion.

  Citibank and Citigroup asserted that the “楊榮CITIPACK” trademark (the trademark in dispute) of Yang Jung Trading Company (Chinese: 楊榮公司), which supplies computer components, is similar to Citibank’s trademark, “CITIBANK” and thus requested cancellation of the registration of “楊榮CITIPACK” trademark.  To Citibank and Citigroup’s claim, Taipei High Administrative Court ruled in favor of Yang Jung by reasoning that the two trademarks have coexisted in the market for a long period of time and been used on different product items; thus, there is no confusion between the two trademarks.

 

  Yang Jung designates its “楊榮CITIPACK” trademark on product items, such as PDA, memory stick, display card, sound card, etc. and trademark registration has been granted and approved by Taiwan Intellectual Property Office.

 

  Citibank claimed that the core text, “CITI”, of their trademarks has been renowned and has served as a prefix of series of trademarks like “CITIDIRECT”, “CITIGROUP”, and “CITICARD”, which are used for representing their banking services and on relevant computer items; also, this core text has been well-recognized to the public due to wide use for years.  The English text of the trademark in dispute, “CITIPACK”, is extremely similar to the above-identified series of trademarks, “CITIBANK” in particular, in the appearance, pronunciation, and design.  This similarity may cause confusion and mislead the consumers to believe that “CITIPACK” and “CITIBANK” are of the same business entity or of license relationship. 

 

  According to Taipei High Administrative Court’s holdings, “楊榮” and “CITIPACK” have been used early since 1991 for advertising and marketing of wireless electric machinery, communication equipment, computer monitors, etc., and there have been many trademarks beginning with “CITI” granted and approved of trademark registration.  Besides, the trademark in dispute is designated for use on the product items far different from banking services represented by “CITIBANK”, and therefore it would not cause confusion to the public. (2006.07)

/CCS