Can Similarity between Words and Devices Exist?

If you ever visit Taiwan, you will not want to miss the famous ice dessert, so-called ‘frog eggs’ or ‘pearls in sweet sauce’, available in the night markets. The name of the dessert comes from the dark brown tapioca rice balls that appear similar to frog eggs in size, shape and colour.

The Taiwan Intellectual Property Court recently rendered a decision on an administrative litigation case involving a trademark dispute over ‘frogs laying eggs’, and based the conclusion of similarity between two marks merely on the connotation of two marks. The judgment is surprising.

 

The trademark at issue is composed of six Chinese characters, ‘巫記青蛙下蛋’, where ‘巫記’ refers to a family named ‘巫’ (pronounced ‘Wu’) and ‘青蛙下蛋’ (meaning ‘frogs laying eggs’). The trademark as a whole means ‘Family Wu’s frogs are laying eggs’ or ‘Family Wu’s frog lays eggs’. The trademark was filed in 2002 and registered in 2003 in Class 43 for eatery and beverage store services.

 

 

However, Wu’s word mark was challenged by a family member Wang, based on a device mark depicting a frog laying eggs. The Wang device mark was registered in 1993 for snack bar services. The invalidation grounds are that Wu’s mark is confusingly similar to Wang’s allegedly well-known, prior registered and prior used device trademark.

 

Wu claimed that he is the copyright owner of the device mark, namely, ‘a frog is laying her eggs’, and argued that he has been using the wording ‘青蛙下蛋 (meaning “frogs laying eggs”)’ since 1978 for the sales of tapioca rice balls. However, despite Wu’s argument, the IP court did not find sufficient evidence supporting his prior use of the trademark in dispute, ‘巫記青蛙下蛋’ (six Chinese characters as a whole), for the designated eatery and beverage store services.

 

Based on the identical business scope and competitive relationship between Wu and Wang, the IP court ruled in favour of Wang, and unusually relied on the ‘connotation’ of the marks in determining whether the device mark and the word mark would constitute similarity in the marketplace and in the mind of relevant consumers.

The IP court opined that the trademark at issue expresses a connotation of ‘Family WU’s frogs are laying eggs’, and this is confusingly similar to what one may interpret from Wang’s device mark, namely ‘a frog is laying her eggs’. While the word mark expresses a direct connotation, the device mark provides an implication of the same meaning, and both give consumers an impression relating to ‘frogs laying eggs’ and therefore the two marks should be deemed confusingly similar. Wu’s word mark was thereby revoked. 

 

As indicated above, it is unusual in practice for either the trademark authorities or the court to base a conclusion of similarity between two marks merely on their connotations.

 

Wang and Wu are related families and both are operating ‘frog eggs’ dessert businesses in the night market. Their shops are only 50 metres apart. Under the Trademark Act, a prior user can be exempted from the exclusive right of another identical or similar trademark registration, and can continue to use the mark on original goods or services. As such, Wu’s only resort is to claim prior use as a defence if Wang holds his trademark right against Wu’s continuous use of the mark in any subsequent criminal or civil actions.