It sounds the same

Facton Limited (“Opposer”) is the owner of the G-STAR trademark in Class 25 for clothing. In Facton Limited v. Zhenjiang Wang, 12 January 2017 (IPC No. 14-2015-00003) the Opposer filed an Opposition to the registration of the E-STAR mark by Zhenjiang Wang (“Respondent-Applicant”) in Class 25 for clothing. The competing marks are provided below:

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The Adjudication Officer held that confusion is likely because of the close resemblance between the marks as the Respondent-Applicant adopted the dominant feature of Opposer’s G-STAR trademark. Thus, it is of no moment that the word STAR is preceded by a different letter, or that Respondent-Applicant’s mark is written in lower case letters while Opposer’s mark is written in upper case letters.

The Adjudication Officer also pointed out that competing marks sound similar. As held by the Supreme Court, similarity of sound is sufficient ground to rule that the competing marks are confusingly similar. Moreover, the Adjudication Officer ruled that:

Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer’s trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. When Respondent-Applicant’s mark is pronounced, the sound of Opposer’s G-STAR mark is practically replicated. Similarity of sound is sufficient ground to rule that two marks are confusingly similar when applied to merchandise of same descriptive properties.

Question: What is the dominant feature of Opposer’s G-STAR trademark?

A registered trademark is a defense against trademark infringement

James A. Magtalas, doing business under the firm name Amm Yang Chow Food (“Complainant”) is the registered owner of the AMM YANG CHOW FOOD EXPRESS AND LOGO trademark that was registered on 18 March 2010 in Class 43. HTK Food Specialist, Inc. (“Respondent”), on the other hand, is the registered own of the YANG CHOW DIMSUM & TEAHOUSE & DESIGN trademark that was registered on 8 September 2011 in Class 43.

In Magtalas v. HTK Food Specialist, Inc., 18 January 2017 (IPV No. 10-2011-00017), Complainant filed a trademark infringement case against the Respondent. The competing marks are provided below:

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The Bureau of Legal Affairs (“BLA”) held that the marks are not confusingly similar. While both trademarks contain the term YANG CHOW, said term is generic as it refers to a popular Chinese-style wok fried rice dish. In addition, the BLA held that “[e]ven the font style or how the Yang Chow is printed and stylized by the parties in their marks is standard or the Chinese way of printing the word/s YANG CHOW”. Thus, no one can claim exclusive right over the generic term and common font used. Moreover, both the Complainant and Respondent disclaimed the term YANG CHOW in their trademark applications.

Hence, what is left for comparison is the combination of words and the logo used. The BLA held that the competing marks “vary substantially in the composition and integration of the other main and essential features, in the general design and their overall appearance”. Therefore, ordinary consumers would not be drawn to the minute similarities. Rather, they would focus on the glaring dissimilarities between the competing marks that would easily distinguish one from the other.

Furthermore, Respondent’s trademark is registered. Thus, it cannot be guilty of trademark infringement.

Questions and Comment

  • There’s a standard Chinese way of printing the word YANG CHOW?
  • Can generic marks be registered?
  • This is why it is not advisable to use a generic or descriptive term as the dominant feature of the mark.