I Lan Foods Industrial Co., Ltd. Succeeds in Trademark Lawsuit

I Lan Foods Industrial Co., Ltd. (hereinafter “I Lan Foods”) holds the registration for the four Chinese characters mark 天下一番 (hereinafter the “subject mark”) and designates use of the subject mark on the rice cracker product.  However, it came to I Lan Foods’ attention that a food manufacturer successfully registers with Taiwan IPO another four Chinese characters mark世界一番 which is similar to the subject mark.  In this regard, I Lan Foods opposed against the registration of the世界一番mark but the opposition turned out unsuccessful.  The failed opposition with Taiwan IPO caused I Lan Foods to appeal with the MOEA but the appeal was dismissed.  I Lan Foods finally initiated administrative proceedings with IP Court. 

The IP Court examined this case and decided to have both Taiwan IPO’s opposition decision and the MOEA’s appeal decision vacated.  Here is the IP Court’s holding. 

The two conflicting marks, 天下一番and世界一番, are both word marks that consist of no creative design but simply four Chinese characters.  Pursuant to the word definition provided on the website of the Revised Edition of Mandarin Chinese Dictionary compiled by the National Languages Promotion Committee, the Ministry of Education, the Chinese characters “天下” and “世界” in the two conflicting are similar vocabularies, both of which mean the world.  That is to say, “天下” and “世界” are similar in literal meaning and idea.  In addition, the other two Chinese characters contained in both of the two conflicting marks, “一番” comes from Japanese which is originally an adverb of degree.  With its long-term use and application in Taiwan, the Chinese characters, “一番” becomes an adjective meaning the best and the first.   Judging from the literal meanings of the two conflicting marks and without regard to their different pronunciation and appearance, they represent the same idea.  In addition, the two conflicting marks are designated for use on identical or similar products, which would cause consumers to mistakenly believe that the products under the two conflicting marks come from the same source, or that the suppliers of the products sold under the two conflicting marks are affiliated or in a licensor/licensee or franchisor/franchisee relationship.  Therefore, the IP Court decided that the Taiwan IPO should sustain I Lan Foods’ opposition to the “世界一番” mark and further to have the registration of the said mark cancelled.  (June 2014)
/CCS