“007” was held a famous trademark by the Taiwan IP Court
The “007” series of movies have enjoyed worldwide recognition all over the world for many years. However, “007” and “
” were not given famous mark status in Taiwan when they were based upon to oppose registration of a local trademark comprising the same wording “007” and a similar pistol device in respect of timepieces in the year 2000. The Administrative Court then had the following findings:
1. The determination of a famous foreign mark should be based on the recognition of the mark by the local consumers.
2. Given that the relevant products branded with the “007” or “
” mark were not produced or marketed extensively in Taiwan, and that the evidence lodged to prove the fame of the said marks abroad was not sufficient, “007” or “
” could not be recognized as a famous mark. As such, to allow coexistence of the two parties’ marks would not engender consumer confusion especially when the sales channels for movies and timepieces were completely different.
A number of subsequent decisions by the Trademark Office and the Board of Appeals in connection with oppositions filed on the basis of the “007” or “
” mark reflected the Courts’ view. The authorities concurred that the fame of the “007” or “
” mark was limited to movies, video tapes and related products and could not be based upon to bar registration of the same or similar marks in respect of other goods or services.
It was not until December of 2009 that the long-held view was abandoned by the Intellectual Property Court (IP Court).
The IP Court acknowledged the famous mark status of "
” in its Decision rendered in an Opposition filed on the basis of “
” against a trademark comprising the same wording “007” and a similar pistol device registered in respect of timepieces, noting that the high repute of the mark in connection with movies and videotapes would help accumulate fame for “
” in other products or services in a much faster fashion. The IP Court found that the use of the opposer’s mark on timepieces abroad and locally was sufficient to prove that the mark had achieved wide local recognition in respect of not only movies and videotapes but also timepieces. Therefore, after taking into account the totality of factors in assessing likelihood of confusion, the IP Court ruled that to allow co-existence of the two parties’ marks would engender likelihood of confusion
The opposed mark owner has appealed the case to the Supreme Administrative Court. Whether the IP Court’s decision will be upheld or traversed may be worthy of interest.