Taiwan’s IP Office: Accor’s Hotel Brand “Novotel” Is A Well-Known Trademark

On July 30, 2018, a Mr. Liang filed application for trademark “NOVOTEL” for use in goods such as handbag, purse, briefcase, belt, etc. Mr. Liang’s application was granted on March 16, 2019 (Reg. No. 01975799, shown below). Accor filed opposition on June 14, 2019, and Taiwan’s IP Office (“IPO”) found for Accor.

Accor alleged that Mr. Liang’s trademark shall be cancelled due to violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act. More specifically, Accor stated that its registered trademarks for its Novotel Hotel, including the word mark “Novotel” (Reg. No. 00162720, shown below), are famous trademarks after years of service and marketing in Taiwan, and that Mr. Liang’s attempt to register a highly similar word mark is out of bad faith.

IPO found for Accor, determining that Mr. Liang’s trademark should be cancelled due to being identical with Accor’s famous trademark, and will cause confusion in the relevant public.

1.      Article 30.1.11 of Trademark Act 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 or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.

2.      With regard to Accor’s registered word mark “Novotel”, IPO noted that there is sufficient evidence, including continuous news reports, advertisements, magazines, and awards, supporting the finding of the well-known status of Accor’s “Novotel” trademark.

3.      After confirming Novotel as a famous trademark, the IPO went on to find that Mr. Liang’s opposed trademark is identical with Accor’s famous trademark. The similarity is too high that ordinary consumers may mistakenly believe that the two marks represent the same source of service or goods.

4.      Accor’s registered “Novotel” is unique and highly distinctive. According to the records, the IPO found that other than Mr. Liang and Accor, there is no one else registering the same word mark.

5.      Although Mr. Liang’s opposed trademark is used for goods such as purse, handbag, belt, leather goods, etc., the IPO was aware of Accor’s highly diversified business. For example, in its Novotel Hotel, Accor also provides fashionable goods like leather products for its customers. Thus, the goods designated by Mr. Liang’s opposed trademark may be considered relevant to the service provided under Accor’s Novotel trademark.

In view of the fact that Accor’s Novotel is a well-known trademark, that Mr. Liang’s trademark is highly similar with Accor’s trademark, and that there is likelihood of confusion caused by the similarity between the two trademarks, IPO sided with Accor and determined that Mr. Liang’s trademark shall be cancelled in accordance with Article 30.1.11 of Trademark Act.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bmUrRzgrMjliVGZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office affirms “Tik Tok” as a well-known trademark

Bytedance Ltd. (“Bytedance”), the owner of registered “Tik Tok” trademark in Taiwan, filed opposition against another registered trademark (Reg. No. 02005514, see below) , alleging violation of Article 30.1.11 and 30.1.12 of Trademark Act.

The opposed trademark was filed on January 21, 2019, designated for use in internet auction, supermarket, department store, convenience store, shopping mall, online shopping, clothing, drink, and other retail service. The opposed trademark was granted on August 16, 2019. Bytedance filed opposition on November 14, 2019.

Taiwan’s IP Office (“IPO”), after considering the evidence and records submitted by Bytedance, determined the opposed trademark should be cancelled due to similar with other’s well-known trademark and may cause confusion among the relevant public.

1. Bytedance’s “Tik Tok” is a well-known trademark:

IPO, upon reviewing all the materials submitted by Bytedance, acknowledging that “Tik Tok” is a highly popular app that supports video-sharing network service. According to records, since 2016, the app has been downloaded and used by more than 500 million users in more than 50 countries around the world. Its short form video sharing service, together with the creative interface and social media platform, made “Tik Tok” so popular among the young generation. Although it was introduced to Taiwan in 2018, such popular app immediately became a hit and every month there are more than 3 million active users on the digital platform. Thus, when the opposed trademark was filed on January 21, 2019, Bytedance’s “Tik Tok” has become a well-known trademark in Taiwan.

2. The opposed trademark is highly similar with Bytedance’s registered trademark:

Both Bytedance’s “Tik Tok” trademark (Reg. No. 01980261, see below) and the opposed trademark share similar character “Tik Tok”. The musical note presented in the opposed trademark is also highly similar with Bytedance’s another registered trademark, which features its icon (Reg. No. 01982062, see below).

3. Bytedance’s “Tik Tok” trademark is highly distinctive:

“Tik Tok” has no specific meaning. Besides, Bytedance’s “Tik Tok” is designated for service such as software and app service, VPN service, internet data access service, live streaming service, Saas and ASP service, and cloud computing, which have no relation with the word “Tik Tok.” As such, “Tik Tok” is a trademark having high level of distinctiveness.

4. “Tik Tok” is also used in similar service:

Although the opposed trademark is used in retail service, Bytedance’s business is quite diversified. Plus, there is evidence showing Bytedance’s “Tik Tok” is also used in apparel and relevant merchandise. Further, both Bytedance’s “Tik Tok” and the opposed trademark (e.g., online shopping and retail) are designated for service concerning internet access. At a time when consumers are used to shopping online and purchasing products through internet transactions, these services are considered similar and correlated with each other.

Based on the above, the IPO found the opposed trademark should be cancelled due to similar with Bytedance’s well-known trademark, which may cause confusion amount the relevant consumers that there is license, collaboration, or other form of relationship between the owners of the two trademarks.

It is also worth noticing that Bytedance’s “Tik Tok” trademark was filed on May 31, 2018, which is only about 8 months earlier than the filing date of the opposed trademark. However, IPO still found “Tik Tok” was already a famous trademark in Taiwan at the time when the opposed trademark was filed. Thus, the decisive factor for gaining the status of a well-known trademark seemingly is not how long a trademark has been put in use, but how many records and materials have been submitted to prove the public’s recognition and popularity of a trademark.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cU1mSFRUTTR6bDR6dG5CWkJmQ1JQQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

“APPLE TREE MOBILE SHOP” Was Found Similar With APPLE Inc.’s Trademark

Cell phone repairers better be careful.  When designing the trademark, repairer may like to highlight the brand of the smart phone his or her service covers. While it may help business, not every smart phone company would be happy to see its brand become part of other’s trademark, especially APPLE Inc.(“APPLE”)

On June 27, 2018, a local cell phone repairer filed trademark application for “APPLE TREE MOBILE SHOP (with drawing)”(Reg. No. 01972030, as shown below). Such trademark was granted on February 16, 2019, designated for service including cell phone or communication equipment repair or installation. APPLE filed opposition on May 14, 2019, and the Intellectual Property Office (“IPO”) rendered decision on April 7, 2020, finding the opposed trademark should be cancelled.

APPLE held the position that:

1. Its series trademarks, including the word mark “APPLE” (shown below), are famous trademarks. Since the opposed trademark has the same characters “APPLE”, the opposed trademark is highly similar with APPLE’s famous trademark.
2. The wrench presented in the opposed trademark features a smart phone drawing with APPLE’s famous “HOME BUTTON”, which is widely adopted in APPLE’s popular iPhone and iPad products. Such drawing may further lead the consumer to draw connection with APPLE’s famous products and trademark upon seeing the opposed trademark.
3. The service designated by the opposed trademark cover phone installation and repair, communication equipment installation and repair, internet setting, etc. They are relevant or similar with those designated by APPLE’s famous trademark, because APPLE’s products and services have been quite diversified. For example, APPLE’s word mark is also designated for service such as computer and hardware installation or repair.
4. Such high degree of similarity, plus the fame of APPLE’s trademark and similarity of service designated by the opposed trademark, enhance the inference that the application of the opposed trademark should be based on intent to imitate, and was not filed out of good faith.  

The owner of the opposed trademark replied that:

1.     In addition to the foreign language “APPLE TREE”, the opposed trademark further contains the drawing of a wrench. The overall appearance, and phonetic of the opposed trademark shall be different from those of APPLE’s.

2.     Consumer, when seeing the opposed trademark, would figure that the drawing features a wrench, rather than APPLE’s smart phone products.

3.     Besides, apple refers to a kind of fruit, which is not highly distinctive. Aside from APPLE, there are other registrants whose trademarks also contain this word. Thus, consumers should be quite familiar with such word mark and will be able to distinguish the opposed trademark from APPLE’s asserted trademark. In sum, consumers will not be confused simply because the two marks bear the same word “APPLE”.

The IPO found for APPLE, cancelling the opposed trademark on the ground of Article 30.1.11, which provides that a trademark shall not be registered if such mark is identical to or similar with other famous mark so that it may cause confusion to the relevant public or damage the distinctiveness or reputation of the famous mark.

1. “APPLE” is a famous trademark:

To this end, IPO finds that there are voluminous records supporting APPLE’s assertion. APPLE registered its trademark since as early as 1977, and used “APPLE” and “APPLE LOGO” as trademarks on computer product and its related accessories. Over time, the products or services covered by these trademarks have expanded to cover software, internet, multi-media products, education service, clothing, and stationary. The successful delivery of service and products such as “iTunes”, “iPod”, “iPhone”, and “iPad” further help APPLE becomes one of the greatest global brands.

2. The opposed trademark is similar with APPLE’s famous trademark:

The opposed trademark presents similar word mark “APPLE”. Although there are other elements, such as “MOBILE SHOP”, a wrench featuring a cell phone inside, and the word “Tree”, these additional elements are not distinctive. The most appealing portion is still the word “APPLE”, which is identical to APPLE’s famous word mark. Further, in the wrench, there is a drawing of cell phone featuring APPLE’s famous “home button”, which gives the impression that the mark has something to do with repairing APPLE’s products. Conceptually, the opposed trademark is similar with APPLE’s famous work mark.  

3.     The strength of APPLE’s trademark:

Although the word “apple” refers to ordinary fruit, such word has no bearing with and does not describe the nature of the goods or service the word mark is designated to use. Thus, consumers would immediately recognize “APPLE” as the identifier of source of the goods or service. Plus, APPLE has been using the word mark for more than 40 years. Even if the degree of similarity is low, ordinary consumers would immediately think of APPLE’s famous trademark upon seeing the opposed trademark.

4. The knowledge of the relevant consumers to the opposed trademark:

While APPLE has submitted sufficient records supporting the finding of famous trademark, the evidence the owner of the opposed trademark provided was not enough. There was no record with respect to the market share, sales, and revenue in association with the goods or service using the opposed trademark. Although the owner of the opposed trademark submitted some evidence of trademark use, such as Facebook fan pages and Google search results, these materials either were generated after the application date of the opposed trademark, or have no date at all. Thus, IPO could not find the opposed trademark was well-known among the relevant consumers when it was filed for registration.

4.     The registration of the opposed trademark is not based on good faith:

Considering the well-known status of APPLE’s trademarks, and the design of the opposed trademark that may easily make ordinary consumers think of APPLE’s goods or service, the IPO found the opposed trademark probably was not registered out of good faith.

Based on the above, the IPO sided with APPLE, determining that the opposed trademark is similar with APPLE’s famous trademark, which may confuse and mislead the relevant consumers into believing that there is license, partnership, or other form of contractual relationship between the owner of the opposed trademark and APPLE. Thus, the opposed trademark should be cancelled.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cE5mQW9ybys0VHJ4Szdyd1JzbW5rZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

IP Court Found LED Chip Supplier Liable to Indemnify, Ruling Duty To Indemnify Is Not Conditioned Upon Judicial Finding Of Patent Infringement

Tong Fang Semiconductor (HK) Co., Ltd. (“Tong Fang”) sued Unity Opto Technology, Ltd. (“Unity”) in Taiwan, alleging overdue payment (US$ 1, 102, 195.57) for the LED chips Tong Fang supplied to Unity. In response, Unity argued that the LED chips provided by Tong Fang infringed third party’s U.S. patents[1], which rendered Unity subject to potential patent infringement liability in the United States[2]. Unity therefore stated that according to the “Intellectual Property Guarantee Letter” (“Letter”) provided by Tong Fang, Tong Fang should be responsible for costs Unity incurred due to the infringement lawsuit. Since Unity paid US$ 1,122,073.35 for the U.S. lawsuit, Unity is entitled to offset the legal fees it paid (i.e., US$ 1,122,073.35) against the payment it allegedly owed to Tong Fang (i.e., US$ 1, 102, 195.57). Thus, Unity argued that Tong Fang is not entitled to the overdue payment.

Since the two parties did not dispute the amount of the overdue payment, the key issue is whether Unity is entitled to hold Tong Fang responsible for the legal fee Unity incurred arising out of the LED chips Tong Fang supplied.

The relevant clauses prepared by Tong Fang in the Letter are as follows:

“We (i.e., Tong Fang) warrant that all Chip products manufactured and/or sold to Unity do not infringe or misappropriate any Intellectual Property Rights, including without limitation,  patent, copyright, trade secret, industrial design, know-how, trademark of any third parties in design, construction, manufacture or use of the Products.

We will defend, indemnify and hold harmless Unity, its agents, directors, officers, employees, affiliates and customers, from and against any asserted claims, suits, injunctions, demands, actions, expenses, losses or damages（including, without limitation, shipping costs, repackaging fees, recalls, handling fees, losses of product distribution, custom tariff, tax, fines, field return expenses and/or attorney fees）arising from or related to we do not comply with the warranty and representation hereinabove in any manner .

We will, at our own cost and expense, select necessary manner to let Unity, its affiliates and/or customers continue to use the Products legally and legitimately…”

Tong Fang argued that the Letter is not applicable because there is no final court’s decision on issue of infringement. In other words, the applicability of Tong Fang’s obligation to indemnify should be conditioned upon a final court’s decision that finds infringement. The IP Court judge disagreed, holding that:

1.     The terms used in the Letter, such as asserted claims, demands, actions, etc., all refer to matters that are not necessarily involving a final court decision. Thus, the literal interpretation of the cited clause suggests that a final determination of infringement by the court is not the premise of Tong Fang’s duty to indemnify.

2.     Besides, Unity required this Letter from Tong Fang because Unity had to manage the legal risk and damages accompanied with the LED chips Tong Fang supplied. Since patent litigation is notorious for its high cost and lengthy procedure, before a court enters its final decision on infringement, there would be considerable costs and expenses incurred. It would be against the purpose of the Letter to construe Tong Fang’s duty to indemnify be premised on a final judicial finding of infringement.

3.     Further, it would be unfair to adopt Tong Fang’s proposed interpretation. Since Tong Fang is the supplier of the accused LED Chip, Tong Fang, compared with Unity, is in a better position to defend patent infringement lawsuit. However, under Tong Fang’s theory, not only will Unity be unable to ask Tong Fang to help defend the infringement lawsuit at the outset of the litigation, Tong Fang may still refuse to compensate Unity when, in the end, Unity obtains a final judicial finding of non-infringement for Tong Fang’s chips.

In view of the above, the IP Court found Tong Fang should indemnify Unity for the costs Unity incurred due to the patent infringement lawsuit. Since the costs Tong Fang should indemnify is higher than the payment it demanded from Unity, after offsetting Unity’s alleged costs from Tong Fang’s demanded payment, there is no need for Unity to pay Tong Fang. As such, the IP Court rejected Tong Fang’s claim accordingly.

TIP: While indemnity clause is helpful in managing and balancing the legal risk between the seller and buyer, it is critical to make sure the circumstance intended to be covered by the indemnity clause should be as clear and definite as possible.

Source:

智慧財產法院民事判決108年度民專上字第30號

https://bit.ly/3d5wKBO

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[1] The patents are: US 6,657,236; US 6,885,036; US 6,614,056; US 7,312,474; US 7,976,187; US 8,766,298; US 8,596,819; US 8,628,214; US D653,366; D660,990

[2] The title of the case is: Cree, Inc. v. Feit Electric Company, Inc. et al.