“TRUE YOGA FITNESS” mark should be eligible for registration, the IP Court says

The Singapore-based CJ Group Ptd. Ltd. (hereinafter “CJ Group”) filed an application for registering their mark consisting of “TRUE YOGA FITNESS” and six Chinese characters “全真瑜珈健身” and a device as a whole in June 2014 (hereinafter the “proposed mark”).  Taiwan IPO turned down CJ Group’s application based on the following reasons.  Two Chinese characters of proposed mark, “全真”  is identical to another person’s registered two Chinese characters mark “全真” (hereinafter the “全真” mark).  Further, the services provided under the “全真” mark and the proposed mark are highly similar because they are both the services of physical fitness and ability teaching and such similarity would cause confusion.  Taiwan IPO’s disapproval decision dissatisfied CJ Group and sparked CJ Group’s appeal to the Ministry of Economic Affairs.  The appeal later turned unsuccessful and CJ Group further brought this matter to the IP Court.  The matter ended up in CJ Group’s favor, for the IP Court rendered a judgment demanding that Taiwan IPO should approve the application of the proposed mark. 

According to the IP Court judgment, the proposed mark is a top-down combination of four elements including a black oval device with a white letter “Y” and also a white dot on top of the letter “Y”, which white letter “Y” and the white dot on top form an human shape.  What lies underneath the black oval device is the English word “TRUE” with the letter “T” in bigger font.  Further, under the word “TRUE” are the words “YOGA” and “FITNESS” with a dot between them.  The fourth element of the proposed mark at the bottom is six Chinese characters “全真瑜珈健身”.  Among the four elements, the human shape and the word “TRUE” form 70% of the proposed mark, while the six Chinese characters “全真瑜珈健身” comprise only 10% thereof.  Further, the proposed mark is pronounced as “true” and “yoga fitness” in English, and “quan-zhen-yu-jia-jian-shen” (the Chinese characters “全真瑜珈健身”) in Chinese, which pronunciations are different from that of the “全真” mark.  The proposed mark, along with the human shape, carries the concept that yoga stretching can help attain physique stretch and peace of mind.  On the other hand, the “全真” mark causes people to associate it with “Quanzhen sect” or “Quan-zhen qi-zi”.  Therefore, there is only a very low degree of similarity between the two marks in dispute with respect to their appearance, pronunciations, and concepts they represent, even though they both contain the same two Chinese characters “全真”.  Likewise, the respective designated products/services of the two marks are not similar.  In addition, the proposed mark has been well-known to some extent and thus it should not cause confusion with the “全真” mark.  Based on the foregoing holding, the IP Court decided on this case in favor of CJ Group accordingly.  (February 2016)
/CCS