The Basis for Judging Whether the Distinctiveness or Reputation of a Well-Known Trademark is Diluted

[Judgment Sharing TW04] Administrative Judgment Shin-Sarng-Su No.2 of Taiwan Intellectual Property Court (2017)

[Result of Judgment]

The trademark in question is adjudicated for rejection of registration in Class 14. As prescribed by law and in conformity with Application Number 102029780, the trademark “IWATCH” is allowed to register under Class 9.

[Contention]

Does the trademark in question pose any risk in confusing the general public with the well-known trademark “Swatch”? And, does the trademark in question have the potential of diluting the distinctiveness and credibility of the well-known trademark “Swatch”?

[Rationale for Judgment]

I. The two trademarks are similar to an extent; yet, the similarity is not extreme:

According to the data submitted during the filing stage by the owner of the trademark the rejection is based on, it is sufficient to recognize that the trademark the rejection is based on is a famous trademark. In comparing the two trademarks, a typical consumer is likely to have the impression that both trademarks are the combination which begins with a single alphabet, attached with the word “watch”. Although they are pronounced differently, those who are not English proficient would not be able to differentiate the two. The two trademarks are similar to an extent; yet the similarity is not extreme.

II. Utilization of Class 14 of the trademark in question is in violation of the fore section of Trademark Act Article 30, Paragraph 1, Subparagraph 11:

The trademark in question and the proprietor of the trademark are considered to be similar on the grounds that both specify goods in Class 14, which consists of watch related goods, ornamental, enhancement or assembling of watch related parts. The trademark in question is thereby in violation of Trademark Act Article 30, Paragraph 1, Subparagraph 11.

III. The application of the trademark in question to the goods of Class 9 does not violate the latter section of Subparagraph 11, Paragraph 1, Article 30 of Trademark Act:

(1) The trademark “SWATCH” the rejection is based on does not specify goods in Class 9, which includes goods such as computers and magnetic disc drives. Since 1998, a series of the trademark in question, each of which uses the letter “I” as the prefix, followed by a common noun, has applied to goods in Class 9, and have been familiarized by domestic consumers. Therefore, it is sufficient to deem that the plaintiff does not intend to refute the trademark in question. The plaintiff’s opposition is based on the fact that the trademark in question specified goods such as computers and hard drives in Class 9, which may cause consumers to associate with the plaintiff’s trademark.

(2) The distinctiveness of a well-known trademark might be diluted due to the fact that the trademark of the other party appears to be the same or highly similar. In the case that the trademark of the third party is applied to the products or services, which have a different market, consumers should not regard the products or services as coming from the well-known trademark. However, it may impair or disperse the public impression that the owner of the well-known trademark is the monopoly source of the trademark. Therefore, the demand to the similarity of the trademarks should be higher in determining whether the distinctiveness of the well-known trademark is damaged than in determining whether the trademark is confused with the well-known trademark. Hence, the damage to the distinctiveness of the well-known trademark should not be taken into consideration unless high-level similarity is reached. The trademark in question and the well-known trademark are not trademarks of high-level similarity. The fact that the trademark in question is specified to apply to goods in Class 9 in registration does not cause damage to the distinctiveness of the well-known trademark. Besides, the application of the trademark in question to goods such as computers, magnetic drives, etc. in Class 9 does not cause a negative evaluation. Therefore, the application of the trademark in question to the goods in Class 9 does not fall into the condition that forbids the registration of a trademark according to the latter section of Subparagraph 11, Paragraph 1, Article 30 of Trademark Act.

(The data is sourced from the Law and Regulations Retrieving System of the Judicial Yuan, Republic of China.)