Shine and Hugo International’s Appeal Unsuccessful at the Supreme Administrative Court

On May 4, 2011, Shine & Hugo International Corporation (Chinese: 林之林科技股份有限公司; hereinafter “Shine & Hugo”) filed a trademark registration application with Taiwan IPO and successfully registered “胡博士Dr. Hu & device” (hereinafter the “mark in dispute”) as a trademark for designated use on facial masks and cosmetics products under Class 3 of the “list of classes of goods and services” provided in Article 13 of the Enforcement Rules of Trademark Act applicable at that time.  However, Dr. Wu Skincare Co., Ltd. (Chinese: 達爾膚生醫科技股份有限公司; original Chinese company name: 天昱生物科技股份有限公司; hereinafter “Dr. Wu Skincare”) challenged Shine & Hugo’s successful registration of the mark in dispute by filing an opposition with Taiwan IPO on September 19, 2012 on the ground that the registration of the mark in dispute is in violation of subparagraph 10~12 of the first paragraph of Article 30 of the Trademark Act.  Taiwan IPO examined Dr. Wu Skincare’s opposition and made a decision that the opposition should not be sustained.  Dr. Wu Skincare filed an administrative appeal with the Ministry of Economic Affairs, and the Ministry of Economic Affairs later decided that “Taiwan IPO’s opposition decision should be vacated and Taiwan IPO should make another decision in compliance with the applicable laws”.  Shine & Hugo was dissatisfied with the Ministry’s appeal decision and thus instituted an administrative lawsuit with the Taiwan IP Court but the lawsuit was dismissed, against which Shine & Hugo filed an appeal with the Supreme Administrative Court.

The Supreme Administrative Court rendered a judgment on this case, according to which “Dr. Hu” and “Dr. Wu” of the two marks in dispute, respectively, form the parts distinguishable from each other.  Regardless of the less distinctive part of “Dr. Hu” and “Dr. Wu”, “Dr.”, the abbreviation of the word “doctor” that is familiar to most people, the part “Hu” and “Wu” are more distinctive and comparable.  However, in comparison, the letter “H” and “W” form a minor difference because the pronunciation of “Hu” and “Wu” is not so different with the same vowel.  Even though the “胡博士Dr. Hu & device” mark contains the Chinese characters “胡博士”, these characters form an impression that they are the Chinese translation of “Dr. Hu”, and therefore, people would not form an impression different from that given by English “Dr. Hu” at the sight of the Chinese characters “胡博士”.  In this regard, even though consumers, at sight of the “胡博士Dr. Hu & device” mark, would not skip the Chinese characters “胡博士”, they will regard them as the representation of the corresponding Chinese meaning of “Dr. Hu”.  Therefore, “Dr. Hu” still forms the main part of the mark in dispute.  As such, the two marks in dispute are similar in appearance, concept, or pronunciation, and thus would cause consumers’ confusion.

Moreover, the two marks in dispute are designated to be used on facial masks and cosmetics products under Class 3.  Since incorporation in 2003, Dr. Wu Skincare has been promoting and exposing its mark “Dr. Wu” to local and international media, by which Dr. Wu Skincare has successfully established the well-known status of the “Dr. Wu” mark as determined and sustained in Taiwan IPO’s invalidation decision No. H00980062 and H00990160 and the IP Court judgment under docket (99) Xing-Shang-Su Zi No. 224.  That is to say, before registration of the “胡博士Dr. Hu & device” mark on May 4, 2011, Dr. Wu Skincare’s “Dr. Wu” mark had been widely known to the consumers.

Also in accordance with the Supreme Administrative Court judgment, due to the fact that the overall appearance of the two marks in dispute, their respective main part, and their respective designated products/services are highly similar, relevant consumers are likely to mistakenly believe that the products/services sold under the two marks in dispute come from the same source or that the users thereof are related or in licensor/licensee, franchisor/franchisee, or any other similar relationships.  Therefore, the Supreme Administrative Court held that the IP Court did not err in holding that subparagraph 10 and 11 of the first paragraph of Article 30 of the Trademark Act are applicable to the registration of the “胡博士Dr. Hu & device” mark and thus dismissing Shine & Hugo’s lawsuit brought against the appeal decision made by the Ministry of Economic Affairs. Based on the foregoing, the Supreme Administrative Court determined that Shine & Hugo’s appeal is groundless and dismissed the appeal.  (March 2015)
/CCS