Huawei’s Trademark Applications For “Kirin” Were Denied By Taiwan’s IP Office

On June 7, 2018, Huawei Technologies Co., Ltd. (“Huawei”) filed two trademark applications for “Kirin” (see below), designated for use in goods under Class 9, including semiconductor, wafer, silicon chip, integrated circuit, printed circuit, etc. On June 12, 2020, Taiwan’s IP Office (“IPO”) found both applications similar with senior trademarks registered by Japan’s Kirin Holdings Kabushiki Kaisha (“Kirin Holdings”), and denied Huawei’s both applications.

(Application No.: 107036008)

(Application No.: 107036007)

The senior trademarks cited by IPO are registered by Kirin Holdings (see below), which are also designated for use in goods under Class 9, including, among the others, silicon chip, and integrated circuit.

(Reg. No.: 01292244 )

(Reg. No.: 01667670)

IPO’s decision is based the following reasons:

1.    Article 30.1.10 of Trademark Act provides that a trademark shall not be registered if such trademark is 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.

2.    In terms of similarity with the cited trademarks, IPO found the characters (i.e., “Kirin”) shown in Huawei’s applications are highly similar with those shown in Kirin Holding’s registered trademarks, with minor difference in capitalization.

3.    With respect to the similarity of goods, IPO found the designated goods of Huawei’s applications, such as integrated circuit, printed circuit, and silicon chip, are related to or associated with those of Kirin Holding’s registered trademarks in terms of their function, usage, or source of materials.

4.    Additionally, since ”Kirin” constitutes the main portion of both Huawei’s applications and Kirin Holding’s registered trademarks, an ordinary consumer would easily recognize it and use it to identify the source of goods. Added to that, “Kirin” is highly distinctive when used for goods such as semiconductor, because such a word is not related to the nature or function of these designated products. Thus, it will be more likely to cause confusion among the relevant consumers if there is any similarity with Kirin Holding’s highly distinctive “Kirin” trademarks.

5.    Huawei argues that in fact, Kirin Holding’s cited trademarks are not used in goods such as semiconductor or silicon chip, for Kirin Holding’s business scope is limited to manufacturing and selling beverages and drinks only. However, IPO reasons that while Kirin Holding’s cited trademarks may be subject to non-use invalidation for not being put in use for goods in Class 9, such trademarks are still valid and binding upon IPO until they are invalidated.

In view of the above, IPO ruled that Huawei’s applications shall be rejected accordingly.

On another note, Huawei allegedly has been in talk with Kirin Holding for agreement of trademark coexistence. It remains to be seen if Huawei would appeal to buy more time for reaching consensus with Kirin Holdings.

Source:

For application no.: 107036008

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R2tLU0VlS0RFUEZ1VmZrR3hjRHlxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

For application no.:  107036007

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R2tLU0VlS0RFUEh3QWhFSi80VjBHQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true