MITSUI Food & Beverage Enterprise Defeated in Trademark Dispute

In 2010, MITSUI Food & Beverage Enterprise Group (hereinafter MITSUI Food & Beverage”) filed a registration application for its “三井MITSUI & device” mark (hereinafter the “proposed mark”) and designated it to be used for services of “retailing of food products, beverage, agricultural products, and fishery products” in Class 35 as categorized in Article 13 of the Enforcement Rules of Trademark Act operable in 2010.  After examination, Taiwan IPO held that the proposed mark is likely to cause confusion with the “三井”, “三井物產”, and “MITSUI” marks owned by MITSUI & Co., Ltd. (hereinafter “MITSUI Co.,”, “MITSUI Co.’s subject three marks”) and therefore decided to reject MITSUI Food & Beverage’s application on the grounds that (1) the proposed mark is similar to MITSUI Co.’s subject three marks, (2) the categories of services for which the proposed mark are designated to be used are related to those of MITSUI’s subject three marks, and (3) MITSUI Co.’s subject three marks had already been well-known ones commonly recognized by consumers before MITSUI Food & Beverage filed the application.  Out of dissatisfaction, MITSUI Food & Beverage filed an administrative appeal but the MOEA affirmed the Taiwan IPO’s decision and then dismissed the appeal.  In this regard, MITSUI Food & Beverage initiated an administrative lawsuit with the IP Court. 

MITSUI Food & Beverage asserted the dissimilarities between the proposed mark and MITSUI Co.’s subject three marks by arguing that trademark regime is subject to territoriality principle and MITSUI Co. is not a famous company in Taiwan and that MITSUI Co. is not engaged in catering business or food products retailing, and also that the proposed mark and MITSUI Co.’s subject three marks are different in their respective appearance, pronunciation, concept, and designated services. 

According to the IP Court’s judgment, even though the proposed mark is designated to be used on products and services different from those of MITSUI Co.’s subject three marks, MITSUI Co.’s subject three marks are well-known and MITSUI Co. itself is famous so that the scope of eligible protection of the subject three marks should be broader but not limited simply to their designated products and services.

Taking into consideration the degree of distinctiveness of and the similarity and mutual relationship between the proposed mark and MITSUI Co.’s subject three marks, the IP Court held that the proposed mark should be the unregistrable one as defined and specified in the 11th subparagraph, the 1st paragraph of Article 30 of the Trademark Act and therefore dismissed MITSUI Food & Beverage’s initiation of the administrative lawsuit.  MITSUI Food & Beverage was dissatisfied and thus appealed to the Supreme Administrative Court.  Likewise, the Supreme Administrative Court dismissed MITSUI Food & Beverage’s appeal by a ruling on the ground that MITSUI Food & Beverage failed to indicate specifically how IP Court contravened the laws and regulations in its judgment.  This case becomes final.    (October 2014)
/CCS