MANGO Beats Mr. MANGO in Taiwan’s Intellectual Property Office

Fashion giant Consolidated Artists B.V. (“Consolidated Artists”), the owner of the registered “MANGO” trademark in Taiwan, successfully cancelled “Mr. MANGO” in the opposition proceeding of Taiwan’s Intellectual Property Office (“IPO”).

                         

According to Consolidated Artists, the opposing trademark “MANGO” has acquired registration in numerous countries since as early as 1974. Currently, there are more than 2,200 MANGO stores across 110 countries, and the brand and business reach five continents around the globe. In Taiwan, the first flagship store featuring the MANGO trademark was established back in 1997, and for now Consolidated Artists’ local store network has grown significantly, with 20 stores covering the entire area. Moreover, the opposing trademark “MANGO” has been recognized as famous mark by Taiwan’s IPO.

                     (The opposing trademark (TW Reg. No. 683050) (exemplified))

The opposed trademark, namely, “Mr. MANGO” (as shown below), was filed by a Mr. Zeng in June 19, 2018, and registered on February 16, 2019, designated to goods including scarf, necktie, and hats. Consolidated Artists filed opposition on May 10, 2019, citing violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law. The IPO found the opposed trademark should be cancelled based on Article 30.1.11.

                       (Opposed Trademark Reg. No. 01970824)

Article 30.1.11 of Trademark Law reads: “A trademark shall not be registered in any of the following:……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”.

The IPO found the opposed mark subject to Article 30.1.11 pursuant to the following reasons:

First of all, the opposing trademark “MANGO” is a well-known trademark, which has been filed for registration in Taiwan since as early as 1994 (e.g., Reg. No. 683050), designated for goods such as clothing, perfume, glasses, jewels, and purses (e.g., Reg. No. 683050, 814574, 1040217, 1047182, and 1292623). There is sufficient evidence showing the opposing trademark has gained the status of famous mark prior to the application date of the opposed trademark.

As to similarity, IPO determined that while the opposed trademark consists of “Mr. MANGO” and “芒果先生”, the word “MANGO” would still be the main portion that catches the attention of ordinary consumer, because both ”Mr.” and “先生” are words used to refer to male. In other words, the most distinctive portions of the opposed trademark and the opposing trademark are both “MANGO,” which may cause ordinary consumers to misunderstand that the goods featuring the opposed trademark comes from the opposing trademark. Hence, the opposed trademark is similar with the opposing trademark.

Moreover, the opposing trademark is distinctive as an arbitrary mark by using the word “mango” (with ordinary meaning of mango tree or its fruit) in apparel and accessories products. Through its continuous and worldwide use, the opposing trademark is well-known and highly recognized among the relevant consumers in the relevant markets. In contrast, there is no supporting document submitted by Mr. Zeng demonstrating the actual use of the opposed trademark. Therefore, IPO found the opposing trademark is more popular and famous than the opposed trademark.

In view of the above, the IPO ruled that the opposed trademark “Mr. MANGO” should be cancelled based on Article 30.1.11 of Taiwan’s Trademark Law.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4M2pLSVdNL1dKMVUwanBUR3FwQ2FoZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true