Newsletter
CLASSIFICATION NOT DECISIVE FOR SIMILARITY OF GOODS AND SERVICES
The Table of Classification of Goods and Ser-vices, drawn up by the Ministry of Economic Affairs as a schedule to the Enforcement Rules of the Trademark Act under the powers granted to the MOEA by Article 17 Paragraph 5 of the Act, and the Reference Data for Similarity Searches on Goods and Services, compiled by the Intellectual Property Office (IPO), have long been important references for determining whether goods or services are similar for the purposes of trademark registrations. However, although Article 17 Paragraph 6 of the Act ex-pressly provides that the determination of simi-larity between goods or services is not con-strained by the classification of goods and ser-vices laid down in the Enforcement Rules, in practice there have repeatedly been disagree-ments over whether the above documents are the only basis for determining similarity.
In a 2007 judgment, the Taipei High Adminis-trative Court reiterated the provisions of Article 17 Paragraph 6 of the Trademark Act, and stated that when determining whether goods or services are similar, it is necessary to make a judgment taking account of social conventions, market circumstances, and such factors as the raw ma-terials, uses, functionality, manufacturers, mar-keting channels and locations, and purchasers of the goods concerned. In the case before the court, although coffee percolators and coffee were listed in different classes of goods in the above Reference Data, the court determined after ap-plying the above criteria that they were similar goods.
On 16 July 2007, the IPO announced a table of correspondences between classes of retail ser-vices in specific goods and specific classes of goods, for the purposes of similarity searches. The announcement reiterates the provisions of Article 17 Paragraph 6 of the Trademark Act, and states that the classification of goods and services is for the convenience of administrative management and search, and the determination of whether goods or services are similar is not absolutely constrained by such classification. The announcement also stresses that if, based on general social conventions and market circum-stances, there is a likelihood that retail services for specific goods and such goods themselves may be mistakenly perceived as originating from the same source, or from distinct but related sources, then there is a relationship of similarity between such services and such goods, and the IPO will conduct cross-searches on that basis in contested cases.