Administrative Appeal Judgment 2021 Xing-Shang-Geng (Yi) Zi No. 4 of the Intellectual Property and C

 

1. A comparison between the “online shopping services” for which the trademark at issue is designated and the specific goods for which the disputed trademarks are designated shows that the former are retail services by which a variety of goods are sold, and which can be regarded as an integrated service, whereas the latter are goods that use the disputed trademarks to indicate their sources. The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated differ from each other in property and therefore should be viewed as bearing no similarity to each other.

 

 

2. A comparison between the “retail and wholesale services for electrical appliances” for which the trademark at issue is designated and the goods for which the disputed trademarks are designated shows that what is to be protected by the trademark at issue is not the goods displayed for sale but an integrated service provided by the trademark holder planning and arranging the required labor services, whereas the disputed trademarks are designated for goods and are used to indicate the sources and quality of goods. The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated differ markedly from each other in property and therefore should be viewed as bearing no similarity to each other.

 

 

I. Issue: Can the “online shopping services” and “retail and wholesale services for electrical appliances” for which a trademark is designated be viewed as similar to the intelligently controlled home appliances for which another trademark is designated?

 

II. Judgment No.: Administrative Appeal Judgment 2021 Xing-Shang-Geng (Yi) Zi No. 4 of the Intellectual Property and Commercial Court

 

III. Trademark at issue: Trademark Registration No. 01881381

 

 

IV. Case summary

 

 

1. Reproductions of the trademark at issue and of the disputed trademarks:

 

Trademark at issue   Trademark Registration No. 01881381	Disputed trademark   Trademark Registration No. 01218608	Disputed trademark   Trademark Registration No. 01763393
Class 35: Retail and wholesale services for electrical appliances.	Class 9: Electrically driven or electronic instruments or equipment for managing, distributing, converting, storing, adjusting, or controlling electric current.	Class 7: Electrically driven or electronic data processing, storing, transmitting, or receiving devices for home or domestic appliance automation and management.

 

 

2. The plaintiff’s claims:

 

The trademark at issue is designated for “retail and wholesale services for electrical appliances” and “online shopping services” while the disputed trademarks are designated for some of the goods in classes 7 and 9, or “electrical appliances” in a nutshell. The goods for which the disputed trademarks are designated are mostly electrical appliances, belong to the goods to be sold by the “retail and wholesale services for electrical appliances” for which the trademark at issue is designated, can satisfy similar consumer needs to those satisfiable by the goods to be sold by the services for which the trademark at issue is designated, and are marketed in the same places as the goods to be sold by the services for which the trademark at issue is designated. Therefore, the goods for which the disputed trademarks are designated and the services for which the trademark at issue is designated should be considered similar to each other. In addition, as the goods for which the disputed trademarks are designated cover almost all the common types of electrical appliances and are related to the purpose of the provision of the “online shopping services” for which the trademark at issue is designated, and a consumer using the online shopping services may come across the goods for which the disputed trademarks are designated, the goods for which the disputed trademarks are designated and the services for which the trademark at issue is designated should be considered similar to each other.

 

 

3. The defendant’s claims:

 

(1) The goods for which disputed trademark 1 is designated are electrically driven or electronic equipment, are professional goods, are intended to be used by professionals, and are different from electrical appliances that can be operated individually. Consumers of the goods for which disputed trademark 1 is designated are supposed to be companies such as equipment manufacturers. Therefore, the goods for which disputed trademark 1 is designated and the “online shopping services” and “retail and wholesale services for electrical appliances” for which the trademark at issue is designated differ greatlyfrom each other in property (goods vs services) and function, have their respective manufacturers and service provider, and should not be viewed as the same or similar goods or services.

 

 

(2) Disputed trademark 2 is designated for goods in classes 7 and 9, whereas the trademark at issue is designated for “online shopping services” and “retail and wholesale services for electrical appliances”, i.e., for the retail of a variety of goods and for the wholesale and retail of various electrical appliances.The goods for which disputed trademark 2 is designated and the services for which the trademark at issue is designated differ greatlyfrom each other in property (goods vs services) and function and therefore should not be viewed as the same or similar goods or services.

 

 

 

4. Court judgment:

 

 

(1) The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated are not similar to each other.

 

 

The trademark at issue is designated for online shopping services and retail and wholesale services, i.e., services by which a variety of specific goods are gathered together in a single place to facilitate browsing and purchase by consumers, or in more general terms, retail services provided to sell goods. The disputed trademarks, on the other hand, are designated for goods and are used to identify the sources/manufacturers of goods. The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated differ greatly from each other in property (services vs goods) and function, have their respective service provider and manufacturers, and have nothing in common, or any association with each other, in terms of satisfying consumer needs.Based on common sense and market transaction practices, therefore, the services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated do not constitute similar goods or services.

 

 

 (2) Grounds for dismissing the plaintiff’s claims:

 

 

(i) Regarding the “retail and wholesale services for electrical appliances” for which the trademark at issue is designated:

 

 

A comparison between the “retail and wholesale services for electrical appliances” for which the trademark at issue is designated and the goods for which the disputed trademarks are designated shows that what is to be protected by the trademark at issue is not the goods displayed for sale but an integrated service provided by the trademark holder planning and arranging the required labor services, whereas the disputed trademarks are designated for goods and are used to indicate the sources and quality of goods. The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated differ markedly from each other in property and therefore cannot be viewed as the same or similar.

 

 

(ii) Regarding the “online shoppingservices” for which the trademark at issue is designated:

 

 

A comparison between the “online shopping services” for which the trademark at issue is designated and the goods for which the disputed trademarks are designated shows that the former are retail services by which a variety of goods are sold, and which can be regarded as an integrated service, whereas the latter are goods that use the disputed trademarks to indicate their sources. The services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated differ from each other in property. Moreover, as the range of the goods to be sold by the “online shopping services” for which the trademark at issue is designated is wide and non-specific, a consumer, in principle, can hardly expect that the goods to be sold by the online shopping services and the goods for which the disputed trademarks are designated come from the same sources or different but associated sources. Therefore, the services for which the trademark at issue is designated and the goods for which the disputed trademarks are designated cannot be viewed as similar.