【Trademarks】A case related to the trademark “聖旺” selected by TIPO for recent years
The determination of likelihood of confusion
| Contested trademark | Cited trademark |
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| Registered No.01982751 Class 43: Inn; motel… |
Registered No.00186675 Class 43: Restaurant…; hotel; motel… |
【Decision No】Administrative Judgment of the Intellectual Property Court,
2020 Xing Shang Su Zi No. 76
【Date】March 25, 2021
【Issue】Is there any likelihood of confusion between two trademarks with low degree of similarity, while the services designated by each of them are highly similar to each other?
【Relevant statutes】Article 30.1.10 of the Trademark Act
【Decision Highlight】
1. With respect to the trademarks of the two parties, domestic consumers, who are accustomed to Chinese, normally take the Chinese characters as the basis to distinguish the sources of goods and services. In an overall assessment, the contested trademark contains a string of English characters “San Juan Easy Stay Inn Tainan” in a small font under the Chinese characters “聖旺商旅”; the cited trademark contains a string of English characters “SAN WANT HOTEL” in a small font under the Chinese characters “神旺大飯店”. The contested trademark is yellow, while the cited trademark is black. Their designs of the fonts are different from each other as well. That is to say, the colors, fonts, and Chinese and English characters of the two trademarks are different from each other; accordingly, their overall impressions presented to consumers are different. Although both of the “聖旺商旅” and the “神旺大飯店” contain the same character “旺”, neither of them is deliberately enlarged to highlight the character. Both trademarks are designated for use on the catering and hotel services rather than ordinary daily consumer goods. A consumer who purchases the service, or a potential consumer who may purchase the service in the future, with a certain degree of general attention, can easily distinguish the differences between the two trademarks. Therefore, the consumers will not perceive that the two trademarks come from the same or related sources. The degree of similarity between the two trademarks is extremely low.
2. According to Article 30.1.10 of the Trademark Act, the similarity of goods or services between two trademarks shall be determined by the goods or services designated or registered. In this case, the two trademarks are both designated for use on hotels, restaurants, etc., with no difference in essence. The differences in business model and business positioning claimed by the plaintiff shall be considered under other factors of confusion, which cannot be relied on to determine that the services at issue are not similar to each other.
2020 Xing Shang Su Zi No. 76
【Date】March 25, 2021
【Issue】Is there any likelihood of confusion between two trademarks with low degree of similarity, while the services designated by each of them are highly similar to each other?
【Relevant statutes】Article 30.1.10 of the Trademark Act
【Decision Highlight】
1. With respect to the trademarks of the two parties, domestic consumers, who are accustomed to Chinese, normally take the Chinese characters as the basis to distinguish the sources of goods and services. In an overall assessment, the contested trademark contains a string of English characters “San Juan Easy Stay Inn Tainan” in a small font under the Chinese characters “聖旺商旅”; the cited trademark contains a string of English characters “SAN WANT HOTEL” in a small font under the Chinese characters “神旺大飯店”. The contested trademark is yellow, while the cited trademark is black. Their designs of the fonts are different from each other as well. That is to say, the colors, fonts, and Chinese and English characters of the two trademarks are different from each other; accordingly, their overall impressions presented to consumers are different. Although both of the “聖旺商旅” and the “神旺大飯店” contain the same character “旺”, neither of them is deliberately enlarged to highlight the character. Both trademarks are designated for use on the catering and hotel services rather than ordinary daily consumer goods. A consumer who purchases the service, or a potential consumer who may purchase the service in the future, with a certain degree of general attention, can easily distinguish the differences between the two trademarks. Therefore, the consumers will not perceive that the two trademarks come from the same or related sources. The degree of similarity between the two trademarks is extremely low.
2. According to Article 30.1.10 of the Trademark Act, the similarity of goods or services between two trademarks shall be determined by the goods or services designated or registered. In this case, the two trademarks are both designated for use on hotels, restaurants, etc., with no difference in essence. The differences in business model and business positioning claimed by the plaintiff shall be considered under other factors of confusion, which cannot be relied on to determine that the services at issue are not similar to each other.
