No Black & White Cat After Trademark War.

Min Sheng Company, engaged in import and export of apparel, applied for registration of the “Black & White Cat” trademark two years ago.  DIAGEO BRANDS B.V., alleging that the trademark constituted similarity with the “black & white” brand for the world-renowned Whiskey, initiated an opposition action against it.  As a result, the Intellectual Property Court ruled that Min Sheng Company should lose the suit.

Min Sheng Company claimed that its trademark featured a black cat and a white cat sitting next to each other, which was inspired by the famous phrase spoken from Deng Xiao-Ping, “no matter if it is a white cat or a black cat, a cat that can catch rats is a good cat”.  It also explained that it had no intent to take a free ride on the “black & white” trademark of Whiskey, and the two trademarks appeared to be different in the color scheme and lines (among others) of the designs and layouts of “cat” & “dog”.  In other words, no similarity would be constituted between the two trademarks.

DIAGEO BRANDS B.V. alleged that the “Black & White Cat” trademark of Min Sheng Company also featured two animals, one black and the other white, sitting next to each other as seen from a distance; therefore, there was likelihood that the two trademarks would be confused.  The Intellectual Property Office also held that the “black & white” brand for the Whiskey had already been registered in Taiwan in 1960 and were further designated to be used on apparel later.

After the trial, the judge, holding that the two trademarks would be misidentified as the same trademark when they were seen from a distance and given that consumers of jewelry often overlapped with that of apparel, it was very likely that the consumers might misbelieve that the jewelry of “Black & White Cat” and the jewelry of “black & white” Whiskey originated from the same company when making purchase, rendered a judgment against Min Sheng Company.  (2010.11)

Source: IP Court docket number: (99) Xing-Shang-Su-Zi No. 105 [2010]
/DC