Grand Cosmos Resort lost the trademark battle to Spring City Resort

　Grand Cosmos Resort Ruisui, Hualien Co., Ltd. (hereinafter referred to as “Grand Cosmos Resort”) had successfully registered the mark, “瑞穗春天國際GRAND COSMOS SPA and device” as a trademark with the Taiwan IPO (hereinafter referred to as “Grand Cosmos Resort’s mark”).  Spring City Resort Co., Ltd. (hereinafter referred to as “Spring City Resort”) requested invalidation of the registration of Grand Cosmos Resort’s mark and the Taiwan IPO examined Spring City Resort’s request and had the registration invalidated accordingly.  Thus, Grand Cosmos Resort filed an administrative appeal but its administrative appeal was unsuccessful, and it further instituted an administrative action with the Intellectual Property and Commercial Court (the IPC Court) but received a judgment unfavorable to it.  Grand Cosmos Resort appealed this case to the Supreme Administrative Court, and the appeal was also dismissed.  

　According to the IPC Court judgment, both Grand Cosmos Resort’s mark and Spring City Resort’s mark contain the two Chinese characters “春天” (meaning “spring”).  In Grand Cosmos Resort’s mark, the constituents that make difference from Spring City Resort’s mark are simply descriptive and illustrative words and can hardly be regarded as a distinctive part for consumers’ recognition.  The constitutes are the two Chinese characters “瑞穗”, which refers to Ruisui Township of Hualien County and describes the location where services are provided, the other two Chinese characters “國際”, which generally mean that Grand Cosmos Resort is a multinational enterprise with international business, and also the word “spa”, which points out the type of business.  However, the major distinctive part of Grand Cosmos Resort’s mark is the two Chinese characters, “春天”, which is identical to Spring City Resort’s mark.  With the two Chinese characters “春天” in it, Grand Cosmos Resort’s mark as a whole would cause the impression, concept, and pronunciation similar to Spring City Resort’s mark.  Moreover, if Grand Cosmos Resort’s mark is used for the goods or services identical or similar to the designated goods or services of Spring City Resort’s mark, Grand Cosmos Resort’s mark may still cause the consumers who possess general knowledge and experiences and exercise ordinary extent of attention at the time of purchase to mistakenly see the goods or services under Grand Cosmos Resort’s mark as those from the same source with the goods or services provided under Spring City Resort’s mark or relating to Spring City Resort’s mark.  In view of the foregoing, Grand Cosmos Resort’s mark and Spring City Resort’s mark should be considered similar to each other.  

　Besides, the designated services of Grand Cosmos Resort’s mark and Spring City Resort’s mark both satisfy the identical or similar needs of consumers; that is to say, the designated services of the two marks are identical or highly similar to each other.  In addition, even though the two Chinese characters, “春天”, in Spring City Resort’s mark are commonly-seen in Chinese language, the two Chinese characters are not directly relating to the designated services of beauty, hair, spa, and massage represented by Spring City Resort’s mark, and is sufficient enough to make consumers recognize the two Chinese characters, “春天”, as a symbol that signifies and represents the source of services and differentiates the services when it is used in Spring City Resort’s mark.  Therefore, Spring City Resort’s mark possesses distinctiveness.  

　Established since 1975, Spring City Resort has been engaged in the business of hotel, restaurant, and bathhouse services, for which businesses Spring City Resort has been successfully registered trademarks in Chinese, including “春天” and “春天酒店” etc. and designated these trademarks for use in the services of restaurant, hotels, cosmetology and hairdressing, sauna, and massage since 1997.  Compared to Grand Cosmos Resort’s registration application for Grand Cosmos Resort’s mark on July 17, 2014, Spring City Resort had already used Spring City Resort’s mark for its services of restaurant, accommodation, and hot spring bathing pool.  Spring City Resort’s two Chinese characters mark, “春天” becomes well known to people after Spring City Resort’s business operation in Beitou, Taipei City.  As compared to Spring City Resort’s “春天” mark, the geographical name of “瑞穗” of Grand Cosmos Resort’s mark is followed by the two Chinese characters “春天”, and such a combination may cause relevant consumers to mistakenly believe that the two marks represent the same or related sources, and thus, is likely to cause confusion.  

　The Supreme Administrative Court held that the IPC court did not err in its judgment and thus dismissed Grand Cosmos Resort’s appeal.  (Released 2022.09.16)  

/CCS