Spot the difference: when similar products aren't similar


James Chao

Taiwan's IP Court has ruled that shoes and clothing cannot always be considered similar products for the purposes of trademarks, explains James Chao.

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.

Trademarks, similar products, IPO, Kito, Kiton