Taiwan's IP Office Sided With DC Comics' “WONDER WOMAN” In Trademark Opposition Proceeding Against “WONDER KiDS”

On June 16, 2020, Taiwan’s IP Office (TIPO) determined that “WONDER KiDS” is similar with “WONDER WOMAN” of DC Comics (“DC”), and thus shall be cancelled based on Article 30.1.10 of Trademark Act.

The cancelled trademark, “WONDER KiDS” (Reg. No. 01926900, see below), was filed by Vertex Sports Company (“Vertex Sports”) on February 2, 2018, and granted by TIPO on July 16, 2018, designated for goods such as toys, flying discs, sports equipment, baseballs, rackets, sports chest protectors, sports hand guards, dumbbells, stationary exercise bikes, swimming float, fishing equipment, etc.

DC filed opposition against Vertex Sports on October 15, 2018, arguing that “WONDER KiDS” may cause confusion with its famous “WONDER WOMAN” trademarks (Reg. No. 01852625, see below), designated for goods in, among the others, toy cars, fly discs, swimming float, baseball, basketball, and sports equipment.

TIPO sided with DC on June 16, 2020, ruling that “WONDER KiDS” shall be cancelled due to likelihood of confusion caused by its similarity with “WONDER WOMAN.” TIPO’s reasons are as follows:

1.    The cited trademark “WONDER WOMAN” and the main portion of the challenged trademark “WONDER KiDS” are both made up of two ordinary characters, with difference in that the former ends with “Woman”, while the latter ends with “kids”. Additionally, in day-to-day Chinese, “woman” and “kids“ are common words that sometimes are used together, so “woman“ and “kids” are associated with each other. Accordingly, there is medium degree of similarity between Vertex Sports’ “WONDER KiDS” and DC’s “WONDER WOMAN”.

2.    Both “WONDER KiDS” and “WONDER WOMAN” are used in similar goods, such as toy, sport gears, and swimming gears. These goods serve similar function and are usually sold through similar channels, with overlapping customers base. Thus, the two trademarks are used in similar goods.

3.    “WONDER WOMAN” has acquired considerable distinctiveness through the continuous marketing and promotion by DC, including the worldwide popular superhero movies “Batman v. Superman Dawn of Justice” and the blockbuster “Wonder Woman.” Besides, since the meaning of “WONDER WOMAN” has no relation with the nature and function of the designated goods, consumers would consider it distinctive and use it to identify the source of products.

4.    “WONDER WOMAN” as a trademark has been registered in multiple countries, including EU, Canada, Australia, China, Japan, and Brazil, and gained popularity in local market through marketing campaigns and diversified merchandising, such as licensed superhero figures, toys, apparels, etc. In comparison, the records of use submitted by Vertex Sports did not show sufficient media exposure, viewership, and long time of use. As such, TIPO found consumers would be more familiar with “WONDER WOMAN.”

5.    In addition to the similar characters “WONDER KiDS”, VERTEX SPORTS seemingly used a stylized “W” as the backdrop of its challenged trademark. Upon further examination, such stylized “W” demonstrated similar visual effect of a bird’s wings as DC demonstrated in its famous “W” icon for “WONDER WOMAN.” In view of the similarity between “WONDER WOMAN” and “WONDER KiDS”, and the adoption of similar stylized “W” characters, TIPO found VERTEX SPORTS did not file application out of good faith.

Based on the above, TIPO determined that VERTEX SPORTS’s “WONDER KiDS” is similar with DC’s “WONDER WOMAN”, and may cause confusion among the relevant consumers. Thus, the challenged “WONDER KiDS” shall be cancelled accordingly.

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4SW9JMHNmVll3SkVEVDh2YmlZR3N5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true