SIMILAR PRODUCTS
Taiwan’s IP Court has ruled that shoes and clothing cannot always be considered similar products for the purposes of trademarks, explains James Chao.
T ings change, much to our surprise. Similarity or relatedness of products is an important factor in fi nding likelihood of confusion of two trademarks. Some products are traditionally considered similar or dissimilar, but the courts may rule otherwise.
Decades ago, sponsoring of conventions would arguably be unrelated to movie studio services. However, a federal appellate court in California held otherwise in 1998. In that case, the plaintiff was in the business of sponsoring science fi ction conventions using the ‘Dreamwerks’ mark. T e defendant, a fi lm studio established by Hollywood movie moguls such as Steven Spielberg, used the highly similar mark ‘DreamWorks SKG’. T e appellate court found that the services of the parties were related to the point where an infringement issue was raised (Dreamwerks Production Group, Inc v SKG Studio).
Taiwan went the opposite way in a recent case. In its 2011 Kito decision, the Intellectual Property Court (IP Court) held that shoes and clothing marketed by the parties were only slightly similar for the purposes of
determining likelihood
of confusion, in spite of the long-established practice that these items are generally similar. For that and other breakthrough holdings, the case becomes a leading case.
T e plaintiff in the Kito case is Kito, a T ai company known in Asia for casual shoe and footwear items, such as sandals and slippers. Kito fi led a Taiwanese trademark application in 2009 to register its mark (stylised ‘Kito’ and device, below leſt ), covering these shoe and footwear items. T e application was rejected by Taiwan’s Intellectual Property Offi ce (IPO), on the grounds of likelihood of confusion with a prior mark ‘Kiton’ (word mark, below right), owned by Ciro Paone Spa, an Italian company. T e ‘Kiton’ mark was registered for clothing items, in particular men’s business suits.
T e IPO cited Section 13(I)(13) of the Trademark Law, re-numbered in the 2011 Trademark Law, which would render a trademark unregistrable if it is identical or similar to a previously registered
trademark covering identical or similar goods. Aſt er exhausting its administrative resort, Kito sued the IPO at the IP Court, claiming that the rejection was improper.
Similarity of goods
T e IP Court accepted Kito’s argument and held that the ‘Kito’ mark and the ‘Kiton’ mark were just slightly similar.
T e clincher is the similarity of the goods. Kito argued vigorously that the goods under the two marks are dissimilar given the facts released in a prior case. Such facts showed the following:
• Media reports of the ‘Kiton’ mark quoting the statements of Autonio, a Kiton executive: “A man’s suit costs on average €7,000, or RMB65,000. T e price could be even higher if customs duties are included”, and
• “We have our own market. Only 20,000 Kiton suits are produced each year, for 7,000 to 10,000 customers in the world. Our customers include royal members, movie stars and artists in every country.”
• A statement on the website Wikipedia: “T e product number of the most famous Kiton suit is K-50. It would cost $50,000.”
In addition to the price and the targeted customers, Kito argued that the trade channels of the goods are entirely diff erent. Kito’s shoe items can be sold at low prices and can be seen anywhere—department stores, footwear stores, night markets—making them accessible to general consumers. On the other hand, the trade channels of Kiton suits are very limited and the public are generally shut out from such channels.
T e IP Court held in favour of Kito, stating that the goods under the two marks were only slightly similar. In recognising that shoes and clothing were generally regarded as similar goods, the court accepted Kito’s arguments, and concluded no likelihood of confusion. It added that
the
purposes, prices, trade channels, and targeted customers of the goods involved were diff erent and made the goods of one party entirely separate from the other.
www.worldipreview.com
World Intellectual Property Review September/October 2012
79
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128