On March 26, 2009, the Taiwan Intellectual Property Office’s (TIPO) decision of rejecting the trademark opposition against the trademark registration number 1277746 bearing “CAMEL” and the Committee of Appeal of the Ministry of Economic Affairs’ rejection against the subsequent appeal were upheld by the Intellectual Property Court.In the said decision, the Court noted that because “CAMEL” was an English word commonly used by the public and the trademark registered by the appellant, Japan Tobacco Inc., included a camel device, the opponent’s trademark would not be diluted by the opposed trademark and confusion of recognition of the two said trademarks among consumers would not arise.
The appellant filed the said administrative lawsuit with the claim of that the opposed trademark was similar to the appellant’s well-known trademark used on cigarette products and registered in U.S.A. and many other countries as early as 1930. And prior to the filing of the opposed trademark in July 2006, the appellant’s trademark was already well-known among the relevant domestic consumers. In addition, even though the opposed trademark was registered by Twinforce Trading Co., LTD. under class 25 with different category of designated goods of clothing products, the appellant also submitted the product catalogues issued by its affiliated company, Worldwide Brand. Inc. to demonstrate that the appellant’s trademark bearing “CAMEL and Device” was also used on products including clothing and shoes.
Nevertheless, the IP Court ruled against the appellant based on the following reasons:
- The opposed and appellant’s trademarks were similar but with different designated goods and clearly different market segmentations. Thus, confusion of recognition among consumers would not arise.
- The submitted evidence was insufficient to establish that the appellant’s trademark use on clothing products was well-known when the trademark application bearing the opposed trademark was filed.
- There are numerous trademarks consisted of “CAMEL” and camel devices with different designated goods/services registered by different parties in Taiwan; thus, the appellant’s trademark has low level of distinctiveness, and the consumers should be able to recognize the source of the products.
- No submitted evidence could demonstrate that the opposed party was aware of the existence of the appellant’s trademark through contractual, geographical, business, or any other relationship with the appellant.
Based on the reasons above, the Court rejected the all of the appellant’s claims. The said Court decision was subject to further appeal.
Organized and translated by Akina Pan
A & Finet International Patent & Law Office
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