Famous local buffet restaurant wins trademark lawsuit
Feastogether Group Ltd. (hereinafter “Feastogether”) established the famous all-you-can-eat restaurant, eatogether (饗食天堂in Chinese) in Taiwan in 2006, owning and holding the Taiwanese registration of the trademark for the restaurant, a four-character mark, “饗食天堂” (hereinafter the “subject mark”) which has been recognized as a well-known mark by the Taiwan IPO since 2013. In May 2016, a doctor, Huang successfully registered the mark “鹼食天堂 Baso Café”, against which registration Feastogether had filed an opposition and administrative appeal on the ground that the mark “鹼食天堂 Baso Café” (hereinafter the “accused mark”) is similar to the subject mark, but the opposition and administrative appeal were both dismissed. Thus, Feastogether instituted administrative proceedings with the Taiwan IP Court.
For the administrative proceedings, the IP Court sustained the similarity between the subject mark and the accused mark on the following grounds. There is a high likelihood of consumers confusion between the subject and the accused marks in Chinese-speaking countries because the two marks both consist of four Chinese characters with only one different Chinese character, that is, “饗” of the subject mark and the “鹼” of the accused mark, and the other three identical Chinese characters have formed high similarity in appearance between them. In addition to the foregoing similarity in appearance, their respective pronunciation is similar as well, and therefore, the two marks are easily to cause confusion among consumers. Moreover, the two marks are similar also in concept because each of them literally conveys their respective concept of operation of food industry. The accused mark is likely to cause consumers to mistakenly believe that the restaurant run under the accused mark is a healthy version of eatogether to sell alkaline food.
The IP Court also determined that the registrant of the accused mark did not hold the bona fide intent to register the accused mark because the subject mark had already been a well-known one highly recognizable in the same industry before the accused mark’s registration. Summing up the foregoing, the IP Court rendered a judgment in favor of Feastogether and registration of the accused mark should be revoked accordingly. This case is appealable. (August 2018)