Opposing
Trademark (Reg. No. 01620273)
 |
Opposed
Mark (Reg. No. 01945859)
 |
Watch
Out—
AppleCareStation (“蘋果保衛站”) is a local
business providing backup support, maintenance, and repair service for the well-known
iPhone, iPAD, MAC, and relevant 3C products. AppleCareStation filed application
for the opposed mark for service designated under Class 35 on March 29, 2018,
and later obtained approval of Taiwan’s Intellectual Property Office (“IPO”)
for the registration of its opposed mark (Reg. No. 01945859) on October 16,
2018.
APPLE Inc. (“APPLE”) filed opposition
against the opposed mark on January 15, 2019, alleging, among the others, violations
of Article 30.1.11 of Trademark Act, which reads: “A trademark shall not be
registered in any of the following:….(11) 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, unless
the proprietor of the said well-known trademark or mark consents to the
application.”
On December 19, 2019, IPO sided with APPLE,
ruling that the opposed mark is similar with APPLE’s famous trademark “APPLE
LOGO” (i.e., the opposing trademark), which may cause confusion among the
relevant consumers.
Based on voluminous evidence submitted by
APPLE, including decision of Taiwan’s IP Court, IPO’s prior decisions, news
report, and commercial success, IPO first found that the opposing trademark has
reached the status of a well-known trademark.
With regard to issue of similarity, IPO found
that although the main feature of APPLE’s opposing trademark (an apple) is
different from that of the opposed mark (a personified smartphone), both marks
feature a leaf extending in an upper-right direction. Thus, while the opposed
mark is not highly similar with the opposing trademark, ordinary consumers may
still find both marks similar with each other.
The IPO also found APPLE’s opposing
trademark demonstrates stronger distinctiveness and enjoys higher familiarity
than AppleCareStation’s opposed mark. In addition, APPLE’s business is diversified.
For example, the opposing trademark is also designated for service under Class
35, including relevant services for accessories of computer, software,
enterprise advertising, marketing consultation, etc. Moreover, IPO noted that
it may be AppleCareStation’s intent to, by using its opposed mark, cause the relevant
consumers to associate the opposed mark with APPLE’s famous trademark and
products. In other words, AppleCareStation’s application does not seem to be made based on good
faith.
In view of the forgoing reasons, the IPO
found for APPLE, concluding that AppleCareStation’s opposed mark should be
cancelled due to violation of Article 30.1.11 of Trademark Act. It remains to
be seen if AppleCareStation will appeal to contest the IPO’s decision.
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