萬國法律事務所

Seemoons (蓆夢思), a local bed and mattress manufacturer, initiated litigation in theTaiwan Administrative High Court to revoke the trademark registration for 席夢思 owned by Simmons Mattresses (Simmons), an American Company, on the basis of its earlier trademark registration for 蓆夢思. The Court recently rendered its decision and dismissed Seemoons’ case.

Seemoons alleged that its蓆夢思 trademark was registered in 1981, which was earlier than the 2004 registration date of Simmons’ 席夢思 mark. Seemoons also argued that its 蓆夢思 mark and Simmon’ 席夢思 mark have the same pronunciation, and that there is only a minor difference in the appearance of the first Chinese characters of the two trademarks (席vs. 蓆). Seemoons further claimed that consumers will be misled to believe that Simmons is an affiliation of Seemoons.

To rebut Seemoons’ claim, Simmons stated that it has used its 席夢思 trademark and advertised with the same since 1933 in China.

The Court held that even though Simmons changed the Chinese translation of its company name to 席蒙斯 in 1975 and applied for a new trademark registration, this did not affect the Court’s decision as to the prior use of 席夢思 by Simmons.  The Court stated that Seemoons failed to prove that its 蓆夢思 mark existed before Simmons’ 席夢思 mark and thus dismissed the Seemoons claim accordingly.