French company sues TIPO for trademark confusion in Taiwan
E210721Y2 | Aug. 2021（E261）
Somfy Activites SA (hereinafter referred to as “Somfy company”) has registered the SOMFY mark and sOmfy mark (hereinafter referred to as “Somfy’s marks”) for designated use on electrical appliances since 2016. However, in 2017, Somfy company found that another electrical appliances manufacturer also registered a “simFY” mark (hereinafter referred to as the “mark in dispute”), and thus, Somfy company filed an opposition to the registration of the mark in dispute to avoid trademark confusion. However, in January 2019, Taiwan IPO did not sustain Somfy company’s opposition, against which Somfy company instituted an administrative action with the Taiwan IP Court to seek Taiwan IPO’s cancellation of the registration of the mark in dispute. In the first instance proceedings, the Taiwan IP Court negated the existence of confusion between Somfy’s marks and the mark in dispute on the ground that they are designated for use on different products and services. The case moved on to the Supreme Administrative Court, which held that the Taiwan IP Court’s decision was simply as a result of “inference” and remanded this case back to the Taiwan IP Court for retrial for lack of reasoning.
In the first instance proceedings, based on the publication of trademark registration, the Taiwan IP Court did not establish the existence of confusion between Somfy’s marks and the mark in dispute and ruled against Somfy company by a reasoning that the mark in dispute is mainly used for the services of online shopping and electrical appliances retailing and wholesaling and people who purchase the products under the mark in dispute are mostly general consumers, while Somfy’s marks are mainly used on the intelligent control equipment for electrical appliances, instead of electrical appliances themselves and most buyers thereof are professionals or suppliers.
In the second instance proceedings, the Supreme Administrative Court held that the existence and non-existence of the likelihood of confusion should be judged by considering the factors including the “level of distinctiveness of trademarks”, “whether the two trademarks are similar and the extent of their similarity, if any, “whether the goods or services are similar and the extent of their similarity, if any”, “status of diversified operation of a prior right holder”, “circumstances of actual confusion”, “the extent to which relevant consumers are familiar with the trademarks concerned”, “whether the application to register a trademark at issue is filed in good faith”, and “other factors that cause confusion”. Based on the holding that the IP Court’s reasoning with respect to the irrelevance between online shopping and retailing of electrical appliances and intelligent control equipment for electrical appliances and the difference of consumers was simply inference made without examining relevant matters or actual circumstances, the Supreme Administrative Court found Somfy company’s appeal with merits and the IP Court’s contravention of the laws by lack of reasoning, and hence, vacated the IP Court judgment and remanded this case for retrial. (Released 2021.07.21)