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.
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