Taiwan’s IPO found “CourseApp” not similar with “Coursera”

Coursera Inc., one of the leading platforms for online education service, filed opposition against the registered trademark “CourseAPP” (Reg. No. 01952878, see Below) on February 15, 2019, citing violation of Article 30.1.11 and Article 30.1.12 of Taiwan’s Trademark Law.

 On January 31, 2020, Taiwan’s Intellectual Property Office (“IPO”) found the opposed trademark “CourseApp” not similar with Coursera Inc.'s trademark “coursera,” (see below), and denied Coursera Inc.’s request to cancel the opposed trademark.

Coursera Inc. cited both Article 30.1.11 and Article 30.1.12 in its opposition against the registered “CourseAPP” trademark. As to Article 30.1.11 of Trademark Law, it is provided that a trademark shall not be registered for “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) As to Article 30.1.12, it is provided that a trademark should not be registered if “being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration.”

Coursera Inc. argued that:

1.        Its trademark “coursera” and the registered “CourseAPP” trademark both demonstrate “course—” as the primary distinctive parts. Thus, the two marks are similar in terms of their meanings, pronunciations, and visual appearance.

2.        Both the registered trademark and Coursera Inc.’s trademark are designated for use in education and other similar services.

3.        Coursera Inc. was founded by professor of Stanford University, and has collaborated with numerous universities in providing online educational service. Up until April 13, 2018, users registered with its learning platform in Taiwan has reached 339,942. The asserted trademark “coursera” has become a famous brand due to continuous media coverage and its successful service.

4.        Since the registrant is doing business in the same industry and providing similar service, registrant should have known the existence of Coursera Inc.’s famous trademark, and registrant’s attempt to apply the same mark for use in similar service shows bad faith.

The registrant of the opposed trademark replied that:

1.     The registrant already submitted a disclaimer to the IPO regarding the foreign word “CourseAPP”. As such, “course” is not the distinctive portion of the registered trademark.

2.     The registered trademark shows a drawing of book on its left. The first two letters, i.e., “c” and “o”, of Coursera Inc.’s trademark are specifically designed and demonstrate the sign of “∞”, which represents the meaning of “infinity”. The last portion of the opposed trademark, i.e., “APP”, and that of Coursera Inc.’s trademark, i.e., “ra”, are visually different as well. Thus, consumers will not find the two marks similar and be confused.

3.     In addition, the opposed trademark is primarily used in agency and application service for those who plan to study abroad. To the contrary, Coursera Inc. does not provide similar service. There is no likelihood of confusion.  

The IPO found that:

1.     First of all, the evidence produced by Coursera Inc. is not sufficient to find its trademark a famous mark. Most of the documents submitted by Coursera Inc. are introductory materials without showing of the asserted “coursera” trademark. The evidence only shows that Coursera Inc.’s trademark has been used prior to the application of the registered trademark, but the volume of its actual use is not sufficient to prove Coursera Inc.’s trademark has become a famous mark prior to the application date (April 13, 2018) of the opposed trademark.

2.     Although the registrant submitted disclaimer in regard to the “CourseAPP”, such disclaimed portion should still be taken into account when considering similarity. To this end, the IPO noted that the first two letters of Coursera Inc.’s trademark are specifically designed and demonstrate the sign “∞”, and there is no specific meaning for “coursera”. Differently, the opposed trademark is composed of “course” and “app”, which demonstrates the meaning of “course application.” In addition, the pronunciation of Coursera Inc.’s trademark, i.e., [kɔrsˈɛərə], is dissimilar with that of the opposed trademark, which normally will pronounce as [kɔrsˋæp]. In sum, while the two marks show some degree of similarity in their overall appearances, they are still distinguishable in view of their pronunciations and their meanings.

3.     Coursera Inc.’s trademark is stylized and specifically designed to show the sign “∞”. The opposed trademark has a drawing of book on its left, and is not related to the nature and function of its designated service. Thus, both trademarks demonstrate considerable distinctiveness.

4.     Since Coursera Inc. does not prove that its trademark has become a famous mark, and the degree of similarity between the two trademarks is low, an ordinary consumer will not be confused by the two trademarks. Moreover, there is no evidence showing the opposed trademark has diluted the distinctiveness of Coursera Inc.’s trademark or damaged its reputation. To conclude, Article 30.1.11 should not be applicable.

5.     As to Article 30.1.12, although Coursera Inc.’s trademark has been used prior to the application of the opposed trademark, and the service in which the opposed trademark is designated is similar with that of Coursera Inc.’s, the degree of similarity between the two marks is low, and there is no record proving how the registrant learned Coursera Inc.’s trademark and wanted to imitate the same when applying for the registration of the opposed trademark. Hence, it is baseless for Coursera Inc. to apply Article 30.1.12.

It remains to be seen if Coursera Inc. will contest IPO’s finding and take this case to the Petitions and Appeals Committee of MOEA. 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4Q2NFM1c0WERDN2YyZm1UbmdtaTBJUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IPO denied racer’s another attempt to trademark “Black Mamba”

On January 13, 2020, we reported that Taiwan’s IP Court ruled that the “Black Mamba” trademark (shown below) registered by a rally car racer, Mr. Yuan-Hu Lin, should be cancelled for violating Article 30.1.13 of Taiwan’s Trademark Law. (https://tipnlaw.blogspot.com/2020/01/there-is-only-one-black-mamba-and-we.html )

It turns out that when the lawsuit was still pending, Mr. Lin already filed another application to trademark black mamba with Taiwan's Intellectual Property Office ("IPO"). In Mr. Lin’s new trademark application (No. 108001481, see below), in addition to the same stylized English word “Black Mamba”, three Chinese characters “黑曼巴” in larger font are also used. Mr. Lin filed his new trademark application on January 9, 2019, designated for use in goods such as auto part, tail pipe, bicycle part, motorcycle part, automobile chassis, etc.

 On January 3, 2020, IPO once again denied Mr. Lin’s application. This time, aside from citing Article 30.1.13 of Trademark Law, IPO also found Mr. Lin’s trademark application is similar with two senior marks (Reg. No. 01707176 and 01723514), which feature stylized English word “mamba” and a drawing of snake head (see below). 

IPO found Mr. Lin’s new trademark application should be denied based on Article 30.1.10, which provides that “A trademark shall not be registered……. for 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.”

More specifically, IPO found that:

1.     Mr. Lin’s trademark application is composed of English word “Black Mamba” and its Chinese translation “黑曼巴”. Its meaning (i.e., the deadly snake) is similar with the cited trademarks, with similar pronunciation. The only difference between the two is the word “black”, which is minor. In sum, the overall appearance between the cited trademark and Mr. Lin’s new trademark application is high.

2.     The cited trademarks are designated for use in goods such as automobile parts, piston, water tank, and the retail service for automobile parts and motorcycle parts. Although the designated goods and service are not exactly the same as those designated by Mr. Lin’s trademark application, they serve similar function and usually are sourced from the same supplier. Thus, the goods to which Mr. Lin’s trademark application and the cited trademarks are designated are similar with each other.

3.     The main portion of the cited trademark “mamba” does not describe or refer to the nature or function of its designated goods or service, which demonstrates considerable distinctiveness. Since Mr. Lin’s trademark application is highly similar with the cited trademark, there is likelihood that ordinary consumers, upon seeing the two marks, may be misled into believing the goods represented by the two trademarks are from the same source.

Based on the forgoing reasons, the IPO held that Mr. Lin’s new trademark application should be denied.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4NFRKTWV3MkZpMWIzV2hFYjhIWVRPQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Volkswagen cannot trademark “6.1” for its “Volkswagen California 6.1” in Taiwan

If you like camping, and happen to be a fan for camper van, you probably already heard of Volkswagen’s updated “Volkswagen California 6.1”. Indeed, VW’s Volkswagen California 6.1 is attractive, catchy, and equipped with everything you need for a great camping experience, including a touch-screen panel for controlling the pop-up roof, an auxiliary diesel-powered heater, cabin lighting, a refrigerator, and some fancy gadgets. Undoubtedly, VW wants to make sure this is the go-to car for the campers around the world.

However, it turns out that VW may want more than just to make its car dreamy. To make sure its camper van could be the most unique and distinguishable product in the market, in December 21, 2018, VOLKSWAGEN AKTIENGESELLSCHAFT (hereafter “Applicant”) filed trademark application for “6.1” (Application No. 107082633, see below) in Taiwan. In January 15, 2020, Taiwan’s Intellectual Property Office (“IPO”) said “No.”

The reasons held by IPO are that:

1.     Article 29.1.3 of Taiwan’s Trademark Law provides that a trademark shall not be registered if such mark consists exclusively of signs which are devoid of any distinctiveness. According to IPO’s Guideline for Determining Trademark’s Distinctiveness, pure number, in principle, shall not be distinctive. It is because based on the common usage, number is used to describe the year (e.g., wine), the size (e.g., shoes), the volume (e.g., sheets of tissue paper), the speed (e.g., the memory card), or the power (e.g., engine) of a product, and is less likely to be conceived as the source of goods or service.

2.     Here, upon reviewing the material of trademark use submitted by the Applicant, the mark “6.1” is used in combination with the brand name “Volkswagen” and the model name “California”. As such, when seeing “Volkswagen California 6.1” in its entirety, ordinary consumers are more inclined to view “Volkswagen”, instead of “6.1”, as the mark to identify the source of goods.

3.     Although the Applicant argued that it is rare for automaker to use number with decimal point to describe the product, the IPO found it unpersuasive. In the submitted material, the IPO found the Applicant used number like “T6” and “T6.1” to identify the different versions of its updated vehicles, rather than the source of product supplier. Hence, IPO considered Applicant’s mark “6.1” not distinctive, and is simply used to describe the “version” of Applicant’s upgraded vehicle.

4.     The Applicant further argued that the mark has acquired distinctiveness through its continuous use and wide media coverage. Nevertheless, the IPO found no relevant evidence, such as survey data, advertising documents, sales records, etc., showing the sole use of “6.1” by the Applicant is sufficient to create distinctiveness among the relevant consumers. Therefore, the IPO ruled the trademark application for “6.1” should be denied.

It remains to be seen if VW will contest such decision, and whether there will be more evidence submitted to support VW’s arguments regarding acquired distinctiveness.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4ck1hRzRLV2RtMFEwVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=true&isReadBulletinzh_TW=true