Spot the difference: when similar products aren't similar
Things change, much to our surprise. Similarity or relatedness of products is an important factor in finding likelihood of confusion of two trademarks. Some products are traditionally considered similar or dissimilar, but the courts may rule otherwise.
Decades ago, sponsoring of conventions would arguably be unrelated to movie studio services. However, a federal appellate court in California held otherwise in 1998. In that case, the plaintiff was in the business of sponsoring science fiction conventions using the ‘Dreamwerks’ mark. The defendant, a film studio established by Hollywood movie moguls such as Steven Spielberg, used the highly similar mark ‘DreamWorks SKG’.
The appellate court found that the services of the parties were related to the point where an infringement issue was raised (Dreamwerks Production Group, Inc v SKG Studio). Taiwan went the opposite way in a recent case.
In its 2011 Kito decision, the Intellectual Property Court (IP Court) held that shoes and clothing marketed by the parties were only slightly similar for the purposes of determining likelihood of confusion, in spite of the long-established practice that these items are generally similar. For that and other breakthrough holdings, the case becomes a leading case.
The plaintiff in the Kito case is Kito, a Thai company known in Asia for casual shoe and footwear items, such as sandals and slippers. Kito filed a Taiwanese trademark application in 2009 to register its mark (stylised ‘Kito’ and device, below left ), covering these shoe and footwear items.
The application was rejected by Taiwan’s Intellectual Property Office (IPO), on the grounds of likelihood of confusion with a prior mark ‘Kiton’ (word mark, below right), owned by Ciro Paone Spa, an Italian company. The ‘Kiton’ mark was registered for clothing items, in particular men’s business suits.
