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.
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