Popular blue jeans fight over "Ghost Head" device trademark

published on 27 Aug 2013

The Formosa Blue Way Jean Co., which promoted jeans with the registered trademark "Ghost Head device" (hereinafter the cited mark), filed an opposition on the ground of trademark similarity against the registered device mark (hereinafter the trademark at issue) of BOBSON jeans. The Formosa Blue Way Jean Company alleged that starting from 1998 the company launched “ghost washed” (in Japanese, “Oniarai”)series blue jeans and branded it as “Ghost Head device.” In 2010, the BOBSON jeans company also launched a new jeans product with a ghost head device (the trademark at issue) and “BOBSON” word mark. The trademark at issue was originally owned by Japanese BOBSON Co., Ltd., and was later transferred to Japanese Peachfort Co., Ltd. in 2011.

During examination, TIPO held that the opposition of the Formosa Blue Way Jean Company should be accepted, and therefore that the trademark at issue should be revoked on the following grounds:

I.     The two trademarks possess a high degree of similarity. The subjective creative idea and the design concept of a trademark are beyond what consumers would perceive at first glance, and such a subjective creative idea and design concept are what form an objective basis in selection of a product by a consumer. Both marks create an impression in appearance and concept through use of a grim facial expression, a pointed nose, sharp teeth in an open mouth, and hair of flapping flames. Thus consumers having general knowledge and experience may be misled into believing that the products made by these two companies originate from the same source, or from different but related sources.

II.     The cited mark has acquired a high degree of distinctiveness. The higher the distinctiveness of a trademark, the stronger the impression of the goods or services left on consumers. Thus, any similarity to such a trademark having high distinctiveness may cause confusion to consumers.  In this instance, as a result of the substantial advertisement and promotion activities by the opposing party, the cited mark became familiar to consumers and had acquired a high degree of distinctiveness. Therefore, since the trademark at issue is similar to the cited mark, there exists a likelihood of confusion by consumers.

III.   Consumers are much more familiar with the cited mark of the Formosa Blue Way Jean Company. The "ghost washed (Oniarai) and pattern" series blue jeans was first used by the Formosa Blue Way Jean Company back in 1998. In 2006 and 2007, the Formosa Blue Way Jean Company promoted the ghost head mark in commercials with the theme of "regeneration of Oniarai.” The goods were sold in various major department stores across Taiwan, and frequently advertised and promoted on TV. In contrast, the advertisements, product catalogs, and other materials supporting the use of the trademark at issue are mainly use evidence of the trademark "BOBSON."

Dissatisfied with the decision, the Peachfort Co., Ltd. appealed but the appeal was dismissed. The Peachfort Co., Ltd. subsequently lodged an administrative litigation at the IP Court. After adjudication, the IP Court found in favor of TIPO's decision, and ruled against the Japanese Peachfort Co., Ltd. The verdict was made final after the Supreme Administrative Court's dismissal of the company’s further appeal.

For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw