Disney’s Chinese character mark for “Sofia the First” successfully challenged by a local clothing store
E190711Y2．E190710Y2 | Aug. 2019（E237）
The mark containing Chinese characters, “Disney小公主蘇菲亞” (meaning “Disney, Sofia the First” in English) and device thereof that has been successfully registered altogether as a trademark by Disney Enterprise, Inc. with Taiwan IPO (hereinafter “Disney’s mark in dispute”) is challenged by the owner of a clothing store in Taiwan, Li Qiao Clothing Store (Chinese: 立蕎服飾行; hereinafter “Li Qiao”) by filing an opposition with Taiwan IPO against the registration of Disney’s mark in dispute on the ground that the Disney’s mark in dispute is similar to the owner’s registered trademarks “蘇菲亞SOPHIA” and “蘇菲亞Sophia” (hereinafter “Li Qiao’s marks”) (The three Chinese characters, 蘇菲亞, is mostly the transliteration of “Sophia” or “Sofia”). The challenge was unsuccessful, and thus, Li Qiao filed an administrative appeal to the Ministry of Economic Affairs and the appeal was dismissed. Li Qiao went further to initiate an administrative action with the IP Court and the case ended up in Li Qiao’s favor. The IP Court decided that Taiwan IPO should cancel the registration of Disney’s mark in dispute and the Ministry of Economic Affair’s decision should be vacated. The decision is appealable.
Summary of IP Court’s reasoning and holding:
(1) The comparison between Disney’s mark in dispute and Li Qiao’s marks shows that they both include the three Chinese characters “蘇菲亞” identical to each other in pronunciation, appearance, and concept. Most people in Taiwan would transliterate “Sophia” as “蘇菲亞”. Although Disney’s mark in dispute also include the other three Chinese characters, “小公主” in small font size (meaning “little princess”), consumers would see “小公主” simply as an honorific title of the princess, Sofia. Also, the word “Disney” is in much smaller in font size in the tiara that is hard to be recognizable. Therefore, the three Chinese characters, “蘇菲亞” is the most eye-catching part of the two marks. Both with the three Chinese characters, “蘇菲亞” as the most obvious part, the two marks are highly similar.
(2) The designated products of the two marks are identical or highly similar. Consumers in Taiwan are more familiar with Disney’s mark in dispute, which familiarity would cause consumers to confuse Li Qiao’s marks with Disney’s mark in dispute or mistaken regard Li Qiao’s marks as the same representation of source of Disney’s mark in dispute. In this regard, Disney’s mark in dispute would form consumers’ confusion with Li Qiao’s marks.
(3) Taiwan adopts a first-to-register system for trademark protection; that is, the earliest registration should be eligible for trademark right protection. Registration applications filed by Li Qiao for “蘇菲亞SOPHIA” mark and “蘇菲亞Sophia” mark were granted on September 1, 1982 and April 16, 1998, respectively, while Disney’s mark in dispute was approved for registration on January 1, 2017. Apparently, Li Qiao’s marks are eligible for trademark protection due to their earlier registrations. (July 2019)