Ho Tai Development Co., Ltd. Lost Its Lawsuit against TIPO.

Ho Tai Development Co., Ltd. (hereinafter “Ho Tai”) filed an application with the TIPO for registering “Song of Daikin” (大金之歌) as a sound trademark and designated its use on toys and dolls, etc., and TIPO denied the application, for which Ho Tai initiated an administration action against TIPO.  The IP Court decided against Ho Tai, holding that “Song of Daikin” (大金之歌) is not distinctive enough for its use on dolls and other products, etc. and thus TIPO does not contravene the law by denying the proposed registration application. 

Ho Tai argued that the ad jingle, “Song of Daikin” has been well-known to the public due to its repeated broadcast on TV, and the “Sumo Dolls” (相撲娃娃) appearing in the advertisement becomes the best seller online accordingly. 

In September 2007, Ho Tai applied with TIPO for registering “Song of Daikin” as a sound trademark designated to be used on dolls, puppets, construction toys, model toys, electric toys (except coin- or TV- or Computer-operated ones), sports appliance, etc. 

TIPO denied this application on the grounds that what Ho Tai produces to support its application is all about use of the proposed trademark on air conditioners, ventilator, air purifier, and air cleaner, etc., but not on dolls, and therefore, it is baseless to believe the proposed trademark is so distinctive on dolls and puppets products that it is able to distinguish Ho Tai’s products from others; that is, the proposed trademark lacks distinctiveness.  Ho Tai dissatisfied with TIPO’s denial and filed an administrative appeal which was then dismissed, for which Ho Tai filed an administrative lawsuit with the IP Court to request the IP Court to vacate TIPO’s decision of denying the proposed application. 

To the IP Court, the “Sumo Dolls” are simply free gifts with the purchase of Ho Tai’s electric appliances, and consumers will think of Daikin’s air conditioners, instead of its dolls or toys, when hearing “Song of Daikin”.  Therefore, “Song of Daikin” is not distinctive as a sound trademark used on toys, etc. and cannot distinguish the source of products.  In accordance with the Trademark Act, the trademark registration application should not be granted, and therefore, the IP Court stated that TIPO’s decision does not contravene the laws.  (2009.08)
/CCS