Monster Energy Lost The Battle of “Claw”

 Nanjing Aisiyou Clothing Co. Ltd. (“NAC”), an apparel brand based in China, filed trademark application for “SUAMOMENT” on April 12, 2017, designated for use in clothing, pants, dresses, knitted clothes, underwear, children's clothing, baby clothes, waterproof clothes, shoes, hats, clothing gloves, scarves, socks , skirts, jackets, shirts, swimsuits, clothing belts, and sneakers. NAC’s opposed trademark was granted on December 1, 2017 (Reg. No. 1883792, see below)

Monster Energy Company (“MEC”) filed opposition against NAC on February 26, 2018, contending that the registration of the opposed trademark would cause confusion with MEC’s registered claw trademarks (see below)

(Reg. No. 1497952, 1713839, 1237373, and 1734749)

The IP Office (TIPO) disagreed, denying MEC’s opposition on December 26, 2018, finding NAC’s opposed trademark did not violate the cited Trademark Act. MEC, after losing its appeal before the Appeal Board, filed complaint with Taiwan’s IP Court (TIPC), requesting TIPO’s ruling should be vacated.

TIPC, based on the following reasons, upheld TIPO and Appeal Board’s decisions:

1.    The opposed trademark and MEC’s cited trademarks are dissimilar. Although both trademarks display the design of a claw, the shape and style of the claws are different. NAC’s claw is displayed at different angle, with blood dripping down below. Besides, NAC’s trademark further includes the word mark “SUAMOMENT”, which provides another distinguishable element for the opposed trademark. Thus, in terms of difference in overall appearance, pronunciation, and conception, TIPC found TIPO was correct in finding the opposed trademark not similar with MEC’s cited trademarks.

2.    MEC contended that the opposed trademark is applied for goods that are similar with those designated by MEC’s cited trademarks. But TIPC did not think so. The court found that while both NAC and MEC applied for use in similar goods such as boots, shoes, and clothes; MEC’s cited trademarks were applied for use in other goods that are different from NAC’s opposed trademark, such as smart phone, tablet computer, cell phone, nutrition supplants, and drinks. Thus, the court did not find the goods designated by NAC’s trademark similar with those designated by MEC’s cited trademarks.

3.    As to the strength of distinctiveness, the court found both MEC’s and NAC’s trademarks unrelated to the nature and function of the designated goods, so the claws featured in MEC’s trademarks and NAC’s opposed trademark are arbitrary and distinctive.

4.    The court noted that in comparison to NAC’s opposed trademark, MEC’s cited trademarks are used in more diversified goods. However, there is no evidence showing actual confusion, and no records suggesting NAC’s and MEC’s products are sold through the same channels.

In view of the above, since NAC’s opposed trademark is not similar with MEC’s cited trademarks; only part of the goods designated by MEC’s trademarks are similar with those designated by NAC’s; and there is no evidence showing actual confusion and NAC’s bad intent, the court in the end ruled that the registration of NAC’s opposed trademark is not likely to cause confusion with MEC’s cited trademarks.   

Source: https://law.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCA,108%2c%e8%a1%8c%e5%95%86%e8%a8%b4%2c81%2c20200730%2c2

WeWork Successful In Opposition Proceeding Against “WEE” Before Taiwan’s IP Office

On March 5, 2019, We Easy Development Co. Ltd. (“We Easy”), a Taiwan-based real estate service provider, filed trademark application for “WEE” with Taiwan’s IP Office (TIPO), designated for use in services including real estate leasing and sale, office leasing and selling, office leasing for shared work, apartment house leasing, real estate buying and selling, real estate sales agency, real estate leasing agency, apartment rental service, real estate brokerage, real estate valuation, real estate management, real estate sales consultants, and real estate investment. We Easy’s application was granted on September 16, 2019 (Reg. No. 02011694). WeWork Companies Inc. (“WeWork”) filed opposition on December 16, 2019, contending registration of “WEE” would cause confusion with WeWork’s registered trademarks, such as “WEGROW”, “WE”, and “WEWORK”.

TIPO ruled in WeWork’s favor on July 31, 2020, based on the following reasons:

1.      Similarity of trademark:

TIPO notes that the contested trademark presents stylized characters “WEE”, which bear the same initial characters “WE” as adopted by WeWork in its registered “WE” (Reg. No. 02012857), “WEGROW” (Reg. No. 02009306), “WEWORK” (Reg. No. 01770873), “WETOO” (Reg. No. 01960202), “WE.CO” (Reg. No. 02021379), and “WELIVE” (Reg. No. 02049059) trademarks. Therefore, the contested trademark is similar with WeWork’s asserted trademarks in terms of visual appearance, concept, and pronunciation (see below).

2.      Similarity of the designated services:

Both the contested trademark and WeWork’s asserted trademarks are applied for use in similar services, which involve real estate transaction, office space leasing, construction, consultation, investment, and management services. TIPO finds these services serve similar needs of customers, and thus are related with each other. From the perspective of ordinary consumers, the services that the contested trademark is applied for are similar with those that WeWork's trademarks are applied for.

3.      Strength of trademark:

No matter it is “WEGROW”, “WEWORK”, “WETOO”, “WE.CO”, “WELIVE”, or “WE”, TIPO finds these trademarks have no relation with the nature or function of their designated services. Ordinary consumers, upon seeing these trademarks in the course of transaction, are likely to use these marks to identify and distinguish the sources of service. Thus, WeWork’s asserted trademarks are distinctive.

4.      WeWork’s trademarks are well-known:

TIPO recognized that there are voluminous records supporting the well-known status of WeWork’s asserted trademarks, including, among the others, news reports showing WeWork’s successful business in providing service of space sharing in 140 cities across 37 countries around the world. Moreover, on September 25, 2018, TIPO has already acknowledged the well-known status of WeWork’s trademarks in its opposition ruling No. G01060753. (See https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4N2d5UVJVcWluR20xd2FZUXVZV0NxZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true) Thus, consumers are more familiar with WeWork’s asserted trademarks, and TIPO should give more weight to them when evaluating likelihood of confusion.

In view of the above, TIPO ruled that We Easy’s “WEE” should be cancelled because it is similar with WeWork’s asserted trademarks, applied for use in similar services, and hence may cause confusion among relevant consumers.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4NVlOeTl4dXM5OXhoTWozN3pFd1VKQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true

Taiwan’s IP Office Denied Wynn Resorts’ 3D Trademark Application For Its Signature “Wynn Building”

Wynn Resorts Holdings, LLC (“WYNN”) filed trademark application (Appl. No. 103024370, see below) on May 1, 2014, seeking to trademark its Wynn Building for use in casino, entertainment, hotel, conference, theater, and relevant services. After 6 years of examination, Taiwan’s IP Office (TIPO) denied WYNN’s application on July 14, 2020, finding the structure of the building presented in the 3-dimensional trademark application not distinctive.

According to the Guidelines For Examination Of Unconventional Trademark (“Guidelines”), for a 3-dimensional trademark to be registrable, such mark, as is required for conventional 2-dimensional trademark, has to be distinctive. Applicant needs to prove that ordinary consumers would view such 3-dimensional trademark as a symbol representing source of goods or services, so that consumers could use such 3-dimensional mark to distinguish the products and services in the relevant market. Based on such requirement, in comparison with conventional trademark, TIPO explained that generally it would be more difficult to prove a 3-dimensional shape is distinctive, especially when the contour or shape has been commonly seen in the relevant businesses, because such shape is less likely to be recognized as symbol representing source of goods or services.

 

Turning to WYNN’s application, TIPO noted that the main characteristic of the Wynn Building is its arc shape. However, TIPO found such curve or arc shape feature has been quite common and adopted by other similar hotels or facilities. Thus, such structural feature is not unique and less likely to create strong impression among the consumers. In other words, such feature will only be viewed as structure of building, rather than symbol of source of goods or service. To meet the requirement for registration of 3-dimensional trademark, WYNN has to prove that its Wynn Building has acquired distinctiveness through its continuous marketing and use in Taiwan.

 

WYNN stated that its 3-dimensional trademark application has been granted in the U.S., and submitted relevant news reports regarding its hotel business in Macau and advertising in China, U.S., Korea, Hong Kong, and Japan, trying to prove that its Wynn Building has acquired distinctiveness. However, TIPO found such evidence not supportive because these materials were either used in other countries, or showed the use of word mark “Wynn” only. As such, TIPO determined that these documents could not prove Wynn Building has acquired distinctiveness through continuous marketing and advertising in Taiwan’s market.

 

Based on the reasons above, TIPO denied WYNN’s application accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4dlgzMkYzbzBxM2F4L1kzbTNCY2dpdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true 

Mitsui Fudosan Successful In Defending Its “MGH Mitsui Garden Hotel” Trademark In Opposition Proceeding

MITSUI FUDOSAN CO., LTD. (“Mitsui Fudosan”), one of the largest real estate service providers in Japan, filed trademark application “MGH Mitsui Garden Hotel” (the “opposed trademark”, see below) on March 8, 2016, designated for use in services including hotel, temporary accommodation, rental of conference and exhibition venues, and reservation of hotels. The opposed trademark was granted on May 16, 2019.

MITSUI JAPANESE RESTAURANT CO., LTD. (“Mitsui Restaurant”), a local restaurant that has been well-known for its finest Japanese cuisine, filed opposition against Mitsui Fudosan on June 11, 2019, contending that the opposed trademark would cause confusion with its well-known trademarks (the “opposing trademarks”, also see below)

On June 30, 2020, Taiwan’s IP Office (“TIPO”) found against Mitsui Restaurant, determining that the opposed trademark is not similar and would not cause confusion with the cited opposing trademarks. The gist of TIPO’s determination is as follows:

 

1.      Distinctiveness/Similarity:

 

TIPO finds that although the opposed trademark and the opposing trademarks all contain the same word “Mitsui”, such word is a common and traditional name in Japanese, and has been widely used by other companies in other business sectors, such as Mitsui Elevator, Mitsui Auto Materials, and Mitsui Foods Inc. Accordingly, ordinary consumers will not use a single word “Mitsui” to establish connection with specific goods or services.

 

Meanwhile, since the words that are used to combine with “Mitsui”, such as “MGH”, and stylized characters “三井” (which means “Mitsui” in Chinese), are not related to the nature or function of the designated services, the entirety of the opposed trademark and the opposing trademarks all demonstrate certain degree of distinctiveness, and are less likely to cause confusion among relevant consumers, even though they share the word “Mitsui”.

 

While it is true that the opposed trademark and the opposing trademarks all contain the word “Mitsui”, the initial word used in the opposed trademark is “MGH”, and there are other words such as “Garden” and “Hotel” presented. As such, it is inappropriate to single out and focus on “Mitsui” only. Instead, we shall also take into consideration the differences of the overall appearance, pronunciation, and perception between the opposed trademark and the opposing trademarks. In view of the entirety, rather than the single word “Mitsui”, TIPO views the opposed trademark is not similar with the opposing trademarks.

 

2.      Similarity of services:

 

TIPO is aware that the opposed trademark and the opposing trademarks are all applied for use in relevant accommodation services, such as hotel, motel, cafeteria, etc., which may be considered similar with each other. However, the opposed trademark is also applied for use in other less relevant services, such as rental service for conference and exhibition venue. The nature and function of these services are less relevant to those of hotel service, which should be considered dissimilar.

 

3.      Whether Mitsui Fudosan’s application was based on good faith:

 

Mitsui Restaurant began its service in 1992, and has gained considerable reputation for its fine cuisine since then. However, TIPO also notes that the first ”Mitsui Garden Hotel” （三井ガーデンホテル） was established by Mitsui Fudosan in Japan in as early as 1986, and the popular hotel chain has been widely reported and well known in Taiwan. In fact, both Mitsui Restaurant and Mitsui Fudosan have been using “Mitsui” in combination with other words to identify their services for a long period of time. Thus, the records support the finding that the opposed trademark was not filed based on bad intent.  

 

4.      The opposing trademarks are famous, but only within the service of Japanese restaurant:

 

While the opposing trademarks have gained high degree of reputation and may be viewed as well-known trademarks, the fame and reputation of the opposing trademarks are limited to the service of Japanese restaurant. There is no other record showing that Mitsui Restaurant’s trademarks have also become famous in the area of accommodation service. It is less likely to create misunderstanding or confusion should the opposed trademark be granted.

 

5.    The opposed trademark would not damage the distinctiveness or reputation of Mitsui Restaurant’s well-known trademarks:

 

As articulated above, the opposed trademark is not similar with the opposing trademarks, and such low degree of similarity is not likely to cause confusion among the relevant consumers. Besides, Mitsui Fudosan has been using “Mitsui Garden Hotel” in its hotel chain since 1986, and such popular hotel chain has already become well-known among Taiwan’s consumers due to its continuous marketing and the popularity of Japan tourism. Plus, the opposed trademark should be filed out of good faith. TIPO therefore finds the registration of the opposed trademark will not dilute the distinctiveness or damage the reputation of the opposing trademarks.  

 

In view of the above, TIPO sided with Mitsui Fudosan, and rejected Mitsui Restaurant’s opposition accordingly. Based on the records, Mitsui Restaurant already appealed TIPO’s determination to the Appeal Board. It is  likely that whoever prevails before the Appeal Board, the other side will take this case to Taiwan’s IP Court. Thus, the dispute between the two successful companies will probably last for a while.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4R1pQc1Y4Tk1aQmM0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true