Local company loses the KANO trademark battle

Taiwan-based A Li Shan Boutique International Co., Ltd. (transliteration of Chinese company name: 阿里山精品國際有限公司; hereinafter “A Li Shan Boutique”) successfully registered the word, “KANO”, the name of a famous film, as a trademark with Taiwan IPO in 2014, and National Chiayi University filed an opposition to successfully have this registration cancelled.  A Li Shan Boutique thus initiated an administrative proceeding, and the IP Court decided in favor of National Chiayi University on the ground that the registration of National Chiayi University’s “KANO” mark was earlier than that of A Li Shan Boutique’s “KANO” mark and it has distinctiveness as opposed to A Li Shan Boutique’s “KANO” mark which was registered later and is likely to cause consumer confusion, even though the two “KANO” marks are highly similar.  

According to the IP Court judgment, A Li Shan Boutique’s registered “KANO” mark is designated for use on wooden goods including “wooden containers, wooden cases, and wooden furniture”, etc., but its registration was subsequently cancelled as a result of National Chiayi University’s opposition with the Taiwan IPO.  A Li Shan Boutique was dissatisfied with the cancellation and thus filed an administrative appeal but it turned out unsuccessful, either.  A Li Shan Boutique went further to initiate an action with the IP Court, claiming that the designated products of their “KANO” mark are “finished products”, while National Chiayi University’s “KANO” mark is designated for use on “unprocessed wood”, so as to negate the likelihood of confusion between the two parties’ “KANO” marks because of their respective different group of consumers and scope of transaction.  

National Chiayi University argued that “kano” is the Japanese pronunciation of the two Chinese characters “嘉農”, the abbreviation Chinese name of its former school, 嘉義農林學校 (Chiayi Agriculture and Forestry Public School), and its “KANO” mark is an innovative and unique mark.  In addition, they have granted license for use of “KANO” mark in diverse activities with respect to food, garments, living, and transportation.  Due to the facts that the statue embodying the “Kano” spirit erected on Chungshan Road of Chiayi City as supported by alumni donation and that A Li Shan Boutique itself is also located in Chiayi City, it is impossible for A Li Shan Boutique to not know about the existence of the “Kano” statue.  The foregoing makes A Li Shan Boutique’s argument unreasonable and groundless that they were ignorant of National Chiayi University’s “KANO” mark. 

According to the IP Court, the similarity between the two sides’ “KANO” marks lies in their respective identical constituents of four English letters arranged horizontally in the same order without any special design and in the same font and type; that is, the two marks are similar to each other in appearance, concept, pronunciation, and type of use.  In addition, “kano” is the Japanese pronunciation of the two Chinese characters “嘉農” and it is not an English word and bears no relevance to its designated products of unprocessed wood or wooden products.  Consumers would see the “KANO” mark as an indication and differentiation with respect to product source; thus, this mark carries distinctiveness.  Moreover, registration of National Chiayi University’s “KANO” mark is earlier than that of A Li Shan Boutique’s “KANO” mark and thus is more eligible for trademark protection.  On the contrary, A Li Shan Boutique registered its “KANO” mark after the “KANO” mark had become well-known, which shows that A Li Shan Boutique did not hold bona fide intent.  Therefore, the IP Court decided on this case in favor of National Chiayi University.  This case is appealable.  (November 2016) 

/CCS