經通國際智慧產權事務所

On January 30, 2008, the Supreme Administrative Court confirmed the decision issued by the Taiwan Intellectual Property Office (TIPO) to reject the trademark opposition filed by the famous Kentucky Fried Chicken International Holdings, Inc. (KFC) against the trademark application bearing “DFC (in script font)” (Case 97R/No. 972, January 30, 2008).

Based the reason of causing confusion of recognition among average consumers, KFC filed a trademark opposition against the trademark application bearing “DFC (in script font)” with the designated goods including fried chickens with the TIPO on October 30, 2003. Reasoning that the opposed trademark was not similar to the famous trademark “KFC” registered by KFC, the TIPO rejected the said opposition. The TIPO further explained that as set forth in the Article 5.2.6.5 of Examination Standards for Confusion of Recognition for a trademark in foreign orthographic languages (including English, French, Germany, etc.) because the first letter of a trademark has significant influences on the appearance and pronunciation of the said trademark in foreign language, when comparing for similarity, more weighing should be provided to the first letters of the trademarks being compared. As the letters “D” and “K” have completely different appearances and pronunciations, the similarity between “DFC (in script font)” and “KFC” could not be established.

After the subsequent appeal and administrative lawsuit filed by KFC were rejected by the Committee of Appeal of the Ministry of Economic Affairs and the Taipei High Administrative Court respectively. KFC further appealed the said opposition to the Supreme Administrative Court with the following arguments.

1. As two out of the three letters contained in the trademarks “DFC (in script font)” and “KFC” are the same with identical order of listing, the two said trademarks should be similar.
2. The trademarks “DFC (in script font)” and “KFC” were used on identical/similar goods distributed through the same channels of fast food restaurants.
3. Being the world’s largest fried chicken chain restaurants, KFC was established in 1952 and has been in Business in Taiwan since 1985. With 127 restaurants in Taiwan and trademark registrations in more than 100 countries, “KFC” was certainly a famous trademark.
4. As “DFC (in script font)” and “KFC” contained only one different letter, it was obvious that the opposed party aimed to create the consumers’ confusion of recognition and utilize KFC’s goodwill.
5. The opposed party’s intention of utilizing KFC’s goodwill could be demonstrated through the issuance of advertisements containing famous product names used by KFC and the attempts of registering trademarks similar to the famous trademark owned by Pizza Hut International, LLC.

However, the Court affirmed that the TIPO correctly applied the applicable laws and regulations to provide the following arguments,

1. The font and first letters of “DFC (in script font)” and “KFC” are different. Thus, the average consumers were able to differentiate the two said trademarks at the point of purchase.
2. According to the submitted evidence, “DFC (in script font)” is the abbreviation of “Daintily Fried Chicken”, whereas “KFC” is the abbreviation of “Kentucky Fried Chicken”. Thus, the meanings of the two said trademarks are different.
3. As various domestic and foreign companies already registered trademarks including “OFC”, “GFC” and “CFC” with the designated goods/services for fried chicken and restaurants, it was unlikely that the two letters of “FC” contained in the opposed trademark would lead to the consumers’ confusion of recognition.
4. Because the opponent’s trademark “KFC” was famous and widely recognized by the consumers, average consumers would be able to differentiate “DFC (in script font)” and “KFC”.
5. The content of the advertisements issued by the opposed party was unrelated to the disputed trademark opposition and could not serve as evidence to support KFC’s arguments.

Based on the reasons above, the Court provided the ruling of rejecting the appeal filed by KFC.

Organized and translated by Jenny Yu

International Affairs