SIMILAR PRODUCTS
Te IPO argued that people would wear shoes and clothing that go well with each other. Te court essentially said: “Not in the present case. No one would wear ordinarily priced Kito slippers or
sandals while wearing an expensive Kiton suit.”
Pursuant to the court decision, the IPO granted registration of the ‘Kito’ mark.
Comments As a matter of practice, the IPO generally reaches a likelihood of confusion determination on the basis of similarity of marks and goods in general, without looking into the specific market situations. Aſter Kito, however, the IPO has cited the case to explain that the similarity of goods issue turns on the facts of each case, not just the general nature of the goods.
It is desirable not to take it for granted that goods once considered similar or dissimilar are always similar or dissimilar. Taiwan’s Trademark Law allows the IPO and the IP Court to consider various factors in reaching a similarity/dissimilarity or likelihood of confusion conclusion. Te Kito court focused more on special features of the goods and their prices, targeted consumers and trade channels.
“THE PURPOSES, PRICES, TRADE CHANNELS, AND TARGETED CUSTOMERS OF THE GOODS INVOLVED WERE DIFFERENT AND MADE THE GOODS OF ONE PARTY ENTIRELY SEPARATE FROM THE OTHER.”
It is important to read, assess and use the materials available from the client and otherwise. Te owner of the ‘Kiton’ mark provided in the prior case specific information harmful to itself. Such information was used in the Kito case against the owner. In making a non-similarity determination, the court quoted and relied on Autonio’s statements about Kiton products.
Te owner of a prior mark may try to demonstrate its fame. Tis should be done carefully, to avoid ‘boomeranging’. Here, the owner of the ‘Kiton’ mark has pronounced in a prior case that it has produced the best suits, which are sold to a very select group of top-notch consumers. Although this tended to prove its fame in a niche market, it could imply that the general public does not know its mark or products, a factor that could undermine likelihood of confusion. Also, a niche market product might be viewed as dissimilar to the sort of products for ordinary consumers. Te question is: ‘Do you want to win the fame or the case?’
Prior case binding rule
In making a decision involving the same issues and filing or registration particulars, the IPO generally follows an administrative rule commonly known as the ‘prior case binding rule’. Te rule, similar to the collateral estoppel rule, would allow the IPO to make the same decision as to the same issues appearing in a prior case, especially where the marks and the goods are the same.
As indicated, there was a prior case in which a Kito distributor in Taiwan obtained a trademark
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World Intellectual Property Review September/October 2012
www.worldipreview.com
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