Taiwan IP Court finds four Chinese characters “席琳迪昂” not registrable as a trademark in a trademark dispute

　A local enterprise engaged in eyeglasses business in Kaohsiung, Long Strong Development Co., Ltd. (Chinese: 創寶發展有限公司; hereinafter “Long Strong”) has successfully registered the French-Canadian pop diva, Deline Dion’s name, “Deline Dion” as a trademark in Taiwan, which registration cannot be cancelled because Long Strong has acquired and maintained this registration for more than five years.  During year 2015, Long Strong filed another application for registering the four Chinese characters as a whole “席琳迪昂” (which is one of the Chinese transliterations of “Celine Dion”) as a trademark, against which application Celine Dion filed an opposition as an intervener.  Taiwan IPO examined and sustained the opposition accordingly.  Long Strong, however, disagreed with Taiwan IPO’s decision on the opposition and thus filed an administrative appeal which turned out unsuccessful at the Ministry of Economic Affairs, and further instituted administrative proceedings with the Taiwan IP Court.  Taiwan IP Court determined that use of the four Chinese characters “席琳迪昂” as a trademark is extremely likely to cause consumers to mistakenly believe that the products under the proposed “席琳迪昂” mark is relating to Celine Dion, and therefore, made a decision against Long Strong.  

　Long Strong argued that as opposed to another combination of four Chinese characters, “席琳迪翁”, the four Chinese characters in dispute, “席琳迪昂” is rarely used as a Chinese transliteration of Celine Dion’s name and thus the similarity between “席琳迪翁” and “席琳迪昂” is exaggerated.  Moreover, Long Strong maintained that there are a lot of Americans named “Celine Dion” and Long Strong has also authorized use of “Celine Dion” to the intervener, and also that the intervener should not file an opposition against the proposed trademark application for registering “席琳迪昂” as a trademark by the reason that “席琳迪昂” is one of the Chinese transliterations of Celine Dion.  

　The IP Court decided this case against Long Strong on the ground that (1) the singer, Celine Dion had already been a celebrity commonly known to consumers in Taiwan before the filing of the proposed registration application of “席琳迪昂”, (2) “席琳迪翁” and “席琳迪昂”, the two Chinese transliterations of “Celine Dion” are similar in pronunciation, which similarity actually makes no difference to the consumers in Taiwan, and both “席琳迪翁” and “席琳迪昂” would cause people to associate them with Celine Dion, and (3) Long Strong shall not take its Taiwanese registration of the English mark “Celine Dion” as a support in this matter because Celine Dion is procedurally not allowed to file for invalidation of the “Celine Dion” mark due to lapse of the time limit for filing one against the “Celine Dion” mark registration which has been maintained for over five years.  (May 2018) 

/CCS