“adiader” is found similar with “adidas” by Taiwan’s IP Office

On June 20, 2020, Taiwan’s IP Office (TIPO) denied trademark application for “adiader”, finding such mark similar with the registered trademark “adidas”.

Per Article 30.1.10 of Taiwan’s Trademark Act, a trademark shall not be registered if such mark 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.”

In this case, a Mr. Wu, filed trademark application for “adiader” on December 13, 2019 (Application No. 108081998, see below), and designated for use in goods under Class 25, including, among other things, shoes, slippers, boots, sneaker, ski boots, baby shoes, etc.

TIPO found Mr. Wu’s application similar with the registered trademarks “adidas” held by ADIDAS AG (Reg. No. 00054345 and 00054342, see below), and should be rejected based on Article 30.1.10.

More specifically, TIPO reasoned that:

1.      The rejected trademark, “adiader”, shows similar sequence and structure of characters “adi-d-” as presented in the cited trademarks “adidas.” Besides, the first three characters of “adiader” are the same as those of the registered “adidas”. Although “adiader” ends with “er” while “adidas” ends with “s”, such difference is minor and ordinary consumers would still find the two marks similar with each other.

2.      The rejected trademark is applied for goods such as shoes, slippers, boots, sneaker, ski boots, and baby shoes. The cited trademarks, similarly, are applied for use in various kinds of shoes, boots, sport clothing, and training outfit. Thus, the rejected trademark and the cited trademarks are applied for use in similar goods, or, in goods that are often used together by ordinary consumers, or are sold in similar channels.

3.       As to distinctiveness, the cited trademarks “adidas” are highly distinctive because it is not related to the nature or function of its designated goods. In view of such high degree of distinctiveness, it is more likely for consumers to be misled when there exists certain degree of similarity.

4.      Although Mr. Wu argued that the spelling and pronunciation of “adiader” and “adidas” are different, TIPO found such arguments unpersuasive. As mentioned above, the overall appearances of “adiader” and “adidas” are similar, with only minor differences in the last two characters (i.e., “er” v. “as”). More importantly, when deciding whether to purchase, the consumers would not make detailed comparison between the two trademarks. Rather, the decision usually is based on consumer’s general impression. Thus, there still is likelihood that consumers will be confused and misled due to the similarity of these two trademarks and the goods for which these trademarks are applied.

In view of the above, TIPO denied Mr. Wu’s application for “adiader” accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R0JlSUJiQmpnWG8wVysrbGdxcU1tQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true