Metro International Accused Taipei Rapid Transit Corporation of Trademark Infringement.

Metro International S.A. ("Metro"), the international newspaper group, requested cancellation of the registration of Taipei Rapid Transit Corporation’s (TRTC) registered trademark “Metro Taipei News”, while Taiwan Intellectual Property Court (IP Court) ruled in favor of TRTC on the grounds that the two trademarks are not similar to each other and Metro’s mark is not well-known in Taiwan.

TRTC filed a trademark registration application for “Metro Taipei News” in August 2006 and designated its use on its products and services, such as, newspapers, maps, advertisements.  By arguing that the word “metro” contained in Metro’s “metro” mark and TRTC’s “Metro Taipei News” mark both consists of the same five English letters and the common use of their trademarks on newspapers and publications would cause consumers confusion, Metro requested the TIPO to cancel the registration of TRTC’s “Metro Taipei News” mark, but the request was denied.

Metro disagreed with TIPO’s decision and instituted an administrative action, asserting that Metro, as the world’s largest global newspaper, is published in 23 countries in 18 languages and read daily by over 23 millions readers in over 100 major cities across Europe, North and South America, and Asia, and its “metro” mark certainly is globally recognized.

However, according to TIPO, even though the two trademarks in dispute both contain the same English word “metro”, it is less distinctive because it is a common English vocabulary meaning “subway”, one business item of TRTC.  Pointing out the dissimilarities between the two marks in dispute that the word “metro” of TRTC’s trademark is followed by another two English words “Taipei News” and the letter “o” of Metro’s “metro” mark is replaced by a globe device, TIPO determined that the two marks are dissimilar in their appearance, pronunciation, and literal meaning.

Moreover, TIPO emphasized that Metro is very strange to Taiwanese people as opposed to its great reputation in Europe and America because Metro has never released any newspapers and publications in Taiwan.  Metro’s assertion is also weakened by its failure to introduce evidence sufficient to prove such reputation also in Taiwan. 

The tribunal rules in line with the TIPO’s holding.  As a matter of fact, Taiwanese people would directly think of “TRTC” at the sight of “Metro Taipei” and TRTC in Taiwan is more famous than Metro International situated in Luxembourg because Metro does not run the business of rapid transit system or subway transportation nor publish metro or any other publications in Taiwan.

Based on the foregoing reasons, the tribunal determined that the two marks in dispute should coexist and registration of TRTC’s trademark should be cancelled only when Metro is able to prove that TRTC’s trademark is likely to damage Metro’s goodwill.  (2009.03)

[a juxtaposition of the two trademarks in dispute]


Metro International's mark       TRTC's mark


 
/CCS