Who's the Boss?

The Supreme Administrative Court’s judgment revealed that the protection for a well-known trademark should be decided circumspectly, considering the intertwining factors of the degree to which the trademark was well-known and the likelihood of confusion.

The trademark ‘BabyBoss and device’ was granted to a local company, Baby Boss City Limited, under class 30 of the Classifications of Goods and Services, on January 1, 2008. But the trademark was later revoked after an invalidation request by German luxury goods company Hugo Boss. The invalidation at the TIPO succeeded because the BabyBoss mark was deemed too similar to the well-known trademark ‘Boss’, and therefore was likely to cause confusion to the relevant public. The local company appealed through the administrative procedures and the IP Court revoked the invalidation decision. Hugo Boss then appealed to the Supreme Administrative Court.

In the IP Court, the BabyBoss trademark was not considered too similar to the opposing mark ‘Boss’ after the two’s appearances were compared. The BabyBoss trademark is composed of two capital B characters facing each other in the centre, surrounded by three cartoon characters of different occupations (a painter, a chef and a firefighter) and a smaller text comprising ‘BabyBoss’ in the bottom. The dominant portion of the opposing trademark ‘Boss’ or ‘Boss Hugo Boss’ is merely the plain word ‘Boss’.

The degree of similarity between the two trademarks was therefore deemed relatively low by the IP Court, even though some previous court decisions have found the BabyBoss mark similar to the same opposing mark in classes 14, 18, 25, and 35. Furthermore, since the designated classification of goods is food, which is far different from products of the ‘Boss’ trademark, there was deemed to be no likelihood of confusion and so the IP Court believed that the BabyBoss mark did not have to be revoked.

"the interpretation of the scope of trademark protection often depends on the necessity of preventing unfair competition."

The Supreme Administrative Court opined that the protection of a well-known trademark provided by the Trademark Act is much more extensive than a regular trademark. In the present case, it was necessary to first determine whether the opposing trademark met that well-known standard. Second, the likelihood of the relevant public being confused was examined, while the interaction between the following factors in the examination guidelines on likelihood of confusion was considered:

• The level of distinctiveness of the two trademarks;

• Whether the two trademarks are similar and the extent of their similarity;

• Whether the goods and services of the two trademarks are similar and the   extent of their similarity;

• Whether the existing right holder had diversified its operations;

• Circumstances of actual confusion; and

• The extent to which relevant consumers are familiar with the trademarks concerned.

More importantly, the Supreme Administrative Court further opined that the essence of trademark protection is to prevent unfair competition in commercial activities. Therefore, the interpretation of the scope of trademark protection often depends on the necessity of preventing unfair competition. This means the scope of protection is not necessarily limited to the registered classifications of goods and services, especially for a well-known trademark.

In the present case, the Supreme Administrative Court overruled the IP Court’s decision for the following reasons:

• The IP Court’s determination that the similarity of the two marks was low was not properly based on precedential judgments;

• The court did not determine whether the opposing trademark was well-known; and

• The court erred by not judging the evidence that the ‘Boss’ trademark has diversified, extending to the relevant fields of food and drink such as juice, coffee, bread, desserts and teas

Therefore, said the Supreme Administrative Court, the ruling should be revoked for re-investigation. While it is difficult to determine the boundaries of the protection of a well-known trademark, the Supreme Administrative Court’s decision reinforces the operations of the examination on the protection of well-known trademarks.

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

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