TIPS^®  Taiwan Intellectual Property Special

Protections to the Names of Worldwide Famous Universities (Oxford)

On December 11, 2001, the Taipei High Administrative Court affirmed the Taiwan Intellectual Property Office’s decision in refusing the Service Mark application of “Oxford” used in bookbags, stationary, or promoting and advertising materials, for pre-schools or day-care centers.

It is popular for review courses in Taiwan to have a name of a worldwide famous university for attracting public attention. In 1999, a pre-school named “Little Oxford” applied with the Taiwan Intellectual Property Office (TIPO) for the Service Mark Registration of “Oxford,” used in bookbags, stationary, or promoting and advertising materials, for pre-schools or day-care centers. The Application was rejected by TIPO, on the ground of similarity to a worldwide famous university. The TIPO reasoned that the applicant is in the business of providing education, and “Oxford” is not only a geographical location in south England, but it is also the name of worldwide famous “Oxford University.” The similar educational functions between the applicant’s business and the university would mislead the public to believe they were related.

After failure in the procedure of Administrative Appeals, the applicant initiated administrative litigation before the Taipei High Administrative Court. The Court held in 90-Sue-1042 Judgement that using a mark that is the same as the name of a foreign university by pre-schools or daycare centers may cause public confusion as to the relationship between the mark user and the university. There was no error in the TIPO’s decision of rejecting the registration, and, therefore, the decision was affirmed.