IP Court sustains similarity between SUPERFLY mark and SUPERDRY mark

Chyn Mei Clothing Co. (勤美服飾行; hereinafter “Chyn Mei”) has successfully sought registration for its “SUPERFLY” mark with Taiwan IPO for use on shirts, T-shirts, and garments under Class 25 of the List of Classes of Goods and Services of the Enforcement Rules of the Trademark Act since 2012, which successful registration however was opposed by DKH Retail Ltd. (“DKH”) that manufactures and sells garments under the SUPERDRY mark.  Taiwan IPO examined but did not sustain DKH’s opposition request.  Thus, DKH filed an administrative appeal and the appeal was denied.  DKH further initiated an administrative action with the IP Court. 

DKH pointed out that they have been engaged in the business of personal garments and relevant products since their incorporation in 1985 in the U.K., and it has been more than ten years since they created and used the registered SUPERDRY mark in 2003.  Further in 2005, DKH filed an application for registering the SUPERDRY mark in Taiwan and the application was approved in 2006.  Combining the elements of the UK, US, and Japan, DKH’s products under the SUPERDRY mark conquer the world and are well-received globally.  In addition to nearly 100 retailing stores in the U.K., DKH has established points of sale in more than 40 countries around the world and their Superdry products are commercially available online in 101 countries.  Superdry is no doubt an internationally well-known brand. 

DKH alleged that Chyn Mei’s “SUPERFLY” mark is apparently an imitation of their SUPERDRY mark by the reasons that the two marks both consist of 8 English letters beginning with the prefix “super” and ending by the letter “y”.  Owing to their similar appearance and pronunciation, the two marks easily cause confusion among consumers and thus Chyn Mei should be held infringing upon DKH’s trademark right for the SUPERDRY mark, for which DKH requested for revoking registration of the “SUPERFLY” mark. 

In the IP Court judgment, the IP Court affirmed the alleged consumers confusion between the SUPERDRY mark and “SUPERFLY” mark on the ground that people would be confused at their first glance of the two marks due to their similar constituent English letters in the prefix “super” and the ending “y” and they are different only in two letters in the middle, “fl” and “dr”.  The IP Court further found that consumers are more familiar with the SUPERDRY mark as a result of the intense advertising and promotion on the media and MRT by the Taiwanese distributors of Superdry products and also because the SUPERDRY mark is a prior-registered one.  Based on the foregoing findings, the IP Court concluded that Chyn Mei infringes upon DKH’s trademark right for the SUPERDRY mark and Taiwan IPO should revoke the registration of “SUPERFLY” mark.  This case is appealable.  (November 2015)
/CCS