經通國際智慧產權事務所

The Indian TATA Group relied on its internationally famous trademark “TATA” and brought cancellation proceedings against TA TA Office Products, Inc., a Taiwanese company that has been successfully obtained the trademark registration “TATA & Device with Chinese Characters” in class 16.

The Court concluded the following points: 

1. Both parties’ trademarks should be considered similar since they contain the word “TATA”. Nevertheless, the trademark of the opposed party includes the device of an archway and a man figure, and that results in a decrease of similarities between both marks.
2. The evidences provided by the opposing party can prove that the mark “TATA” is distinctive of their company reputations internationally. On the contrary, the evidences of the opposed party can prove their trademark famous among consumers and corporations in the relevant business field in Taiwan even before their filing date of the trademark application “TATA & Device with Chinese Characters” on March 10, 2006.
3. Apart from the business involving information services for software, the opposing party cannot prove that the general consumers in Taiwan are aware of the existence of the their trademark for publications and provide with such evidences.
4. Although the opposing party has obtained their foreign trademark registrations in class 16, they cannot further demonstrate the actual use of the mark. Moreover, there are no apparent business competitions between both parties since their products/services are diverse in relation to business chancels, locations, consumers, etc.
5. The third party “Tran Na Office Apparatus Co. Ltd” obtained the Taiwanese trademark registration “TATA & Chinese Characters” since the year of 1987 and afterward assigned the rights to the opposed party “TA TA Office Products, Inc” in the year of 2002. Further to the fact that both marks have been coexisted for a long time, it will not cause confusions to the general consumers regarding these marks and their sources.
6. There are several different prior trademark registrations bearing the English/Chinese letters “TATA” filed by others in different classes in Taiwan since 1974. Thus, a word trademark “TATA” cannot deem distinctive in Taiwan.

Accordingly, the Taiwan IP Court held that the existences of both marks “TATA & Device with Chinese Characters” and “TATA” are distinctive from each other and not likely to cause confusions to the general consumers with differences in trademark design, designated goods/services, business field, and sales connections. Moreover, the opposing trademark “TATA” and its international reputations are not yet well known among the Taiwanese consumers.

Organized and translated by Jenny Yu

International Affairs