UCC Holdings Prevails Over Universal Cement in the UCC Trademark Battle

The Japanese company, UCC Holdings Co., Ltd. (hereinafter “UCC Holdings”) and Taiwan-based Universal Cement Corporation (hereinafter “Universal Cement”) has been confronting with each other in the long-drawn-out lawsuit for the ucc trademark.  Finally on June 19, 2014, the Supreme Administrative Court announced a judgment to the effect that the IP Court judgment made on remand should be vacated and the Taiwan IPO’s opposition decision and the Ministry of Economic Affairs’ (MOEA) appeal decision should be all dismissed, and that the Taiwan IPO should revoke the registration of Universal Cement’s UCC collection and device mark. 

In March 2010, Universal Cement successfully registered with Taiwan IPO the UCC collection and device mark (hereinafter the “subject mark”) under No. 1450217 in Taiwan with specification thereof covering hardware products and construction goods retailing and wholesaling, but stated that the word “collection” in the subject mark is not included in the scope of its exclusive right in and to the subject mark. 

The Japanese company, UCC Holdings filed an opposition with Taiwan IPO against the registration of the subject mark on the ground that the subject mark is unregistrable in accordance with Taiwan Trademark Act.  Taiwan IPO, however, did not approve of UCC Holdings’ opposition in January 2012, against which UCC Holdings unsuccessfully filed an administrative appeal with the MOEA.  Therefore, UCC Holdings instituted administrative proceedings with Taiwan IP Court. 

The Taiwan IP Court first examined this case and decided that Universal Cement’s subject mark and UCC Holdings’ ucc mark are not similar (hereinafter the “two conflicting marks”), which decision was afterwards overturned by the Supreme Administrative Court with the IP Court’s judgment being vacated and this case being remanded back to the IP Court.  The IP Court therefore retried this case on remand and still decided that the alleged consumer confusion would not occur between the two conflicting marks and the distinctiveness of UCC Holdings’ ucc mark will not be diluted, which adjudication was made based on the following holding: (1) The degree of similarity between the two conflicting marks can hardly be considered high because the primary part of the two conflicting marks, “UCC”, is put in different letter fonts and Universal Cement’s subject mark has a stylized capital letter “U” on top of the subject mark, and (2) the two conflicting marks are designated for use on products and services of different nature; UCC Holdings designates its ucc mark for use on coffee, tea, and relevant beverage products and coffee shops, while Universal Cement’s subject mark is designated to be used on hardware products and construction materials retailing and wholesaling, and the two companies are not in the same trade nor in competitive relationship.  Both IP Court’s original decision and the decision made on remand upheld Taiwan IPO’s decision to approve of Universal Cement’s registration of the subject mark, holding that IP Court did not err in approving of Universal Cement’s application for trademark registration. 

However, when this case was first brought to the Supreme Administrative Court, the Supreme Administrative Court decided to vacate the IP Court’s original judgment and remanded this case back to the IP Court by a holding that the subject mark will decrease the consumers’ impression that is uniquely brought by UCC Holdings’ ucc mark after the subject mark’s long-term use and the subject mark is likely to dilute the distinctiveness of UCC Holdings’ ucc mark which is a well-known mark for more than 20 years on the ground that the primary part of the two conflicting marks, “UCC”, is similar and “UCC” is not a common combination of letters, even though the two conflicting marks are registered for use on irrelevant goods and services.  In this regard, the Supreme Administrative Court finally reversed the IP Court’s judgment made on remand and delivered its latest judgment in favor of UCC Holdings that the subject mark is likely to dilute the distinctiveness of UCC Holdings’ ucc mark, and also ordered Taiwan IPO to revoke the registration of subject mark.  (June 2014)