經通國際智慧產權事務所

The Finnish Nokia Corporation relied on its famous trademark “NOKIA” and brought opposition proceedings against the trademark “nocria” under class 11 registered by the Japanese Fujitsu Co., Ltd. In this case, the Taiwan Intellectual Property Court rejected the decisions issued by the Taiwan Intellectual Property Office (TIPO) and the subsequent appeal by the Committee of Appeal of the Ministry of Economic Affairs according to the following points:

Although the pronunciations of these two marks are different, “NOKIA” and “nocria” both contain the alphabets “N”, “O”, “I”, and “A”.

The opposing trademark “NOKIA” has been used in different business channels, and it is possible for the general consumers to associate the brand image with relevant to air conditioning products.
 

Apart from the fact that the trademark “nocria” has successfully obtained registrations in Japan, Thailand, Australia, Swiss, Norway and Europe, the Taiwan IP Court still needs to rule the case independently upon its own examination standard of first-to-file principle which might differ from the jurisdictions in other foreign countries.
 

According to the evidences provided by both parties, it can only conclude that the general consumers started to learn about the mark “nocria” in June 2006 after its registration date of February 16, 2006 in Taiwan. On the other hand, none of the evidences can prove that both trademarks had been co-existed at the time as the mark “nucria” was first approved officially for registration.

As the aforementioned aspects, the Taiwan IP Court held that both marks “NOKIA” and “nocria” share similarities in their appearances, and also designate common goods in relation to air conditioning products. Further to the fact that there exist diverse markets of the famous mark “NOKIA”, the use of the mark “nocria” might confuse the general public in connection with the origins of the product and business relationships. Moreover, the supporting evidences cannot prove the co-existence of both marks in Taiwan for many years. As a result, according to the Trademark Acts, Article 23, (1) 13, the Taiwan Intellectual Property Court ruled a revocation against the trademark “nocria”.

Organized and translated by Jenny Yu

International Affairs