APPLE QUEEN CANNOT SAVE HER APPLE

In a previous post of TIP (see https://tipnlaw.blogspot.com/2020/01/watch-out-leaf-may-be-enough-for.html), we discuss that APPLE Inc.’s trademarks are so famous that even an apple leaf would be enough for Taiwan’s Intellectual Property Office (“TIPO”) to find a trademark similar with APPLE Inc.’s logo. In a recent case, TIPO cancelled another trademark due to similarity with APPLE Inc.’s trademarks. This time, the cancelled trademark is “APPLE Queen.”

According to TIPO’s records, Mr. Chen, legal representative of GREATWONDER INTERNATIONAL TRADING CO., LTD. (“Great Wonder”), obtained trademark registration for “APPLE Queen” (Reg. No. 01880025, see below) on November 16, 2017, designated for use in goods such as purse, briefcase, handbag, card holder, umbrella, waist pack, backpack, etc. APPLE Inc. filed opposition on February 14, 2018, citing violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

APPLE Inc. argued that the opposed trademark “APPLE Queen” and its trademarks “APPLE” (Reg. No. 01457997) and “APPLE LOGO” (Reg. No. 01070447, 01620273) all feature the characters and image of an apple (see below), so the opposed trademark should be found highly similar with its famous trademarks. Besides, the designated goods of the opposed trademark are also similar with those of APPLE Inc.’s asserted trademarks. 

The trademark holder argued that apple is just usual term that is commonly used by ordinary people, so it will never cause confusion with APPLE Inc.’s trademarks. Besides, the “APPLE Queen” trademark has another stylized apple image, featuring his idea that the leather he uses in the designated products are made of apple peel. As such, the visual image, the concept, and the designated goods of the opposed trademark are different from APPLE Inc.’s asserted trademarks.

TIPO found for APPLE Inc., reasoning that:

1.     Firstly, Article 30.1.11 of Trademark Law provides that “A trademark shall not be registered if …. 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.”

2.     APPLE Inc.’s asserted trademarks are famous trademarks in Taiwan. APPLE Inc. has obtained numerous trademark registrations in Taiwan since as early as 1983, and the status of its famous trademark has been recognized and affirmed in prior IP Court’s decision and TIPO’s dispositions.

3.     Both the opposed trademark and APPLE Inc.’s asserted trademarks share similar characters “apple,” and demonstrate similar image of apple. As such, there is similarity between the opposed trademark and APPLE Inc.’s asserted trademarks. Although Mr. Chen tried to distinguish the opposed trademark by referring to the leather used by his products, such difference pertains to one’s own idea behind a trademark, and is not relevant when determining similarity of trademark.

4.     In addition, APPLE Inc.’s trademarks are highly distinctive and have been used for a very long time. Due to the high degree of distinctiveness and familiarity, APPLE Inc.’s trademarks are vulnerable to confusion even when the degree of similarity is relatively low. Moreover, compared to the voluminous records submitted by APPLE Inc., there is little evidence provided by Mr. Chen to support the actual use of the opposed trademark.

5.     Additionally, the business of APPLE Inc. is highly diversified, and the asserted trademarks are also designated in similar goods such as credit card holder, sports backpack, wallet, etc. It is likely that APPLE Inc. will enter this business field, and such likelihood should be taken into consideration when evaluating whether there is likelihood of confusion.

6.     Lastly, evidence shows that Great Wonder, the company which Mr. Chen is legal representative, also does business in IT service. It is highly likely that Mr. Chen was aware of the existence of APPLE Inc.’s asserted trademarks when filing application for the opposed trademark. As such, Mr. Chen’s filing probably was not based on good faith. 

In view of the well-known status of APPLE Inc.’s trademarks, the similarity between the opposed trademark and APPLE Inc.’s famous trademarks, the diversification of APPLE Inc.’s business, the high degree of distinctiveness of APPLE Inc.’s trademarks, and the lack of good faith when the opposed trademark was filed for application, TIPO found the opposed trademark should be cancelled in accordance with Article 30.1.11 of Trademark Law. 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4UEdVSUZUa25LODR4VjBrSHVZTk1EQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true