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MULTIPLE FACTORS SHOULD BE CONSIDERED FOR LIKELIHOOD OF TRADEMARK CONFUSION
Point 4 of the Intellectual Property Office's Guidelines for Examination of Likelihood of Confusion between Marks provides that when making a judgment as to whether there is a likelihood of confusion between two trademarks, examiners should consider the following factors: the strength of the marks' distinctiveness; the degree of similarity between the marks; the degree of similarity between the respective goods or services; the degree of diversity of the senior rights holder's operations; whether confusion has actually occurred; relevant consumers' degree of familiarity with both marks; whether the applicant for registration of the disputed mark is acting in good faith; and other factors relevant to likelihood of confusion.
However, there have still been disputes in practice as to whether, when considering a specific case, examiners must make an overall judgment taking all the above factors into consideration, or whether they may make a determination based on one or more individual factors. In a 2007 judgment, the Supreme Administrative Court held that an overall judgment must be made, taking all the factors together.
In the case before the court, regarding a trademark invalidation action, both the first-instance court judgment and the preceding administrative appeal decision had found that there was a likelihood of confusion, and on this basis had overturned the Intellectual Property Office's original decision to reject the invalidation action. But both the above findings had been based solely on consideration of the factor of degree of similarity between the marks.
The Supreme Administrative Court held that both finings had failed to consider the other relevant factors in making their determinations. Accordingly it set aside the first-instance judgment and the administrative appeal decision, and ordered the Ministry of Economic Affairs, as the administrative appellate agency, to reconsider the case.
In the same case concerning the degree of similarity between marks, the Supreme Administrative Court elucidated the provisions of Point 5.2.5 of the Guidelines. The Court stressed that if two marks are similar in terms of only one of the three factors of appearance, concept, or pronunciation, it cannot be inferred on this basis that the overall impressions of the marks are automatically similar. Instead, the judgment as to similarity should be based on whether the degree of similarity between the marks is so great as to be likely to cause confusion among consumers of the goods or services concerned. This opinion overturns the longstanding view in practice that trademarks can be deemed to be similar if they are similar in terms of any one of their appearance, concept, or pronunciation.