Court rules in favor of Paramount’s mark.

The IP administrative court has ruled in favor of Paramount International IP Holding Company in the case where the company’s trademark filing for its mark “WONDERFUL W/HEART” was formerly rejected by the Taiwan Intellectual Property Office.

Paramount has filed its “WONDERFUL W/HEART” mark back in 2009 for “processed nuts”. Yet the Taiwan IPO has rejected this application in June of 2010, based on the argument that the mark “WONDERFUL W/HEART” is similar to a registered mark 「萬德富」(pronounced as “wan-de-fu” in mandarin) owned by a Taiwanese food processing company called “Fu-Song”.

Paramount alleged that while the cited mark 「萬德富」covers goods like tea drinks, soy bean souse, seeds and scores of others, Paramount’s “WONDERFUL W/HEART” was filed under the designation of “processed nuts”, hence there is no concerns of similarity or confusion between the designated goods of the two marks at issue. Furthermore, Paramount argues that the letter “O” in “WONDERFUL W/HEART” is uniquely designed to resemble the heart mark, and such design has rendered the “WONDERFUL W/HEART” mark to be apparently distinguishable from the cited mark of 「萬德富」. On top of the above, Paramount also argues that the cited mark 「萬德富」has expired as of September 15, 2010, and its owner has not yet applied to renew this mark up to March 2011, hence the mark 「萬德富」must have become void and should not be of any obstacle to the registration of Paramount’s mark at issue.

The IP administrative court has thus, based on the above reasoning, abrogated the decision of the Board of Appeal under the Ministry of Economic Affairs, and ruled that the Taiwan IPO shall allow Paramount’s “WONDERFUL W/HEART” mark to be registered.  (2011.07)
/JK