A-sha Republic Inc.’s Defeat in Trademark Case

A-sha Republic Inc. (阿舍國際有限公司) filed a registration application for the阿舍食堂a-sha.com mark (hereinafter the “subject mark”), but Taiwan IPO held the subject mark unregistrable and therefore rejected the application on the ground that the subject mark is likely to cause confusion with another registered mark, the A-SHA mark that has been successfully registered and owned by a well-known restaurant in Tainan, Taiwan since 2009, operated by the name of A-sha Restaurant (阿霞飯店) with specification thereof covering also online shopping.  Out of disagreement with the Taiwan IPO’s decision, A-sha Republic Inc. filed an administrative appeal with the Ministry of Economic Affairs (MOEA) and further commenced administrative proceedings upon the appeal being dismissed by the MOEA.  However, the Taiwan IP Court made a decision against A-sha Republic Inc. 

A-sha Republic Inc. tried to beat the alleged confusion between the subject mark  and A-sha Restaurant’s A-SHA mark by arguing that the four Chinese characters of the subject mark, “阿舍食堂” constitute the main portion of the subject mark and is presented in the calligraphy form which brings more sense of design to the mark as opposed to the smaller part of “a-sha.com”, and that the English word “A-SHA” of A-sha Restaurant’s A-SHA mark is put on the body of a crab and is simply a transliteration of the restaurant name “阿霞”, and therefore forms less distinctiveness.

According to the holding provided in the IP Court judgment on this case, the two Chinese characters “阿舍” of the subject mark is conspicuously presented as the main portion as contrary to the auxiliary part of the subject mark, “a-sha.com” which is simply a domain name without specific design and simply provides a link to a website, and therefore, it is not distinctive at all.  On the other hand, the A-SHA mark of A-sha Restaurant is a combination of a crab device and the English word “A-SHA”; the word “A-SHA” is put in the middle part of a crab body.  As opposed to the crab, an ordinary creature, the word “A-SHA” is comparatively emphasized on the crab body to impress people.  In addition, the word “A-SHA” of the A-SHA mark is a creation of A-sha Restaurant and form distinctiveness. 

The IP Court sustains the likelihood of confusion between the two marks on the following reasons: (1) the main portions of the two marks, namely “阿舍” and “A-SHA” have similar pronunciation that is easily to cause consumers to think that “A-SHA” is the transliteration of “阿舍”, even though they look different in appearance; (2) the small part of the subject mark, “a-sha” and “A-SHA” of the A-SHA mark is the same with only one difference that they are respectively put in small and capital letters; (3) the two marks are both designated to be used in online and TV shopping; and (4)  Both A-sha Republic Inc. and A-sha Restaurant are well-known service providers, but A-sha Restaurant deserves more protection.  (April 2014)
/CCS