Grand Cosmo Resort defeated in trademark lawsuit with its mark invalidated in the first instance proceeding

　Grand Cosmo Resort (Ruisui-Hualien) (Chinese: 瑞穗春天國際觀光酒店; hereinafter “Grand Cosmo Resort”) litigated its trademark,瑞穗春天國際GRAND COSMOS SPA and device (hereinafter the “mark in dispute”), whose registration was invalidated by Taiwan IPO on the ground that the mark is similar to the Chinese character mark “春天” (literally meaning “spring” in Chinese) owned by Spring City Resort (Chinese: 北投春天酒店).  Dissatisfied with Taiwan IPO’s invalidation decision, Grand Cosmos Resort initiated administrative proceedings with the IP Court and still lost the administrative proceedings in the first instance proceedings because the IP Court affirmed Taiwan IPO’s decision by ruling that the mark in dispute would cause confusion on consumers.  This case is appealable. 

　Grand Cosmo Resort asserted that the mark in dispute consists of the stylized device of rice spikes, six Chinese characters “瑞穗春天國際”, and English word combination of “CRAND COSMOS SPA”, a overall stylized combination of device and words that is different from Spring City Resort’s two Chinese characters mark “春天”.  Also, Grand Cosmo Resort stressed the difference pointing out that the word part of the mark in dispute fully represents Grand Cosmo Resort being part of Cosmos Hotels & Resorts or affiliate company thereof, and thus, there would be no confusion caused on consumers.  Grand Cosmo Resort also beat the alleged market overlap circumstance by pointing out the difference between Grand Cosmo Resort and Spring City Resort in target customers and mode of business operation; that is, Spring City Resort provides services of hot springs, accommodation, and private hot spring rooms in Japanese style, while Grand Cosmo Resort provides services of a combined style of southern Europe-style chateau resort.  

　Spring City Resort (the intervener of this case) indicated the likelihood of consumers confusion with respect to the source of Grand Cosmo Resort’s services because the distinctive part of the mark in dispute is the two Chinese characters, “春天” and both Grand Cosmo Resort and Spring City Resort are hot spring hotels that provide relevant products and services.  Spring City Resort also pointed out Grand Cosmo Resort’s intention by explaining that Grand Cosmo Resort has also successfully registered two other trademarks, “瑞穗天成GRAND COSMOS SPA RESORT RUISUI” and “瑞穗天成DRAND COSMOS SPA RESORT RUISUI” but it uses only the mark in dispute for marketing purpose.  Therefore, Spring City Resort requested for the court’s dismissal of the proceedings commenced by Grand Cosmo Resort.  

　The IP Court affirmed Spring City Resort’s assertion that the two Chinese characters “春天” are the most distinctive part of the mark in dispute among its other constituents, namely the stylized device of rice spikes, the Chinese characters “瑞穗”, “國際”, and the English words, “GRAND COSMOS SPA” because the other two Chinese characters “瑞穗” of the mark in dispute refers to a geographic name, Ruisui, while “國際” generally means transnational or international business, and the word “SPA” indicates the type of business.  Moreover, the designated business scope of the mark in dispute includes the services of bathhouse, sauna, outdoor hot springs, massage, aromatherapy, which are mostly similar to the designated services of Spring City Resort’s mark, and such similarity would indeed lead to consumers confusion.  Also in view of the facts that Spring City Resort has been established since 1975 and has had its “春天” mark and “春天酒店” mark duly registered since 1988 and also that Spring City Resort had begun to use these marks for business operation before Grand Cosmo Resort filed the registration application for the mark in dispute, the IP Court decided against Grand Cosmo Resort in this trademark dispute.  (October 2019) 

/CCS