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