Starbucks successful in invalidation action against trademark “星爸爸 Starpapa”

On November 28, 2024, Taiwan’s IP Office (“TIPO”) ruled in favor of global coffee giant, Starbucks Corporation (“Starbucks”), finding the disputed trademark “星爸爸Starpapa” may cause confusion with Starbucks’ well-known “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” trademarks (see below).

 

The application of the disputed trademark, “星爸爸Starpapa” (no. 02289875, see below), was filed on June 6, 2022, and granted on April 1, 2023, designated for use in goods under class 30 (e.g., tea drinks, tea bag, coffee, coffee beans, bread, rice, instant noodles, etc.), and services under class 43 (e.g., restaurant, hotel, etc.). Starbucks filed invalidation action with the TIPO on May 13, 2024, citing, among the others, violations of Article 30.1.11 of Trademark Act.

TIPO ruled in Starbucks’ favor on November 28, 2024:

1.      Given that the registration of the contested trademark was published on April 1, 2023, Starbucks could not challenge the registration by opposition, which must be filed within 3 months after the contested trademark’s publication. As such, Starbucks filed invalidation action per Article 59 of Trademark Act, which provides that an interested party may file invalidation with the Registrar Office on the grounds that such registration falls under Article 29, Article 30, or Article 65.

2.      Per Article 30.1.11 of Trademark Act, a trademark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

3.      Here, based on the voluminous evidence submitted by Starbucks, including its worldwide trademark registrations, webpages, international awards, records of Starbucks’ 20 years of marketing in Taiwan, including the development of 500 local coffee shops, and TIPO’s prior determination, TIPO concluded that on the filing date of the contested trademark, “STARBUCKS”, “STARBUCKS COFFEE”, and “星巴克” have already become well-known among the relevant consumers in the field of coffee industry.

4.      As to similarity, TIPO agreed with Starbucks that the contested trademark is similar to the Starbucks’ aforesaid well-known trademarks. On the one hand, “Starpapa” and “STARBUCKS” both share the same initial letters “star”, followed by letters with similar pronunciation (“papa” v.s “bucks”). On the other hand, “星爸爸” and Starbucks’ “星巴克” both start with the same Chinese character “星” (which means “star” in English), followed by characters with similar pronunciation (“爸爸” v.s. “巴克”). Thus, TIPO concluded that “星爸爸Starpapa” verbally and visually similar to Starbucks’ above cited famous trademarks.

5.      Further, TIPO noted that Taiwan’s consumers are more familiar with Starbucks’ trademarks, and that the products and services covered by “星爸爸Starpapa” are related to or associated with those designated by Starbucks’ trademarks. In deed, both are related to drink or food services that fulfill similar purposes for the consumers.

6.      In view of the above, considering the well-known status of Starbucks’ well-known trademarks, the similarity between “星巴克”, “STARBUCKS”, and “星爸爸Starpapa”, the profound recognition of Starbucks’ trademarks, and the overlap of the designated products and services, TIPO determined that the contested trademark shall be invalidated for likelihood of confusion with Starbucks’ well-known trademarks.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4WFZ4SDNvWVJlYlphWmJDaHd1Y2p6UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Under Armour prevailed in opposition for its “UA” logo before Taiwan’s IP Office

On December 10, 2024, sportwear brand Under Armour Inc. (“Under Armour”) successfully convinced Taiwan’s IP Office (“TIPO”) that trademark no. 02354614 shall be canceled due to being confusingly similar to Under Armour’s famous “UA” logos (no. 01070778, 01429810, 01510157, and 01520380, see below).

The contested trademark, no. 02354614 (see below), was filed on May 29, 2023, and granted on February 1, 2024, designated for use in goods under class 25, including jackets, pants, shirts, underwear, T-shirt, socks, suits, belts, sportwear, etc. Under Armour filed opposition on April 30, 2024, alleging violation of Articles 30.1.10 and 30.1.11 of Trademark Act.

TIPO ruled in Under Armour’s favor on December 10, 2024, based on Article 30.1.10:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is being “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.”

2.      On similarity, TIPO found the contested trademark featured stylized character consisting of two intersecting U-form letters pointing to the opposite direction. And, like Under Armour’s “UA” logos, the contested trademark would form a visual impression that resembles letter “X” or “H”. As such, TIPO considered the contested trademark visually and conceptually similar to Under Armour’s “UA” logos.

3.      As to similarity of the designated goods, TIPO noted that both the contested trademark and Under Armour’s “UA” logos cover clothing and apparel products, which serve similar functions and overlap in terms of their customers, sales channels, or usage.

4.      As to consumer’s familiarity, TIPO found this factor tilted to Under Armour’s favor, given that Under Armour has submitted sufficient evidence of trademark use in support of the market recognition of its “UA” logos, including catalogues, webpages, sales records, etc. In contrast, there was no evidence submitted to support the use of the contested trademark.

5.      In light of the above, considering the similarity between the contested trademark and Under Armour’s “UA” logos, the overlap of the designated products, the facts that “UA” logos are distinctive and consumers are more familiar with Under Armour’s brand, TIPO determined that the registration of the contested trademark may cause confusion among the relevant consumers. The contested trademark was therefore canceled by TIPO accordingly.

 

Source:  https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a1BsSkpGeEpqU1NmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Cartier lost its opposition against trademark “EPRVE”

CARTIER INTERNATIONAL AG (“Cartier”) lost in trademark opposition against CVIMALL INTERNATIONAL CORPORATION (“CVIMALL”), unable to persuade Taiwan’s IP Office (“TIPO”) that there exists likelihood of confusion between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks.

CVIMALL’s trademark, “EPVRE” (no. 02227225, see below), was filed on August 5, 2021, and granted on June 16, 2022, designated for use in products in class 3, including shampoo, conditioner, lotion, facial mask, facial cleanser, and skin care products. Cartier filed opposition on September 14, 2022, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

According to Cartier, the asserted trademark, “LES ÉPURES DE PARFUM” (no. 02049323, see below), was the brand of perfume Cartier introduced in 2020. Due to the success of the product, the brand “LES ÉPURES DE PARFUM” has become famous among relevant consumers. Given that “LES” and “DE” are definite articles and preposition in French, and that “PARFUM” means “perfume” in French, Cartier argued that the most distinctive and dominant element in Cartier’s asserted trademark should be “ÉPURES”. In this light, CVIMALL’s “EPVRE” is similar and may cause confusion among the relevant consumers.

On November 22, 2024, TIPO ruled in CVIMALL’s favor, finding that:

1.    The similarity between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” is low. TIPO did not consider that ordinary consumers would, as Cartier argued, necessarily consider “ÉPURES” the dominant portion, because French is not a language that Taiwan’s consumers are familiar with. Besides, CVIMALL’s trademark “EPVRE” has no ordinary meaning, and only constitutes one word. In this light, ordinary consumers are likely to recognize that there are visual, verbal, and conceptual differences between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks.

2.    Although TIPO recognized that both Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” covered similar product category, TIPO found evidence submitted by both parties could not show which trademark is more famous or recognizable among the relevant consumers. On the side of Cartier, TIPO found some of the evidence either lacked critical date or missed Cartier’s “LES ÉPURES DE PARFUM”, which was insufficient to support a finding of well-known status. On the side of CVIMALL, TIPO found it has submitted evidence showing its actual use of “EPVRE” on its skin care products, including webpages on Yahoo, PChome, Shopee, Instagram, YouTube, and CVIMALL’s official websites. As such, TIPO concluded that both trademarks have been used on the relevant products, and there is no clear evidence indicating Cartier’s “LES ÉPURES DE PARFUM” is more distinctive or popular among the relevant consumers.

3.    Lastly, TIPO noted there was no evidence of actual confusion submitted by the parties.

In view of the above, given the low degree of similarity, the lack of evidence proving Cartier’s “LES ÉPURES DE PARFUM” well-known status, the facts that CVIMALL’s trademark is distinctive, and that there is no evidence showing actual confusion, TIPO determined that there should be no likelihood of confusion between Cartier’s “LES ÉPURES DE PARFUM” and CVIMALL’s “EPVRE” trademarks. Cartier’s opposition was denied by the TIPO accordingly.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ZW9UeVREMEh6U014VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Chanel wins opposition for its iconic “COCO” trademark

On November 22, 2024, Taiwan’s IP Office (“TIPO”) canceled a device trademark that was found too similar to Chanel’s renowned “COCO” trademarks (No. 00102776, 00438289, and 01781763, see below).

 

The contested trademark (no. 02346785, see below), was a monogram design created by COCODOR TAIWAN CO., LTD (“Cocodor”). Cocodor’s application was filed on June 16, 2023, and granted on January 1, 2024, covering products in Class 3, including perfumes, essential oils, lotions, fragrances, hand creams, skin care products, shampoo, conditioner, shower gel, etc. Chanel filed opposition on April 1, 2024, alleging violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

TIPO ruled in Chanel’s favor on November 22, 2024 based on 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is: 1) being identical with or similar to another person’s registered trademark or earlier filed trademark; 2) to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated; and 3) hence there exists a likelihood of confusion on relevant consumers.

2.    Here, TIPO observed that the Cocodor’s trademark featured a 3X3 matrix of the capital letters “C” and “O”, which are the same letters that form Chanel’s “COCO” trademark. Although the contested trademark forms the visual impression of a monogram, TIPO considered that monogram designs are quite common in the fashion industry. As such, ordinary consumers may still perceive visual and conceptual similarity between the two trademarks.

3.    As to the nature and similarity of the designated products, TIPO noted that both Cocodor’s and Chanel’s trademarks cover products that pertain to personal beauty, hygiene, and fragrance, which are similar to each other. Ordinary consumers tend to find that these products serve comparable functions or purposes, or are distributed through overlapping sales channels.

4.    Turning to distinctiveness and consumers’ familiarity, TIPO found Chanel’s evidence, including records of trademark registration, advertising materials, and favorable rulings by TIPO and Taiwanese court, sufficient to prove that “COCO” as a trademark has been well recognized by Taiwan’s consumers based on Chanel’s continuous marketing and use. To the contrary, Cocodor did not submit concrete evidence to show its use of the contested trademark. The lack of supporting evidence from Cocodor strengthened TIPO’s findings in Chanel’s favor.

5.    In view of the similarity between the contested trademark and Chanel’s “COCO”, the overlap of designated products, and the facts that Chanel’s “COCO” is highly distinctive and more recognizable among the consumers, TIPO concluded that registration of the contested trademark may raise confusion with Chanel’s “COCO” trademark among the relevant consumers. Hence, the registration of Cocodor’s trademark was canceled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MFY0a2lyMmZhUTczS2E5eWlFRUU5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Monster Energy’s trademark opposition for its M claw design fell short

On August 29, 2023, Monster Energy Company (“MEC”) filed trademark opposition against trademark No. 02299405 (the ‘405 trademark), contending that ‘405 trademark should be canceled because of the similarity with MEC’s iconic M claw design trademark (No. 01713839, see below).

 

The contested trademark, i.e., ‘405 trademark (see below), was filed by Yi-Shen International Corp. (“Yi-Shen”) on August 19, 2022, and granted on June 1, 2023, designated for use in services under Class 43, including restaurant, foods, and beverages services. MEC’s opposition is mainly based on Articles 30.1.10 and 30.1.11 of Trademark Act.

 

On November 8, 2024, Taiwan’s IP Office (“TIPO”) ruled in Yi-Shen’s favor, reasoning that:

1.      The Trademark Act provides that a mark shall not be registered if such a mark is “being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumer” (Article 30.1.10), or “being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark” (Article 30.1.11).

2.      The ‘405 trademark consisted of Chinese characters “川常獨要” and three flaming red stripes. Although MEC’s M claw trademark also features three irregular stripes, the visual appearance is similar to the letter “M”, which is visually different from the ‘405 trademark. As such, the similarity between MEC’s M claw design and Yi-Shen’s ‘405 trademark is low.

3.      The designated products of MEC’s M claw trademark cover various kinds of drinks and beverages, like tea, milk, and alcohol. These products may be sold and supplied via the services designated by Yi-Shen’s ‘405 trademark. Thus, the products covered by MEC’s trademark is associated with or related to the services covered by Yi-Shen’s ‘405 trademark.

4.      Further, Yi-Shen’s ‘405 trademark possesses sufficient distinctiveness, which could be recognized by the consumers and distinguishable from MEC’s M claw trademark.

5.      Although MEC contented that its M claw trademark is famous and may be diluted by the registration of Yi-Shen’s ‘405 trademark, the evidence submitted by MEC was unable to back the alleged well-known status. TIPO found the sales records and news reports provided by MEC, such as marketing materials and invoices, insufficient to show the market share of the branded products, and fail to demonstrate the M claw trademark is actually perceived and well-regarded among the relevant consumers.

6.      In view of the above, given the lack of similarity, the lack of evidence showing the well-known status of the M claw trademark, and the lack of actual confusion or harm to MEC’s reputation, TIPO found the registration of Yi-Shen’s ‘405 trademark does not violate Article 30.1.10 and 30.1.11 Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4OTdldlYvYVl5S3VmVnJzY0V2MHFnZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Tory Burch prevailed in trademark opposition for its iconic “TT” logo

River Light V, L.P. (“River Light”), the trademark registrant of “Tory Burch” in Taiwan, successfully persuaded Taiwan’s IP Office (“TIPO”) to cancel a device trademark that is too similar to its iconic “TT” logo (See below).

 

The contested trademark, no. 02285492 (see below), was filed by Sachia Nail Ltd. (“Sachia”) on August 10, 2022, and granted on March 16, 2023, covering products under class 3, such as mouthwash, air fragrance, bath soap for pet, etc. River Light filed opposition on June 16, 2023, citing violation of Article 30.1.11 of Trademark Act.

On October 30, 2024, TIPO ruled for River Light, finding Sachia’s device trademark violates Article 30.1.11 of Trademark Act:

1.      Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is “being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark”.

2.      With regard to the well-known status of River Light’s “TT” icon, TIPO noted that based on records of trademark use, since as early as 2004, River Light has been using the “TT” design on its products, including handbags, apparels, and shoes. Through the continuous use of such logo, TIPO confirmed that the “TT” logo has already become well-known among the relevant consumers when Sachia filed application for the contested trademark.

3.      As to similarity, both trademarks featured two letters of “T” embedded in a circle. Although the colors of the letters and the direction at which the letters pointed in the contested trademark were arranged differently, TIPO considered such variations minor, and insufficient to make the contested trademark distinguishable from River Light’s above famous trademark.

4.      Further, due to River Light’s profound use of trademark, TIPO found the cited “TT” trademark has gained strong recognizability, and is highly distinctive among the relevant consumers. Besides, River Light has been cooperating with other brands like Shiseido in providing new products like sun screen lotion and perfume. These products are related to personal hygiene, deodorizing, and cleaning, which are similar to the products designated by Sachia’s contested trademark.

5.      In view of the above, given that River Light’s “TT” trademark has been well-known, that the contested trademark is highly similar with River Light’s famous trademark, that the “TT” trademark is highly distinctive and applied to products that are related to those designated by the contested trademark, TIPO concluded that the registration of the contested trademark may cause confusion with River Light’s cited trademark.

 

As such, the registration of Sachia’s contested trademark is canceled based on Article 30.1.11 of Trademark Act.

 

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Z3dvTXRJZ2VLRlZBYjJBY3RCQjRyQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Fragrance brand Jo Malone secured a win in trademark opposition against “JOMAL”

On November 1, 2024, Taiwan’s IP Office (“TIPO”) ruled in the favor of prestigious fragrance brand Jo Malone, finding the contested trademark “JOMAL” should be canceled due to likelihood of confusion with Jo Malone’s iconic “Jo Malone” trademarks (Nos. 00915303, 00130444, 00153065, and 00153153; see below).

The contested trademark, “JOMAL” (No. 02252416; see below), was filed by Marian Biotechnology Co. Ltd. (“Marian”) on March 30, 2022, and granted on October 1, 2022, designated for use in goods in Class 3, including variety of cosmetics, body lotion, facial mask, eye cream, moisturizing lotion, skin care cream, body deodorant, cleansing lotion, etc. Jo Malone filed an opposition on December 29, 2022, citing violations of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On November 1, 2024, TIPO ruled in Jo Malone’s favor based on Article 30.1.10 of Trademark Act:

1.    Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is “being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.”

2.    Between the contested trademark “JOMAL” and the cited “Jo Malone” trademarks, TIPO found there exists medium degree of similarity. Specifically, both trademarks consist of the same characters “J”, “O”, “M”, “A”, and “L” and start with the same letters “JO”. TIPO opined that ordinary consumers would find Marian’s “JOMAL” verbally and visually similar with Jo Malone’s cited trademarks.

3.    As to the designated products, TIPO noted that Jo Malone’s cited trademarks were also applied to relevant products such as body lotion, skin care cream, fragrance, hair conditioner, cosmetics, etc. These products serve similar purposes and functions to those designated under Marian’s “JOMAL” trademark, as both related to skin care, body cleansing, and personal beauty.

4.    Further, based on prior cases and trademark search records, TIPO found “Jo Malone” has become well-known among the consumers in the fragrance and cosmetics industry. TIPO determined that “Jo Malone” is highly distinctive, and relevant consumers are more familiar with “Jo Malone” than “JOMAL”.

In view of the above, given the medium degree of similarity, the relatedness between the designated use of products, and the facts that “Jo Malone” is well-known and more recognizable by the relevant consumers, TIPO concluded that the registration of “JOMAL” may raise confusion among the consumers, and thus shall be canceled according to Article 30.1.10 of Trademark Act.

  

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VlZ6QXhJMzgvV0ZYand3a3JVdmNoUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true