經通國際智慧產權事務所

Paramount International IP Holding Company, the biggest nuts supplier of the world, tried to register the trademark “WONDERFUL W/HEART” and was refused by the Intellectual Property Office (TIPO). Paramount filed an appeal against the decision, and the Intellectual Property Court (IP Court) finally ruled against the TIPO.

In 2009, Paramount filed a trademark application for “WONDERFUL W/HEART” with the designated goods of prepared nuts to TIPO. TIPO considered that Paramount’s mark was similar to the “WONDERFUL” mark of Furesong Foods Company, and it might cause the likelihood of confusion to the relevant consumers. As a result, Paramount’s application was rejected.

Paramount argued that the designated goods of Furesong’s “WONDERFUL” trademark were tea-based beverages, soy sauce, seeds, and etc., which were different from the prepared nuts. Moreover, the second letter “O” of Paramount’s mark “WONDERFUL W/HEART” was a heart-shape device which was specially designed. The novel design Paramount applied in the appearance of its mark was different from Furesong’s. Also, the validity of Furesong’s “WONDERFUL” trademark had expired on September 15, 2010, and it did not request for renewal by the end of this March. The “WONDERFUL” trademark should be extinguished according to the Trademark Act.

In conclusion, the IP Court judged that the refusal of Paramount’s trademark registration and the decision of appeal shall be withdrawn, and TIPO should allow Paramount’s trademark registration of “WONDERFUL W/HEART”. The decision was issued on June 23, 2011.

Organized and translated by Claire Wang

International Affairs