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
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