Well-known trademarks

01-05-2015

Crystal Chen and Iris Lin

Universal Cement Corporation (UCC), a publicly listed Taiwanese company, applied for the device trademark ‘UCC collection’, citing retail services for hardware and construction materials under class 35 of the classifications of goods and services. The trademark was granted in January 2011.

Japanese coffee company UCC Holdings owns a trademark for ‘UCC’, covering coffee, beverages, coffee-related products and coffee shops, as well as a variety of goods. The Taiwan Intellectual Property Office (TIPO) has recognised the mark as well-known in relation to coffee since 1996.

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UCC Holdings opposed the ‘UCC collection’ mark on the ground that it is too similar to its ‘UCC’ mark and therefore likely to confuse the relevant public or dilute the distinctiveness or reputation of the well-known mark. The opposition was rejected by TIPO because the level of fame ‘UCC’ had so far achieved did not reach a high enough level for the brand to be universally known by the general public.

This meant the protection for the Japanese company’s ‘UCC’ mark should not extend to excluding others from using a similar mark covering “retail services of hardware and construction materials”, services that are far different from coffee-related goods and services.

"A strong indication of a single origin of goods may gradually be weakened or detracted from due to similar use by any third party on entirely different goods or services."

UCC Holdings appealed. The IP Court acknowledged the fame of the ‘UCC’ mark in relation to coffee goods and services, and had no doubt that the mark is widely known to domestic consumers. But the court was also persuaded that ‘UCC’ is an abbreviation of the company name Universal Cement Corporation.

It added that the overall design of the disputed trademark is also distinctive and impressive. The court said that although the ‘UCC’ mark is registered for a variety of goods and services, all the submitted evidence of its use is directed towards coffee-related goods and services. It said that since there is no evidence proving that the company has multidimensional operations, the protection of the ‘UCC’ mark shall be limited.

In addition, said the court, the hardware and construction materials that the Taiwanese company’s trademark designates are not cheaper in value or of poor quality, so the use of that mark is not likely to lower the quality or reputation of the Japanese company’s ‘UCC’ mark.

A different view

The Supreme Administrative Court had a different view from the IP Court’s and in June 2014 it revoked the original decision and ordered TIPO to cancel the ‘UCC collection’ registration.

In addition to acknowledging the similarity of the two marks, the Supreme Court said:

The distinctiveness of a well-known trademark suggests that a well-known trademark being used on certain goods or services may initially enable people to associate the goods or services with a particular origin. Such a strong indication of a single origin of goods may gradually be weakened or detracted from due to similar use by any third party on entirely different goods or services.

Consequently, the trademark that has a strong indication of a single origin will possibly become an indicator of two or more origins. The trademark will then lose its unique impression or association with single origin in the minds of the general public.

Insofar as dilution is concerned, allowing the registration of a trademark at issue may damage the distinctiveness or reputation of the well-known trademark, even though the market segmentation is distinct between the designated goods or services of two trademarks, and the conflict of business interests is not so obvious that consumers may be confused in terms of their respective origins.

It appears that the Supreme Court believes that the level of fame of the Japanese company’s ‘UCC’ mark is high enough to exclude other similar marks from a different industry. 

Crystal Chen is a partner at Tsai, Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw 

Iris Lin is chief of contentious trademark matters at Tsai, Lee & Chen. She can be contacted at: trademark@tsailee.com.tw

trademark, TIPO, UCC,

WIPR