MITSUI FUDOSAN CO., LTD. (“Mitsui Fudosan”), one of the largest real estate service providers in Japan, filed trademark application “MGH Mitsui Garden Hotel” (the “opposed trademark”, see below) on March 8, 2016, designated for use in services including hotel, temporary accommodation, rental of conference and exhibition venues, and reservation of hotels. The opposed trademark was granted on May 16, 2019.
MITSUI JAPANESE RESTAURANT CO., LTD. (“Mitsui Restaurant”), a local restaurant that has been well-known for its finest Japanese cuisine, filed opposition against Mitsui Fudosan on June 11, 2019, contending that the opposed trademark would cause confusion with its well-known trademarks (the “opposing trademarks”, also see below)
1.
Distinctiveness/Similarity:
TIPO finds that although the opposed trademark and the opposing
trademarks all contain the same word “Mitsui”, such word is a common and
traditional name in Japanese, and has been widely used by other companies in
other business sectors, such as Mitsui Elevator, Mitsui Auto Materials, and
Mitsui Foods Inc. Accordingly, ordinary consumers will not use a single word “Mitsui”
to establish connection with specific goods or services.
Meanwhile, since the words that are used to combine with “Mitsui”,
such as “MGH”, and stylized characters “三井” (which means “Mitsui” in Chinese), are not related to the nature
or function of the designated services, the entirety of the opposed trademark
and the opposing trademarks all demonstrate certain degree of distinctiveness,
and are less likely to cause confusion among relevant consumers, even though
they share the word “Mitsui”.
While it is true that the opposed trademark and the opposing
trademarks all contain the word “Mitsui”, the initial word used in the opposed
trademark is “MGH”, and there are other words such as “Garden” and “Hotel”
presented. As such, it is inappropriate to single out and focus on “Mitsui”
only. Instead, we shall also take into consideration the differences of the overall
appearance, pronunciation, and perception between the opposed trademark and the
opposing trademarks. In view of the entirety, rather than the single word
“Mitsui”, TIPO views the opposed trademark is not similar with the opposing
trademarks.
2.
Similarity of services:
TIPO is aware that the opposed trademark and the opposing trademarks
are all applied for use in relevant accommodation services, such as hotel,
motel, cafeteria, etc., which may be considered similar with each other.
However, the opposed trademark is also applied for use in other less relevant
services, such as rental service for conference and exhibition venue. The nature
and function of these services are less relevant to those of hotel service,
which should be considered dissimilar.
3.
Whether Mitsui Fudosan’s
application was based on good faith:
Mitsui Restaurant began its service in 1992, and has gained
considerable reputation for its fine cuisine since then. However, TIPO also
notes that the first ”Mitsui Garden Hotel” （三井ガーデンホテル） was established by Mitsui
Fudosan in Japan in as early as 1986, and the popular hotel chain has been
widely reported and well known in Taiwan. In fact, both Mitsui Restaurant and
Mitsui Fudosan have been using “Mitsui” in combination with other words to
identify their services for a long period of time. Thus, the records support
the finding that the opposed trademark was not filed based on bad intent.
4.
The opposing trademarks are
famous, but only within the service of Japanese restaurant:
While the opposing trademarks have gained high degree of reputation
and may be viewed as well-known trademarks, the fame and reputation of the
opposing trademarks are limited to the service of Japanese restaurant. There is
no other record showing that Mitsui Restaurant’s trademarks have also become
famous in the area of accommodation service. It is less likely to create
misunderstanding or confusion should the opposed trademark be granted.
5. The opposed trademark would not
damage the distinctiveness or reputation of Mitsui Restaurant’s well-known
trademarks:
As articulated
above, the opposed trademark is not similar with the opposing trademarks, and
such low degree of similarity is not likely to cause confusion among the
relevant consumers. Besides, Mitsui Fudosan has been using “Mitsui Garden
Hotel” in its hotel chain since 1986, and such popular hotel chain has already
become well-known among Taiwan’s consumers due to its continuous marketing and
the popularity of Japan tourism. Plus, the opposed trademark should be filed
out of good faith. TIPO therefore finds the registration of the opposed
trademark will not dilute the distinctiveness or damage the reputation of the
opposing trademarks.
In view of the above, TIPO sided with
Mitsui Fudosan, and rejected Mitsui Restaurant’s opposition accordingly. Based
on the records, Mitsui Restaurant already appealed TIPO’s determination to the
Appeal Board. It is likely that whoever prevails before the Appeal Board,
the other side will take this case to Taiwan’s IP Court. Thus, the dispute
between the two successful companies will probably last for a while.
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