經通國際智慧產權事務所

The American comic books publisher “DC Comics”, which created the famous fictional hero “Superman”, found that the trademark of a Taiwanese gas station chain named “North-Star Petroleum Co., LTD.” (NSP) is similar/identical to its mark “S in shield” and filed a trademark opposition to the Taiwan Intellectual Property Office (TIPO). After receiving decisions of rejection from the TIPO and the Appeal Board, DC Comics then filed an administrative lawsuit to the Intellectual Property Court (IPC).

DC Comics alleged that the mark “S in shield” has been appearing in numerous movies and cartoons in Taiwan since 1979, and the mark has become emblematic of the story of Superman, who always fights for justice and protects the weak. Based on the fame that has been established among the general consumers in Taiwan, emblematic alleged that its mark is highly distinctive and should be granted better protection. Furthermore, emblematic pointed out the fact that the NSP’s trademark has a trait of “S in diamond” on the center of the five-pointed red star mark, which is highly analogous to its “S in shield” mark and may cause confusion to the relevant consumers.

NSP argued in response that apart from the “S in diamond” trait in its mark that might be considered similar to the opposing mark, the two marks are in fact dissimilar to each other when the opposed mark is compared as a whole. In other words, the marks shall be distinguishable to the relevant consumers based on their different designs. Therefore, it is unlikely that the relevant consumers will intermingle one with the another.

After examining the facts, the Intellectual Property Court (IPC) concluded that:

(1)The opposing mark has been established as a famous trademark as the evidences of trademark certificates, product catalogues, broadcast statistic data of the TV series “Superman”, market researches, etc. have shown that the mark has been widely recognized and familiarized by the general consumers in Taiwan.

(2)However, due to the facts that the designated goods/services of the marks are dissimilar (movies and toys versus gas station service), the distribution channels, target customers, scopes of business are different, there exists no likelihood of confusion to relevant consumers.

Based on the reasons above, the IPC dismissed DC Comics’ claims and ruled in favor of NSP on Aug. 12, 2010.

Organized and translated by Louie Lin

International Affairs