TIPS® Taiwan Intellectual Property Special
Trademark
SNOOPY Triumphs in Opposition Against A Mark With SNOOPY Chinese Equivalents
§23-1-12 of the Taiwan Trademark Act stipulates, a trademark “shall be rejected if the proposed trademark is identical or similar to another person’s well-known trademark and hence is likely to confuse the relevant public, or likely to dilute the distinctiveness or reputation of the said well-known trademark.” The law prevents a famous mark not only from being confusingly similar to the other mark but also from being diluted by marks used on dissimilar goods. Such thorough protection was not provided until the year of 2003, after the promulgation of the current Trademark Act in compliance with the TRIPS Agreement. Before 2003, a foreign language mark could hardly invalidate any registered mark that incorporated the Chinese equivalents of said foreign language mark, unless said Chinese equivalents had become unequivocally famous to the public in Taiwan.
In history, the first SNOOPY® in Chinese Characters mark (史努比®) was registered by UFS in 1984 (which no longer exists). However, in as early as 1983, Taiwan ChiaoWa had already obtained its trademark that combined Chinese Characters史奴比®, another form of SNOOPY® Chinese equivalents. Since then, Taiwan ChiaoWa has possessed 史奴比® in many classes of goods, from toilet papers to bed sheets and towels for more than 2 decades.
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Registered in 1984
Owned by UFS |
Registered in 1983
Owned by Taiwan ChiaoWa |
While SNOOPY® had some trademark registrations for its official Chinese title 史努比®, Taiwan ChiaoWa spread its 史奴比® series marks in many more classes from food, drink to dental floss and etc. The two marks not only appear highly similar to each other, but also pronounce the same. In addition, Taiwan ChiaoWa hid the Chinese Characters 史奴比® in a dog shape drawing and registered another series of marks beginning from 1986.
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史奴比(SNOOPY in Chinese Characters) In a Dog Shape owned by Taiwan ChiaoWa |
Although many invalidation actions and administrative litigations were initiated by the UFS in an effort to take back the 史奴比® mark, there are still more than 13 valid trademarks registered with the TIPO.
The situation got even more complicated when Taiwan ChiaoWa established two other affiliated companies and filed 30 applications for registration of 史奴比® combination marks under the names of different companies. UFS duly filed Oppositions and requested all pending applications on hold until the final outcome of the Oppositions.
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| Baby Snoopy in Chinese Characters |
Snoopy in Chinese Characters + Device
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SNB + drawing of Snoopy in Chinese |
In February, the TIPO rendered its first Opposition decision for the mark “Baby Snoopy in Chinese Characters” in favor of UFS. The TIPO deemed that the mark violates §23-1-12 of the Taiwan Trademark Act, because the various Chinese equivalents of SNOOPY® have been well-known to the general public in Taiwan. Since the more distinguishable part of the opposed mark is the wording 史奴比®, which shares common idea and pronunciations with SNOOPY®, the characteristic causes the entire opposed mark confusingly similar to SNOOPY®. In addition, through trademark licensing, UFS operates a multi-dimensional business for SNOOPY® related marks. Even though the opposed mark is composed of the company’s old mark registered in 1983, the extension of the opposed trademark portfolio may further trademark dilution of SNOOPY® Chinese equivalents. Appeal from the Opposition Decision is still available.
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