Taiwan IP Court Reversed the Rejection of Trademark Registration Application Filed by a Time-Honored Eatery

A famous eatery operated by the Chinese store name “黑殿飯店” (Dark Palace Taiwanese Gourmet; originally named “黑店排骨飯”, a store serving Taiwanese pork chop rice; hereinafter the said “eatery”) in Tamsui, New Taipei City filed an application for registering its mark “黑殿飯店Dark Palace Taiwanese Gourmet and device” with Taiwan IPO (hereinafter the “proposed mark”), which application was rejected by Taiwan IPO on the ground that the proposed mark is similar to another registered two Chinese characters mark “黑店” (transliteration: hei dian) held and owned by another Taiwanese company operated by the name of San Li Food Co., Ltd. (Chinese: 高雄三力食品公司) (hereinafter the “黑店” mark) and that the “黑店” mark and the proposed mark are both designated to be used on food and beverage service and such similarity would cause confusion among consumers.  Thus, Taiwan IPO acted upon the 10th subparagraph of the 1st paragraph of Article 30 of the Taiwan Trademark Act to disapprove the said eatery’s trademark registration application, against which disapproval the said eatery filed an administrative appeal but the appeal was dismissed as well.  Therefore, the said eatery initiated an administrative lawsuit with the Taiwan IP Court.

According to the IP Court, consisting of a pig’s head figuration and the Chinese store name “黑殿飯店” in horizontal writing with its English store name “DARK PALACE TAIWANESE GOURMET” below, the proposed mark bears a pig’s head figuration as the most prominent part and the four Chinese characters of the Chinese store name, “黑殿飯店” is in stylized characters obviously different from the “黑店” mark which is in traditional Chinese characters.  With such dissimilarity, consumers would have different impressions and feelings at the sight of the proposed mark and the “黑店” mark, respectively.  In addition, the two Chinese characters, “黑殿” of the proposed mark means a dark and tall hall and carries a concept different from that of the two Chinese characters, “黑店” of the “黑店” mark.  The overall impressions brought by the proposed mark and the “黑店” mark are less likely to cause consumers confusion and thus the two marks have small extent of similarity, even though they have the same Chinese pronunciation, hei dian.

Moreover, the said eatery has been operated for a long time and there have been so many news stories about it.  Also, most search results of a google search conducted by the keywords “黑店排骨飯”, the original store name of the said eatery, link to the said eatery but with nothing to do with San Li Food Co., Ltd.’s store “黑店”.  In view of the foregoing facts, it is groundless to determine that the two marks would cause confusion among consumers.

The IP Court examined this case and held that the provision of the 10th subparagraph of the 1st paragraph of Article 30 of the Taiwan Trademark Act is not applicable because of the following reasons that (1) the proposed mark and the “黑店” mark are distinctive from and less similar to each other, even though they are both designated for use on identical or similar services, (2) the registration application for the proposed mark was filed in bona fide intention, (3) there has been no evidence showing the occurrence of consumers confusion, and (4) the composition of the proposed mark as a whole is different from that of the “黑店” mark, and relevant consumers should be able to identify the respective source represented by the two marks when viewing the two marks separately by exercising ordinary care at different time and place, and therefore, it is unlikely to form a mistaken belief among consumers that the users of the two marks are affiliated companies, or in the licensor-licensee or franchisor-franchisee relationship or other similar relationship.  Based on the foregoing reasoning and holding, the IP Court ruled in favor of the said eatery and vacated the appeal decision and Taiwan IPO’s disapproval decision, holding that the Taiwan IPO should decide otherwise on the registration application filed by the said eatery according to the IP Court’s holding.  This case is appealable.  (May 2015)
/CCS